State Farm/Mutual Automobile Insurance Company
v.
I & B
[Indexed as: State Farm/Mutual v. I & B]
[Indexed as: state-farm.com]
National Arbitration Forum
Forum File No. FA0005000094719
Judgement: 8 June 2000
Commenced: 4 May 2000
Presiding Panelist: Marilyn W. Carney
Domain name Domain name dispute resolution policy Trademark Identical Confusingly similar Legitimate rights Bad faith Recognition.
Complainant owns the trademark, State Farm and has been using it for a number of years in connection with its insurance and financial services. Complainant has also registered the domain name, statefarm.com. Respondent registered the domain name, state-farm.com. Internet users often reach this site in error in confusion with Complainants site.
Held, Name Transferred to Complainant.
Complainants mark is well-known throughout the world. Respondents
domain name is confusingly similar to Complainants mark in that the only
difference between then is a hyphen.
Respondent has not used the domain name in a legitimate business
or for the offering of services, and is not known by the name. Respondent
has in fact attempted to tarnish Complainants reputation.
Respondent requested payment from Complainant for use of the name,
and threatened to sell the name to competitors. This constitutes
bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Carney, Panelist: -
This is a DOMAIN NAME dispute pursuant to the Internet Corporation
for Assigned Names and Numbers (ICANN) Domain Name Dispute Policy (the
Policy). Arbitration was requested in this case and Marilyn W. Carney,
Arlington, VA, who has confirmed to the National Arbitration Forum that
she has no known conflict of interest, was assigned as Arbitrator. The
matter was decided using the written record.
For the reasons explained below, the Arbitrator has reached the conclusion
that the domain name should be transferred to the Complainant.
THE DOMAIN NAME
This dispute concerns the domain name state-farm.com. The registrar
for this domain name is Network Solutions, Inc.
THE PARTIES
State Farm Mutual Automobile Insurance Company (hereafter State Farm)
filed a complaint with the National Arbitration Forum on April 28, 2000
naming I & B as Respondent. State Farm has requested that the Domain
Name state-farm.com be transferred from I & B to State Farm.
No formal response has been forthcoming from the Respondent.
SUMMARY OF EVIDENCE
State Farm has been using the State Farm trademark since 1930. It has
registered with the Patent and Trademark Office several State Farm trademarks
and service marks, including State Farm Insurance, State Farm Insurance
Companies, State Farm Bank, State Farm Federal Savings Bank, et al., together
with a logo or logos. It has also registered trademarks and service marks
in Canada, Mexico and the European Community.
State Farm is a nationally known company and for seventy years has
expended time and effort to develop the good name associated with State
Farm. The company is represented by in-house counsel.
It also has had an internet presence since 1995 under the domain name
statefarm.com.
Respondent filed the domain name state-farm.com for reasons known only
to himself. Nevertheless, confusion has arisen because of this disputed
domain name, and users of the internet often reach this site in error,
as shown in Complainants Exhibit 7. I & B is in no way associated
with State Farm.
This confusion was exemplified in an article in the Chicago Sun-Times
when the article mistakenly directed readers to the state-farm.com site
instead of the statefarm.com site. (Complainants Exhibit 6).
Complainant alleges that Respondent has no right or legitimate interest
in the disputed domain name, is not doing business under that name, is
not commonly known by that name and knew it would cause confusion.
Following a request by State Farm for the Respondent to cease and desist
using the state-farm.com, name, the Respondent requested payment of $100,000
to transfer this name or, in the alternative, threatened to sell the domain
name to third parties.
Respondent has not made a formal response to the complaint. There are,
however, copies of two E-mails from Ilya Kushnirsky to the National Arbitration
Forum case coordinator, Nicole Grothe. These contain generalized, rambling
arguments suggesting that I & B did not register the name in bad faith,
that contrary to the letter to State Farm there is no intention of selling
the page, that the intent is to merge the page with other pages and
get all the facts out. Mr. Kushnirsky also believes he has been harassed
by State Farm, and his only intent is to get the truth out about a corrupt
unregulated insurance company who [sic] cheats its customers. His E-mail
of May 11, 2000 states that he does not consent to the ICANN dispute.
Respondent has made no effort to demonstrate that he has used the domain
name in connection with a bona fide offering of goods or services or that
he has commonly been known by the domain name. Moreover, he has not demonstrated
that he has been making a legitimate noncommercial or fair use of the domain
name. Furthermore, he has made no effort to show that it was not his intention
to tarnish the State Farm trademarks or service marks.
FINDINGS OF FACT
The undisputed evidence establishes that:
1. Complainant is a corporation, and is the owner and registrant of
trademarks and service marks including the words State Farm.
2. Complainant conducts businesses worldwide using the State Farm name.
It has spent seventy years cultivating its name under its several businesses
and has also spent large sums of money to develop the businesses using
this name.
3. It is a famous company and has an easily recognizable name.
4. State Farm has the domain name statefarm.com, and state-farm.com
is confusingly similar.
5. Respondent has not used the disputed domain name in a legitimate
business or for the offering of services and has attempted to tarnish the
State Farm name.
6. Respondent has not shown that it has ever been known by state-farm
or any similar name.
7. Complainant has shown that Respondent has
(a) registered a domain name that is identical or confusingly similar
to a
trademark or service mark in which the complainant has rights; and
(b) no rights or legitimate interests in respect of the domain name;
and
(c) that the name has been registered and is being used in bad faith
in violation of
ICANNs Uniform Domain Name Resolution Policy, Paragraph 4(b)(i)(ii)
and (iii).
Complainant has requested that the Domain Name state-farm.com be transferred
from Respondent to Complainant.
CONCLUSIONS
1. The Domain Name state-farm.com is so close as to be identical or
confusingly similar to Complainants trademarks and service marks.
2. Complainant has shown that it should be granted exclusive use of
the disputed Domain Name as Respondent has no legitimate use of this name
either for business or the offering of services.
3. Complainant has shown that Respondent is attempting to mislead customers
and to tarnish the State Farm name to the detriment of State Farm.
4. Complainant has shown that Respondent has registered and used the
Domain Name in bad faith.
DECISION
Based on the above findings and conclusions, it is the decision of
the Arbitrator that
The Domain Name state-farm.com registered by Respondent shall be transferred
to Complainant..
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