State Farm Mutual Automobile Insurance
Company v. Louis Spagnuolo
Claim Number: FA0502000418606
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Louis Spagnuolo (“Respondent”), P.O.
Box 841033, Pembroke Pines, FL 33084.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarm-wholesale.com>,
registered with Names4Ever.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 11, 2005.
On
February 10, 2005, Names4Ever confirmed by e-mail to the National Arbitration
Forum that the domain name <statefarm-wholesale.com>
is registered with Names4Ever and that Respondent is the current registrant of
the name. Names4Ever has verified that
Respondent is bound by the Names4Ever registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 3, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@statefarm-wholesale.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 9, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarm-wholesale.com> domain name is confusingly similar
to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarm-wholesale.com>
domain name.
3. Respondent registered and used the <statefarm-wholesale.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm Mutual Automobile Insurance Company, is a nationally known company
that has been doing business under the STATE FARM mark since 1930. Complainant engages in business in both the
insurance and financial services industries.
Complainant has established a nationally recognized presence on
televised and other media.
Since 1995,
Complainant has operated a website at the <statefarm.com> domain
name. At its website, Complainant
offers detailed information relating to a variety of topics that include its
insurance and financial services products, consumer information and information
about its independent contractor agents.
Complainant has
registered the STATE FARM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent
registered the <statefarm-wholesale.com>
domain name on November 25, 2004.
Respondent’s domain name is not connected to any active website.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the STATE FARM mark through registration of the mark with
the USPTO as well as through continuous use of the mark in commerce since
1930. See Am. Online,
Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark); see
also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s <statefarm-wholesale.com> domain
name is confusingly similar to Complainant’s STATE FARM mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely adds the generic or descriptive
term “wholesale” and a hyphen. Such
minor changes are not enough to overcome a finding of confusing similarity
pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO
Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can
rarely be relied upon to differentiate the mark if the other elements of the
domain name comprise a mark or marks in which another party has rights); see also Health
Devices Corp. v. Aspen S T C,
FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Furthermore, the
addition of the generic top-level domain “.com” and the omission of the space
between the terms in Complainant’s mark are insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”); see also Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the <statefarm-wholesale.com> domain
name, and Respondent, in not submitting a response, has failed to rebut this
assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Additionally,
Respondent’s domain name does not resolve to an active website. In such circumstances, it cannot be said
that Respondent is making a bona fide offering of goods or services, nor a
legitimate noncommercial or fair use of the domain names. Thus, the Panel finds that Policy ¶¶ 4(c)(i)
and (iii) are inapplicable to Respondent.
See Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where Respondent failed to submit a Response to the Complaint and had
made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy.”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<statefarm-wholesale.com>
domain name or is authorized to register domain names featuring Complainant’s
STATE FARM mark. Thus, the Panel finds
that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <statefarm-wholsesale.com>
domain name on November 25, 2004, and the domain name currently does not
resolve to an active website. The Panel
does not find it necessary to wait for Respondent to actively use the domain
name before concluding that the domain name has been registered and used in bad
faith because the domain name incorporates Complainant’s mark and any probable
use would almost certainly be in violation of Complainant’s rights. Thus, the Panel finds that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital,
D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use
of the domain name in question and there are no other indications that
Respondent could have registered and used the domain name in question for any
non-infringing purpose); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used
the domain name because “It makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will create the
confusion described in the Policy”).
Furthermore,
Respondent registered the <statefarm-wholesale.com>
domain name with actual or constructive knowledge of Complainant’s mark due to
Complainant’s registration of the mark with the USPTO as well as the immense
fame attributed to the STATE FARM mark.
The Panel finds that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent’s
registered a domain name featuring Complainant’s famous mark despite having
actual or constructive knowledge of Complainant’s rights in the mark. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of
the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <statefarm-wholesale.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 23, 2005
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