State-farm-income-tax.com

The timeline behind state-farm-income-tax.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION State Farm Mutual Automobile Insurance Company v. Clover Worldwide Claim Number: FA0108000099581 PARTIES Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Janice K. Forrest. Respondent is Clover Worldwide, Los Angeles, CA (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <state-farm-income-tax.com>, registered with Internet Domain Registrars. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. James A. Carmody, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 24, 2001; the Forum received a hard copy of the Complaint on August 27, 2001. On August 31, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain name <state-farm-income-tax.com> is registered with Internet Domain Registrars and that Respondent is the current registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars 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 September 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2001 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@state-farm-income-tax.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 Forum transmitted to the parties a Notification of Respondent Default. On October 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody as Panelist. Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from the Respondent to the Complainant. PARTIES’ CONTENTIONS A. Complainant The <state-farm-income-tax.com> domain name is confusingly similar to Complainant's famous STATE FARM mark. Respondent has no rights or legitimate interests in respect to the <state-farm-income-tax.com> domain name. Respondent registered and passively held the <state-farm-income-tax.com> domain name in bad faith. B. Respondent The Respondent has failed to submit a response. FINDINGS Since 1930, Complainant has used the mark STATE FARM in relation to its insurance services. Complainant is a nationally known company and it uses the STATE FARM mark in relation to insurance as well as banking, financial services and sporting events. Complainant has expended substantial time, effort and funds to develop the good will associated with the mark STATE FARM over the past seventy years Complainant registered the STATE FARM mark on June 11, 1996. Complainant has also registered fourteen other marks including the phrase STATE FARM in the United States, specifically <statefarm.com>. The STATE FARM mark is also registered in Canada, Mexico, and the European Community by the Complainant. Respondent registered the <state-farm-income-tax.com> domain name on April 23, 2001. Respondent is not commonly known by the STATE FARM mark nor is it licensed to use the mark. Respondent has not made any use of the disputed domain name since its registration. The domain does not resolve to website, instead the Internet user is redirected to <dir.bestoftheweb.com/adirectory.asp?d=3315>. Complainant has attempted to communicate with Respondent via certified mail and email and all correspondence has been returned as unclaimed or undeliverable. DISCUSSION 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules. Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. Identical and/or Confusingly Similar Complainant, through its use, substantial efforts, and numerous federal and international registrations has established that it has rights the STATE FARM mark. Furthermore, the <state-farm-income-tax.com> domain name is confusingly similar to Complainant's STATE FARM mark because the Respondent has merely added hyphens and the generic terms "income" and "tax" to Complainant's mark. It has been established that the use of a hyphen does not defeat a claim of confusing similarity. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). It has also been established that the use of generic terms does not defeat a claim of confusing similarity. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Furthermore, the <state-farm-income-tax.com> domain name is confusingly similar because the Internet user is likely to believe that the Respondent is affiliated with the Complainant when they try to access Complainant's website. The words "income" and "tax" or "income tax" could be associated with Complainant's financial services and Internet users will likely believe that there is an association between <state-farm-income-tax.com> and <statefarm.com>. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests A Panel has the discretion to find that Respondent has no rights or legitimate interests in the disputed domain name where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a response, the Panel is permitted to make all inferences in favor of Complainant. 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”). There is no evidence, and Respondent does not refute, that Respondent has rights or legitimate interests in respect to the disputed domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent's registration and passive holding of the <state-farm-income-tax.com> domain name supports a finding of bad faith pursuant ot 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 the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy). Furthermore, the <state-farm-income-taxes.com> domain name is confusing similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <state-farm-income-taxes.com> disputed domain name, despite confusing similarity is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <state-farm-income-taxes.com> be transferred from Respondent to Complainant. James A. Carmody, Panelist Dated: October 12, 2001 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.