Statefarmlifeassignments.com, Statefarmlifesettlements.com

The timeline behind statefarmlifeassignments.com

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

How each disputed name was decided in this proceeding.

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

NATIONAL ARBITRATION FORUM DECISION State Farm Mutual Automobile Insurance Company v. The Life Insurance Settlement Solutions Co. a/k/a Timothy Mattek a/k/a The Life Settlement Company Claim Number: FA0503000445213 PARTIES Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is The Life Insurance Settlement Solutions Co. a/k/a Timothy Mattek a/k/a The Life Settlement Company (“Respondent”), 11476 Sundance Lane, Boca Raton, FL 33428. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <statefarmlifeassignments.com> and <statefarmlifesettlements.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2005. On March 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <statefarmlifeassignments.com> and <statefarmlifesettlements.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 March 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@statefarmlifeassignments.com, and postmaster@statefarmlifesettlements.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 April 19, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <statefarmlifeassignments.com> and <statefarmlifesettlements.com> domain names are confusingly similar to Complainant’s STATE FARM mark. 2. Respondent does not have any rights or legitimate interests in the <statefarmlifeassignments.com> and <statefarmlifesettlements.com> domain names. 3. Respondent registered and used the <statefarmlifeassignments.com> and <statefarmlifesettlements.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, State Farm Mutual Automobile Insurance Company, is a nationally recognized company engaged in the business of insurance and financial services. Complainant has been operating under the STATE FARM mark since as early as 1930. Complainant owns trademark rights in the STATE FARM mark through registration with the United States Patent and Trademark Office (Reg. No. 645,890, issued May 21, 1957). Complainant also operates a website at the <statefarm.com> domain name where Complainant offers detailed information relating to a variety of topics that include insurance and financial service products, consumer information and information about its independent contractor agents. Respondent registered the <statefarmlifesettlements.com> domain name on September 11, 2004 and the <statefarmlifeassignments.com> domain name on September 27, 2005. Respondent is using the disputed domain names to redirect Internet users to a website at <seniorsshouldknow.org>, a website that is under construction but includes links set up for the future offering of information and services related to health and insurance issues. 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 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. Identical and/or Confusingly Similar Complainant has established that it has rights in the STATE FARM mark through registration with the United States Patent and Trademark Office and through continuous use of its mark in commerce for the last seventy years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); 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). The <statefarmlifeassignments.com> and <statefarmlifesettlements.com> domain names registered by Respondent are confusingly similar to Complainant’s STATE FARM mark because the domain names incorporate Complainant’s STATE FARM mark in its entirety and deviate from it only by adding generic or descriptive phrases such as “life assignment,” and “life settlements.” The mere addition of generic or descriptive words to a registered mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). Moreover, the addition of the generic top-level domain “.com” is irrelevant in determining whether the disputed domain names are confusingly similar to Complainant’s STATE FARM mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) was satisfied). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also 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 interests in the domain names). The Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a response. 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). Each of the domain names has been registered for at least six months and neither of them resolves to a fully developed website. Instead, they resolve to a website that is under construction and indicates that when it is fully developed it will provide links to websites related to Complainant's services. As mentioned earlier, once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the domain names, the burden shifts to Respondent. Respondent has failed to provide evidence that it has rights or legitimate interests in the domain names. Respondent's domain names, which are confusingly similar to Complainant's mark, resolve to a website that is under construction. Respondent's use of the domain names to resolve to a website under construction is insufficient to establish that Respondent has rights or legitimate interests in the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the "under construction" page, hosted at the disputed domain name, did not support a claim of rights or legitimate interests under Policy ¶ 4(a)(ii)); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent's use of the disputed domain name to display an "under construction" page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Furthermore, Respondent is not commonly known by the disputed domain names, and does not have Complainant’s authorization to offer services under Complainant’s STATE FARM mark. Respondent has not presented any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain names. Therefore, Respondent has not established rights or legitimate interests in the disputed domain names 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent intentionally registered domain names that are likely to confuse Internet users and cause them to believe any site hosted at the domain names would be affiliated with or endorsed by Complainant. This demonstrates bad faith under the Policy. 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"); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests 'opportunistic bad faith'"). Furthermore, Respondent’s registration of two domain names incorporating Complainant’s registered and famous mark evidences Respondent’s actual or contructive knowledge of Complainant’s mark, and constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”). 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 relief shall be GRANTED. Accordingly, it is Ordered that the <statefarmlifeassignments.com> and <statefarmlifesettlements.com> domain names be TRANSFERRED from Respondent to Complainant. Sandra Franklin, Panelist Dated: May 3, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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