State Farm Mutual Automobile Insurance Company v. wwWHYyy.com c/o Robert Mitton
Claim Number: FA0708001063456
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented
by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whystatefarm.com>, registered with Godaddy.com, Inc.
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.
Joel M. Grossman, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2007.
On August 15, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <whystatefarm.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 5, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 5, 2007.
On September 17, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it has been doing business under the service mark of STATE FARM since 1930, and has held numerous federal trademarks since at least 1957. Complainant contends that the domain <whystatefarm.com>, which completely incorporates its mark, is identical to, or confusingly similar to its mark. Additionally, Complainant asserts that Respondent has no legitimate interest in the domain name, pointing out that Respondent does not do business under the name, nor is it commonly known by the name. Finally, Complainant asserts that the domain name was registered in bad faith, in order to create the impression of association with Complainant’s products. Complainant points out that the Respondent’s website noted that it may be available for sale, further evidence of bad faith registration.
Respondent does not address the issue of whether the domain name is identical or confusingly similar to Complainant’s mark. Respondent asserts that it has a legitimate use for the name, claiming that it plans to establish a website using the name as a “consumer advocacy group domain.” Respondent claims that the website will be a place “where people can log in to read/communicate about what others have to say about their experiences, good and bad, on the subject of State Farm.” Respondent does not specifically address the issue of registration in bad faith, but it is implicit from its Response that Respondent believes that it has a legitimate interest in the name, and therefore did not register the name in bad faith.
The Panel finds:
a. that the domain name is identical or confusingly similar to Complainant’s well-known mark;
b. that Respondent has no rights or legitimate interest in the name; and
c. that the domain name was registered in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
There can be no doubt that STATE FARM is a
very famous mark, and Complainant has clearly established rights in the name.
This is unchallenged by Respondent. Moreover, Respondent’s name completely
incorporates the mark. The Panel finds that the addition of the word “why” does
not sufficiently differentiate Respondent’s name from Complainant’s mark. See ArthurGuinness Son & Co. (
Complainant has no business or licensing relationship with Respondent, and Respondent is not known and does not do any business using the disputed domain name. This leads to the conclusion that Respondent has no rights or legitimate interests in the name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006). Respondent claims that it has the right to use Complainant’s mark as a consumer forum for discussions among Complainant’s customers. It is true that in certain cases a so-called “gripe site,” often using the complainant’s mark with the additional word “sucks,” have been held to be legitimate uses. See Savin Corp. v. savinsucks.com FA 103982 (Nat. Arb. Forum Mar. 5, 2002); see also Lockheed Martin Corp. v. Parisi D2000-1015 (WIPO Jan. 26, 2001) (holding that <lockheedsucks.com> and <lockheedmartinsucks.com> cannot be considered confusingly similar to Lockheed Martin’s well-known mark). However, Respondent here cannot avail itself of this line of cases for two reasons. First, the phrase “why State Farm” is different from “State Farm sucks.” In the gripe site cases, panels and courts have pointed out that no consumer hoping to visit a company’s actual website would be confused with a website asserting that company sucks. In the case of “why State Farm,” a consumer could conclude that the website presents reasons why State Farm is a good insurance value. Second, in this case there is no evidence that the name is actually being used for a consumer information purpose. Respondent has not made any showing of demonstrable preparations to use the disputed name in connection with a “gripe site,” or any other legitimate purpose. See Diners Club Int’l Ltd v. SPS, FA 149414 (Nat. Arb. Forum Apr. 21, 2003) (inadequate showing of preparation to use domain names <dinersclubsucks.com> or about <dinersclub.com>). Thus Respondent has failed to make any showing of rights or legitimate interests in the names.
Complainant asserts that its very famous mark was used with clear knowledge of the mark, and with no legitimate interests in use of the name. Complainant also points out that on the Respondent’s site the Respondent offered to sell the name. See Bank of Am. Corp. v. Nw. Free Cmty Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003). Complainant also asserts that the name will confuse consumers, and possible buyers of Complainant’s services, thinking that the site is meant to provide reasons for a consumer to buy insurance from State Farm. This also suggests bad faith. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007). Respondent does not set forth any argument on the issue of bad faith, although it can be inferred from its claim that it will use the name as a consumer information site that it believes the name was registered in good faith. Given that, as noted above, the Respondent has not made any showing that it is preparing to use the domain name for that purpose, the Respondent’s showing falls well short of demonstrating a good faith registration. For all of the above reasons, the Panel finds that the name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whystatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: September 25, 2007
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