State Farm Mutual Automobile
Insurance Company v. wwWHYyy.com c/o Robert Mitton
Claim Number: FA0708001063456
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@whystatefarm.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
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 <whystatefarm.com> domain name be TRANSFERRED
from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: September 25, 2007
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