State Farm Mutual Automobile Insurance Company v. Richard Pompilio
Claim Number: FA0710001092410
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 <statefarmstatefarm.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.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 10, 2007.
On October 10, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmstatefarm.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 October 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 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 October 31, 2007.
On November 9, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is in the business of providing insurance and financial
services. It states that it has been
doing business in the
Complainant states that, amongst others, it registered the “State Farm” trademark with the U.S. Patent and Trademark Office on June 11, 1996.
Complainant states that the disputed domain name incorporates its registered trademark, “State Farm” and is confusingly similar to it. Complainant asserts that through use over 70 years the “State Farm” trademark is distinctive and has acquired a secondary meaning such that consumers who discover the disputed domain name are likely to be confused as to Respondent's affiliation with, sponsorship by, or connection with Complainant.
Complainant asserts that Respondent has no right or legitimate interest in the disputed domain name since Respondent is not associated with Complainant in any way and has no permission to use Complainant’s trademark. Moreover, Complainant contends that Respondent is not commonly known under the domain name, <statefarmstatefarm.com> and it is believed that Respondent has not conducted business under that domain name. At the date of the filing on the Complaint, there was no legitimate content associated with the domain name and no demonstrable indication that legitimate content would be forthcoming.
Complainant alleges that Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm.” Complainant believes that Respondent registered the disputed domain name to create the impression of association with Complainant and to trade off the goodwill associated with Complainant’s trademark and business. It therefore alleges that Respondent registered the domain name in bad faith. Complainant’s submissions regarding use in bad faith are largely inchoate and/or disconnected from the Policy and are not considered useful to include here.
Respondent admits that it registered the disputed domain name. It admits that it is not associated or affiliated with, or sponsored by, Complainant and it admits to prior knowledge of the Complainant’s trademark. It also admits that it is not commonly known by the disputed domain name and has not conducted any business under the domain name. It makes no claim to independent intellectual property rights in the disputed domain name.
Nonetheless, Respondent submits that it has not acted in bad faith by registering the domain name. Respondent alleges that it registered the disputed domain name in order to “direct individuals to a historical site referencing ‘Sovkhoz’ or Russian State Farms.”
After being approached by Complainant in a pre-Complaint letter, Respondent agreed to transfer the domain name to Complainant, free of any compensation. Complainant accepted that offer.
Preliminary Procedural Issue
It is common ground between the parties that, prior to the filing of this Complaint, Respondent offered to transfer the disputed domain name to Complainant and that Complainant accepted that offer.
Respondent demanded no payment or other compensation and stated merely
that it was not prepared to incur any expense in the transfer or cancellation of
the domain name. Complainant offered to reimburse
Respondent for registration/transfer costs up to $100.00
Complainant requested that the domain name be unlocked and asked for the authorization code, together with an e-mail stating that Respondent authorized the transfer. Respondent complied with those requests.
Respondent states that the domain name “is no longer owned or retained in any way by the Respondent.”
The Panel must in these circumstances first address the procedural question of whether or not it has a mandate to decide the case. So, for example, in the case of Disney Enterprises., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005), it was said that “where Respondent has agreed to comply with Complainant’s request [to transfer the domain name], the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.” In Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) the panel decided that “the parties have both asked for the domain name to be transferred to the Complainant .... Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.” See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003.
The disputed domain name remained in the name of Respondent at the time the Complaint was filed. Indeed, a WHOIS search made by the Panel shows that the domain name is still in the name of Respondent.
The Panel is aware that the transfer of a domain name can be a time consuming, slow and sometimes bureaucratically awkward process. Although Complainant went much of the way towards obtaining the information and consents necessary to bring the domain name into its own name, a decision was nonetheless taken to press forward and file the Complaint. That involved a step further than earlier correspondence in which a draft of the Complaint was sent to Respondent.
Since the filing of the Complaint, Respondent has written to the Forum stating that it “greed with the complaint and agreed to release the Domain name. … It is State Farms for the taking, not sure what else need be done at my end.” In a subsequent letter to the Forum, Respondent wrote “[U]pon further investigation, I know (sic) longer own the URL/Domain Name in question. I believe it has been transferred to State Farm already.”
Putting to one side the fact that this last statement appears to be factually incorrect, the Panel observes that this post-Complaint correspondence from Respondent was copied to Complainant. There is nothing from Complainant to confirm or deny that state of affairs, nor, more importantly, to indicate whether it wishes to pursue the Complaint or not. In these circumstances, the Panel must draw the conclusion that Complainant wishes, for whatever reason, to maintain its Complaint.
Accordingly, the Panel decides that it has a proper mandate to determine the matter under the terms of the Policy.
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 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;
(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 must first establish its trademark rights. Complainant lays a claim to ‘secondary meaning’ in the trademark “State Farm” through it continuous use since 1930. Complainant makes no explicit claim to common law rights in the trademark but the Panel is willing to make that inference. Nevertheless, Complainant has provided no evidence in support of that claim and so the Panel finds that claim is not sustained. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) where the panel observed that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”
The trademark rights
can also derive from registration. See Reebok Int’l Ltd. v.
The Panel notes however that the registration was due for renewal prior to the filing date of the Complaint. Complainant has not proved renewal of the registration. In these circumstances other panels applying the Policy have ruled that trademark rights were not established and those complainants failed.
It is open to the Panel to revert to Complainant’s other referenced trademark registrations. That is not necessary since this Panel has been prepared to make it own enquiries and has ascertained that the registration was duly renewed. See Mobile Commc’n Serv. Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006) (“It is well accepted that Panels may conduct their own research, including reviewing the parties’ websites (both in the current and past versions) and examining other publicly-available information (such as trademark office records), in connection with rendering decisions in UDRP proceedings.)”; see also Tightrope Media Sys Corp. v. DomainCollection.com, D2006-0446 (WIPO June 2, 2006) (“It is appropriate for panels to consider publicly available facts even if not offered by a party.”).
Accordingly, the Panel finds that Complainant has rights in the trademark and so the further question before this Panel is whether the domain name <statefarmstatefarm.com> is confusingly similar to the trademark STATE FARM. In making that assessment it is accepted practice that the gTLD ‘.com’ is to be ignored. See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top‑level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top‑level domains are a required element of every domain name.”). The Panel decides that the mere repetition of the trademark is not enough to avoid confusing similarity.
For these reasons, the Panel finds that Complainant has satisfied Paragraph 4(a)(i) of the Policy.
The Panel finds that the circumstances described in the Complaint are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the disputed domain name and to shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent makes a number of relevant admissions
which show that it has no rights in the disputed domain name. Nonetheless, the wording of the Policy makes
it clear that a respondent need only establish a legitimate interest and
not necessarily a protectable right. See, for example, Entre-Manure, LLC v. Integriserv, FA 741534 (Nat. Arb. Forum July 5, 2006). Respondent’s legitimate interest in the domain name is premised on the claim that it
registered the name in order to direct internet users to a historical site concerned
with the state-run farms (otherwise known as ‘sovkhov’) in place under the
Stalinist regime in the
The disputed domain name has been ‘parked’ with “GoDaddy.com” since its registration. Respondent has not given any details of use or preparation for use of the domain name in connection with a historical website. In these circumstances, the Panel can not find that Respondent has any legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‑of‑pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
These sets of circumstances are not exhaustive and other instances of bad faith might be in evidence, however, what is noteworthy about Paragraphs 4(b)(i) – (iv) is that they are all cases of both registration and use in bad faith. Other times, there will be evidence of use in bad faith or registration in bad faith and the Panel will need to find both since the requirements of Paragraph 4(a)(iii) of the Policy are conjunctive.
It is therefore logical to first test the facts against these given circumstances. The Complaint itself is of no assistance to the Panel in this regard and so the Panel has made its own assessment of the evidence before it, bearing in mind that all three elements of Paragraph 4(a) of the Policy must be proven according to the civil standard of the balance of probability.
There is nothing in the evidence which corresponds sufficiently closely with the circumstances outlined in Paragraphs 4(b)(i) – (iii) of the Policy set out above and it is only Paragraph 4(b)(iv) which might have application to the facts.
It is widely appreciated that parked domain names are frequently used to generate ‘pay-per-click’ revenue from internet traffic that visits a webpage to which a domain name resolves. See, for example, the discussion in Deutsche Telekom AG v. SKK, D2003-0744 (WIPO Nov. 17, 2003).
As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used. See Sanofi-Aventis, Aventis Pharma SA & Aventis Pharma Deutchland GmbH v. 1N4 Web Servs., D2005-0938 (WIP Nov. 24, 2005); see also Grisoft, s.r.o. v. Original Web Ventures Inc., D2006‑1381 (WIPO Mar. 5, 2007).
The example of bad faith given in Paragraph 4(a)(iv) uses the word ‘intentionally.’ In Paule Ka v. Paula Korenek, D2003-0453 (WIPO July 24, 2003), the panel held that this reference to the registrant’s ‘intention’ should be regarded as importing an objective, rather than a subjective, test. The panel reasoned:
… how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.
It is well established by prior decisions under the Policy that using a domain name to redirect internet users to websites that host links to external websites, including websites of a complainant’s competitors, is evidence of bad faith. See, for example, Royal Bank of Canada v. Chan, D2003-0031 (WIPO Mar. 5, 2003); see also Mobile Commc’n Serv. Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006).
The disputed domain name is parked with the registration agent for the name, “GoDaddy.com.” Complainant put in evidence the webpage to which the disputed domain name resolves. It states, “This web page is parked free, courtesy of GoDaddy.com!”
On the parking webpage, there are numerous advertisements. Complainant argues that “the use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.” Nonetheless, the Panel observes that the advertising is all for the business or the services of GoDaddy.com. There is no reference to Complainant or to Complainant’s trademark or its business or to the insurance or financial services of any other party. There is no reference or link to any third party of any kind.
These are not the circumstances described in the Royal Bank of Scotland or Mobile Communication cases. Nevertheless, the critical question remains as to whether, by so parking the domain name, Respondent’s actions have had the objective consequence of attracting, for commercial gain, Internet users to an on‑line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that location.
Formulated this way, the Panel’s only concern is the question of ‘commercial gain.’ The Panel notes that there is no necessity for an actual commercial gain – the intention to so gain is enough. A visit to <godaddy.com> quickly reveals that company’s ‘CashParking’ program, described on its website in the following terms:
CashParking is an online domain monetization system that quickly and easily lets you earn money from your existing domain portfolio. Each time someone clicks on advertising that generates revenue on your parked pages, you share in the revenue. CashParking offers the most competitive revenue sharing in the industry and is backed by the world-class customer support you've come to expect from GoDaddy.com.
Respondent makes no admissions or denials as to whether it has profited from that scheme. As stated previously, the Panel must decide whether, on a balance of the evidence, a case is sustained under the Policy. Weighing the evidence, the Panel decides that the disputed domain name was registered and used in bad faith in terms of the circumstances set out in Paragraph 4(a)(iv) of the Policy.
The Panel finds that Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons, Panelist
Dated: November 20, 2007
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