State Farm Mutual Automobile Insurance Company v. Geoffrey Park
Claim Number: FA0807001216701
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented
by Debra J. Monke, of State Farm Mutual Automobile Insurance Company,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurense.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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 22, 2008.
On July 22, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminsurense.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 July 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 12, 2008.
On 19 August 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarminsurence> domain name is confusingly similar to Complainant’s State Farm’s registered marks especially since it includes links to insurance information
2. Respondent has never responded to the cease-and-desist letters sent by Complainant.
3. Respondent has no legitimate interest in the domain name
4. Respondent has acted in bad faith
Respondent has submitted a response indicating that he does not contest the transfer of the domain name brought forth in this case by State Farm Insurance and that he is authorizing the transfer to take place anytime from his response.
State Farms engages in business in both the insurance and the financial services industry. It has been doing business under the name STATE FARM since 1930. It has a national presence. It owns various trademarks consisting or composed of STATE FARM. It has also been operating a website <statefarm.com> since 1995 to promote its services. For over 70 years, Complainant has spent substantial time, efforts and funds to develop the good will associated with the name STATE FARM as well as to promote its other trademarks.
Respondent’s <statefarminsurence.com> domain name was registered on March 31, 2008 and currently resolves to a web page which states it is parked free courtesy of GoDaddy.com and displays sponsored links to Complainant’s competitors.
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.
Preliminary Issue: Consent to Transfer
Respondent states in his Response, “I do not contest what so ever the transfer of the domain name brought forth in this case by State Farm Insurance. I am authorizing the transfer to take place anytime from this point forward.”
expresses his consent to transfer
the <statefarminsurense.com> domain
name to Complainant. Nevertheless,
the Panel is not of the opinion that Complainant has implicitly consented in
its Complaint to the transfer of the disputed domain name without a
decision on the merits by the Panel. Further,
this consent to transfer intervenes after the filing of a complaint by
Complainant while Complainant had already contacted Respondent several times
without response. The Panel finds further that the “consent-to-transfer”
approach is but one way for cybersquatters to avoid adverse findings against
them as already found by other panels and inter
alia in Graebel Van Lines, Inc. v.
The Panel will thus render a decision on the merits.
Complainant invokes its trademark registrations of
STATE FARM as well as STATE FARM INSURANCE and other trademarks including STATE
FARM dating back for the first one to 1996 and its use of the name STATE FARM
since 1930. It provides sufficient documentation and evidence of its trademarks
pursuant to Policy ¶ 4(a)(1) as held by previous panels.
STATE FARM was
acknowledged as a very famous mark by previous panels. (
Respondent’s <statefarminsurense.com> domain name contains the STATE FARM mark combined with a misspelling of the word “insurance,” which is a term that directly relates to Complainant’s principal business. This addition of the generic term insurance, misspelling of insurance is not sufficient to avoid likelihood of confusion between Complainant’s trademarks and the domain name in dispute. Further, the addition of the generic top-level domain (“gTLD”) “.com” is without relevance in this proceeding. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Accenture Global Servs. GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007) (holding that “the domain name and the trademark are confusingly similar. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant’s principal business offering ….”). Accordingly to the Panel, this misspelled addition merely adds to the confusing similarity of the disputed domain name.
Therefore, the Panel concludes that Respondent’s <statefarminsurense.com> domain name is confusingly similar to Complainant’s STATE FARM marks pursuant to Policy ¶ 4(a)(i).
Complainant has asserted that Respondent had no rights or interests in the domain name <statefarminsurence.com>.
Respondent is not commonly known by the <statefarminsurense.com> domain name.
The WHOIS information identifies Respondent as “Geoffrey Park.”
Complainant contends without a dispute from Respondent that Respondent does not conduct business under the disputed domain name, does not possess intellectual property rights in the name, and does not have a contractual agreement with Complainant providing authorization to use the STATE FARM mark in a disputed domain name. The Panel concludes that Respondent is not commonly known by the <statefarminsurense.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is using
the <statefarminsurense.com> domain
name to display a parked website with links to the websites of Complainant’s
competitors. Such use does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat.
Arb. Forum Jan. 23, 2008) (finding the respondent’s use of the disputed domain
name to establish a parked page advertising services in competition with the
complainant’s business, where respondent received click-through fees, did not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii)); see also MEDIATIS
In view of Complainant’s assertions, the burden had thus shifted to Respondent to show that it does have rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
However, in his response, Respondent has not indicated that it had rights or legitimate interests in the domain name <statefarminsurence.com>. Respondent has thus failed to establish he had rights or legitimate interests in the domain name.
The Panel concludes that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant’s trademark STATE FARM has become a famous trademark. Based on this fame and the absence of denial by Respondent in his response, Panel considers that it is very likely that Respondent had knowledge of Complainant’s trademark when registering <statefarminsurence.com>. See State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Nat. Arb. Forum Sept. 25, 2007), finding that “[t]here can be no doubt that STATE FARM is a very famous mark.” The Panel concludes that Respondent registered the disputed domain name in bad faith.
Respondent’s use of the <statefarminsurense.com> domain name to advertise Complainant’s competitors is likely to disrupt Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
With this behaviour, the Panel considers that Respondent attempts to capitalize and profit off of the goodwill associated with Complainant’s STATE FARM mark. As a result the disputed domain name corresponds to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites).
The Panels finds that Policy 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsurense.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: September 2, 2008
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