State Farm Mutual Automobile Insurance Company v. Real Estate c/o Kevin Tuggle
Claim Number: FA0810001230602
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <loritugglestatefarm.com> and <loritugglestatefarm.info>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2008.
On October 23, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <loritugglestatefarm.com> and <loritugglestatefarm.info> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 17, 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely electronic submission of the Response was received by the Center. The Response was deemed deficient pursuant to ICANN Rule 5 because it was not received in hard copy prior to the Response deadline.
On November 25, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends the following:
- State Farm is a nationally known company doing business under the name “State Farm” since 1930. State Farm registered the “State Farm” trademark with the United States Patent and Trademark Office on June 11, 1996. State Farm has also registered several other marks including the phrase “State Farm.”
- State Farm developed its Internet web presence in 1995 using the domain name <statefarm.com>. On June of 2008 State Farm Agent, Lori Tuggle, advised Complainant that these domain names had been registered without her knowledge or consent. On June 25, 2008, a cease and desist letter was sent by Complainant via email to Respondent. On August 7, 2008 another cease and desist letter was sent, via email, to the Respondent. On August 8, 2008 Respondent replied to Complainant, via email, and stated he had not and would not use the State Farm trademark. On August 14, 2008, Complainant sent another cease and desist letter to the Respondent; however, no response has been received. On September 19, 2008, a cease and desist letter was sent, along with a draft arbitration complaint. On September 29, 2008, Respondent advised, via email, that he had no intention of using the State Farm trademark and that he would be letting the URLs go. As of October 22, 2008, both domain names are still registered to Respondent.
- The domain names at issue are confusingly similar to Complainant’s STATE FARM mark.
- Respondent has no right or legitimate interest in the disputed domain names. Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the service mark "State Farm." State Farm did not authorize the Respondent to register the domain names or to use the State Farm trademark for the Respondent’s business purposes. Respondent was advised that Complainant’s independent contractor agents are not authorized to register or own domain names with Complainant’s trademarks in them. Respondent is not commonly known by the disputed domain names. Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain names in question. Moreover, Respondent has not registered the names in question with the Secretary of State in the state in which it does business or filed incorporation papers with respect to the same. Respondent is not using, nor are there any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content associated with the names. This indicates that the Respondent has no legitimate reason for having registered the names and demonstrates that it has registered and is using the names in bad faith.
- Respondent has registered and is using the names in bad faith. Respondent registered its domain names, <loritugglestatefarm.com> and <loritugglestatefarm.info>, on May 11, 2008. State Farm registered its domain name <statefarm.com> on May 24, 1995. The Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name <statefarm.com>. The Respondent’s registration of the domain names was intended to be in bad faith.
- Respondent registered the names to create the impression of association with State Farm; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm. The domain names registered by Respondent are clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the sites. The disputed domain names send a person to web pages which state they are parked free courtesy of GoDaddy.com and which contain numerous links for various insurance products and companies, including those in direct competition with State Farm Insurance. This obvious lack of right to use the names in question shows bad faith registration and use.
Respondent contends the following:
- Respondent has no intent or desire to retain registration and use of the disputed domain names. Only after reading Complainant’s information regarding its trademark registration information did Respondent become aware that the purchase of the GoDaddy websites (the disputed domain names) was an infringement of this trademark. Any type of trademark infringement was definitely unknown and unintentional on Respondent’s part. Respondent has never claimed to have any right or legitimate interest in the disputed domain names. These were purchased for the sole purpose of transferring ownership to Complainant’s agent, Lori B. Tuggle, as a gift. The disputed domain names were not purchased for any of the reasons stated in the Complaint. At no time, including before any notice to the Respondent of the dispute, has Respondent used or demonstrated preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
- Respondent (as an individual, business, or other organization) has not been commonly known by the domain name, and Respondent has not acquired trademark or service mark rights.
- Respondent is not making and has not made a legitimate noncommercial or fair use of the domain name, with or without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent has not activated the disputed domain names, and has had no intent of doing so at any time. Respondent did not purchase/register the disputed domain names in bad faith. As acknowledged by the Complainant, Respondent has never intended or attempted to activate the sites in dispute.
- None of the bad faith circumstances of Policy ¶ 4(b) are present. The Respondent has attempted to close and/or transfer the URLs to Complainant. GoDaddy has been advised that Respondent does not desire to defend the domain names, and Respondent has requested that they be turned over to Complainant. The Respondent respectfully requests that the Administrative Panel approves the remedy requested by the Complainant
The disputed domain names are confusingly similar to the STATE FARM trademark, in which Complainant has sound rights. Complainant made a prima facie case that Respondent lacks rights or legitimate interests in the domain names, while Respondent failed to present evidence in its own favor. Respondent’s “parking” of the domain names at websites with commercial links is evidence of bad faith registration and use.
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.
The Forum properly considered that the Response was deficient because it was not received in hard copy prior to the
deadline for submitting a response. Because this issue is in the Panel’s
discretion, the Panel decides to
consider the electronic version of the Response in the interest of due process,
considering that the Response contains the certification of Rules ¶ 5(b)(viii).
See Strum v. Nordic Net
Respondent states that he does not desire to defend and/or maintain the disputed domain names. Also, he requests that the Administrative Panel approves the remedy requested by the Complainant, i.e., that the disputed domain names be transferred to Complainant. Do these statements and request of Respondent amount to a unilateral consent to transfer? The Panel believes they do not, because Respondent has submitted a Response disputing Complainant’s arguments, and denying that he registered or is using the domain names in bad faith. As a consequence, the instant case differs from those cases where panels granted transfer based on respondent’s unilateral consent for transfer, such as in Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000) (although in Williams-Sonoma the respondent had not submitted any response), or Juventus F.C. S.p.a. v. Bragança, D2000-1466 (WIPO Dec. 20, 2000), where the panel ordered the transfer of the domain name in dispute without discussing any of the elements of Policy ¶ 4(a), based on the agreement of respondent to transfer and the fact that respondent had not disputed any of the Complainant's contentions.
Accordingly, the Panel will make findings as to each of the elements of Policy ¶ 4(a).
Complainant has been using the STATE FARM
mark since 1930. Complainant owns the STATE FARM
The disputed domain names contain Complainant’s entire mark as a suffix, and “lorituggle”, the name of an individual, as a prefix, creating an impression of affiliation, association or ownership between this person and Complainant’s mark. The Panel concludes that the domain names in dispute are confusingly similar to Complainant’s mark.
Complainant denies that Respondent may have any right or legitimate interest in respect of the disputed domain names. Respondent expressly admits that none of the circumstances of Policy ¶ 4(c) is present, adding that he registered both domain names for the exclusive purpose of transferring them as a gift to his ex-wife and Complainant’s agent Ms. Lori Tuggle, apparently suggesting that such a purpose in and by itself can give rise to a right or legitimate interest in respect of the domain names.
The Panel cannot agree with Respondent, because he knew perfectly well that his ex-wife Lori is an agent of Complainant, and not Complainant itself. Moreover, Respondent did not transfer the disputed domain names to Ms. Tuggle at all. Instead, in an email to Complainant, Respondent stated that he intended to maintain the registration of the domain names until expiration of the registration period, even after receiving notice that this use of Complainant’s mark was unauthorized by Complainant. These facts make Respondent’s alleged purpose less than credible.
Even assuming that Respondent’s alleged purpose might have been sincere, the Panel believes that giving away a domain name, in respect of which neither rights nor legitimate interests exist, cannot create a legitimate title to the domain name. Accepting Respondent’s argument would lead to the absurd consequence that any third party mark could be turned into a legitimate domain name by simply adding the name of an individual and claiming that the domain name registration is intended to be given away as a gift to such individual.
Of course, nothing is said here against transferring a domain name legitimately acquired.
Once that a complainant, such as in the instant case, has made a prima facie case as to Policy ¶ 4(a)(ii), it is up to the respondent to show that it has rights or legitimate interests in respect of the domain name. As Respondent failed to do so, the Panel finds that the second element of the Policy is met.
Complainant maintains that Respondent registered the domain names to create the impression of association with State Farm, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name, and/or to create initial interest confusion for individuals looking for information about State Farm. Complainant also contends that the disputed domain names are intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the sites. For his part, Respondent denies that each of the bad faith circumstances of Policy ¶ 4(b) be present, adding that that he did not register the disputed domain names in bad faith, and that he has never intended or attempted to activate the sites in dispute
Since Respondent’s ex-wife, Ms. Lori Tuggle, is an agent of Complainant, it is simply incredible that Respondent first knew about Complainant’s trademark rights after Complainant sent Respondent a cease and desist letter. Also, Respondent’s contention that he “never intended or attempted to activate the sites in dispute” is incredible. Complainant has shown with printouts taken from the websites at the disputed domain names that these websites were “parked” at a website on which various sponsored links with commercial purpose were posted. Respondent did not deny this fact or contest Complainant’s evidence. The Panel also notes that most of the sponsored links on Respondent’s websites offer quotes and auto and life insurance services provided by competitors of Complainant. Only one of these links, <statefarm.com>, appears to be connected to Complainant
Whatever the meaning of “activating a domain name,” Respondent caused the disputed domain names to be used in a “parking” service. Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web sites or other on-line locations, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web sites or locations or of a product or service on Respondent’s web sites or locations. This is a circumstance of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). That this “parking” service is provided by the registrar of the domain names for free, does not mean that a purpose of commercial gain is absent, because the links appearing on the websites at the disputed domain names presumably are seeking commercial gain via sales or commissions.
Accordingly, the Panel concludes that Respondent registered and is using the disputed domain names 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 <loritugglestatefarm.com> and <loritugglestatefarm.info> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: December 8, 2008
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