State Farm Mutual Automobile Insurance Company v.
Claim Number: FA0810001231199
PARTIES
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 <localstatefarmagent.com>, registered with Tucows Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2008; the National Arbitration Forum also received a hard copy of the Complaint on October 28, 2008.
On October 28, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <localstatefarmagent.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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 postmaster@localstatefarmagent.com by e-mail.
A timely Response was received and determined to be complete on November 17, 2008.
On
November 25, 2008, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the National Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant has been in business
in the
- For over 70 years, Complainant has expended substantial time and resources in promoting and developing good will associated with its service mark and does not permit unauthorized parties to use that mark in domain names.
- Complainant has owned the domain name, <statefarm.com>, since 1995 and makes extensive business use of its website located at that name.
- Respondent has registered the disputed domain name, <localstatefarmagent.com>, attached to which is a website that redirects Iternet users to third party websites offering services that compete directly with those provide by Complainant.
- The disputed domain name is confusingly similar to Complainant’s service mark, as it incorporates STATE FARM completely.
- Respondent has failed to respond to three cease-and-desist letters sent by Complainant with respect to continued use of the disputed domain name.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant is neither associated, nor has a contractual relationship, with Respondent which would allow use of Complainant’s mark. Respondent is not commonly known by the disputed domain name. Respondent has no intellectual property rights connected with that name. Respondent is neither using nor has made demonstrable preparations to use the disputed domain name in a bona fide offering of goods or services.
- Respondent registered and is using the disputed domain name in bad faith. The disputed domain name is used to attract Internet users seeking information about Complainant and its services and creates confusion as to the sponsorship and source of the website located at the name.
B. Respondent
- The disputed domain name is not the same as any service mark registered by Complainant.
- Other domain names exist which are owned by third parties and which incorporate Complainant’s service mark, including <statefarmsucks.com> and <statefarmfraud.com>.
- Two of the links on Respondent’s website located at the disputed domain name are paid for by agents of Complainant. The website at the disputed domain name was produced on a default basis by the Registrant of the disputed domain name, and not by Respondent. As of November 10, 2008, Respondent instructed said Registrant to remove that website from the disputed domain name.
- Respondent has a legitimate interest in the domain name at issue because Respondent owns the domain name, <localautoagent.com>, and plans to incorporate that name with the disputed domain name (and other domain names owned by Respondent) to provide the public with information on the purchase of auto insurance. Complainant’s agents will be given the opportunity to buy links on the service so provided by Respondent.
- Respondent’s proposed website at the disputed domain name will not confuse consumers but will instead furnish them with information and benefit Complainant’s agents by increasing their business. Thus, Respondent is acting in good faith and not using the disputed domain name for commercial gain, to divert consumers, or to tarnish Complainant’s service mark.
FINDINGS
Complainant is a
well-established
Respondent registered the disputed domain name on June 25, 2008. At least up to the filing of the Complaint, the website found at that name furnished links to third party websites that offered services that competed directly with those offered by Complainant.
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.
Having received from Complainant documentary evidence of its valid USPTO service mark registration for STATE FARM (Exhibit 1), the Panel finds that Complainant has rights in that mark. For UDRP panels reaching the same conclusion, see State Farm Mutual Automobile Insurance Co. v. wwWHYyy.com, FA 1063456 (Nat. Arb. Forum Sept. 25, 2007); and State Farm Mutual Automobile Insurance Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006).
The disputed domain name, <localstatefarmagent.com>, is not identical to Complainant’s service mark, STATE FARM. However, the name incorporates the full mark. There is added to that mark the descriptive terms “local” and “agent.” Those two common words do not reduce the dominance of Complainant’s mark in the disputed domain name. Instead they merely modify the mark to suggest the nearby location of a representative of Complainant. The Panel believes that any reasonable Internet user would confuse this name with services offered by Complainant as denoted by its mark. Thus, the Panel finds that the disputed domain name is confusingly similar to the name. There is extensive support in prior Policy decisions for the Panel’s conclusion that merely adding generic words to a well-established service mark does not eliminate confusing similarity arising in a domain name. Also, the addition of the gTLD, .com, is irrelevant for purposes of ascertaining confusing similarity. See for example Accenture Global Services GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007); and Whitney National Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
As a result, the Panel finds that Complainant has succeeded in demonstrating that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Although saddled by
the Policy with the burden of proving that Respondent has no rights or
legitimate interests in the disputed domain name, Complainant need put forth
only a prima facie case in that
regard before shifting the burden to Respondent, as paragraph 4(a)(ii) has been
interpreted by a consensus of prior UDRP panels. See
To meet the shift in burden, Respondent might rely on the criteria listed in Policy paragraph 4(c) to support its claim to rights or legitimate interests in the domain name at issue. However, the Panel has determined that Respondent fails to gain relief from any of the three criteria so listed. Respondent has not claimed, and the record does not show, that Respondent or a company owned by Respondent is commonly known by a name that in any way resembles the disputed domain name as required under paragraph 4(c)(ii) of the Policy. Moreover, Respondent’s admitted use of the disputed domain name to redirect Internet users, for profit, to third party websites (some of which compete directly with Complainant’s offerings), via links found at Respondent’s website attached to that name, constitutes neither a bona fide offering of goods or services per paragraph 4(c)(i) nor noncommercial or fair use per paragraph 4(c)(iii). See St. Lawrence University v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“Respondent is commercially benefiting from redirecting Internet users who reach Respondent’s website to third-party websites, by earning “click-through” fees. This use is not 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).”); and MasterCard Int’l Inc. v. Hochberger, D2006-1050 (WIPO Oct. 11, 2006).
As a rationale to support its claim of rights and legitimate interests in the disputed domain name, Respondent argues that some of the advertisers paying Respondent fees for said linkage to Respondent’s website are authorized agents of Complainants. However, Respondent presents the Panel with no evidence that Complainant is directly involved in or approves of this action by its licensed agents. Certainly, without such evidence, the Panel cannot possibly infer from this circumstance that Respondent has gained permission from Complainant to use its service mark and thus obtained rights or legitimate interests in the disputed domain name.
In view of the above, the Panel finds that Complainant has satisfied its burden in establishing that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent claims to be in the process of obtaining domain names to devolve to the website found at its main domain name, <localautoagent.com>, to provide the public with information concerning automobile insurance. Respondent does not assert that it is doing so on a gratuitous basis, but admits that it expects to gain commercially from fees extracted from advertisers who provide such information when Internet users segue from Respondent’s website to the advertisers’ websites. Since auto insurance is a major component of Complainant’s business and its service mark, STATE FARM, is identified by a large part of the public with auto insurance, the Panel understands why Respondent would consider the disputed domain name as a useful tool in its plans: i.e., consumers looking for auto insurance might be confused into believing that the disputed domain name is a Complainant-sponsored location where they might find information about obtaining auto insurance from Complainant.
Unfortunately for Respondent, the Panel understands also that such use of the disputed domain name by Respondent falls squarely within the circumstance delineated in paragraph 4(b)(iv) of the Policy – a circumstance which compels the Panel to find that Respondent has registered and is using the name in bad faith – to wit:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
In short, the Panel cannot escape the conclusion that Respondent’s actions meet all the pertinent criteria listed in the Policy paragraph noted above. See Columbia Ins. Co. v. Whois Data Shield & St Kitts Registry, D2007-0741 (WIPO July 25, 2007); and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent’s prior use of the [disputed] domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore,
Respondent’s argument that the Registrant of the disputed domain name, not
Respondent, is responsible for the website found at the name is not
persuasive. The Panel is in agreement with
the many previous Policy decisions where panels have found respondents
ultimately responsible for the various uses to which their disputed domain
names are put. See for
Accordingly, the Panel rules that the disputed domain 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 <localstatefarmagent.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: December 9, 2008
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