State Farm Mutual Automobile
Insurance Company v. Barbara Battista
Claim Number: FA0811001232479
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 <statefarmsfinancial.org>, registered
with eNom.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 4, 2008.
On November 4, 2008, eNom confirmed by e-mail to the National
Arbitration Forum that the <statefarmsfinancial.org> domain name
is registered with eNom and that
Respondent is the current registrant of the name. eNom
has verified that Respondent is bound by the eNom
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 November 6, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 26, 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@statefarmsfinancial.org
by e-mail.
A timely Response was received and determined to be complete on December 10, 2008.
Complainant submitted a timely Additional Submission on December 15, 2008,
which was determined to be complete pursuant to Supplemental Rule 7.
On December 16, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 Complainant opened a Federally Chartered Bank known as State Farm Bank. Complainant engages in business in both the insurance and the financial services industry. Complainant also has established a nationally recognized presence on televised and other media.
Complainant first began using the “State Farm” trademark in 1930 and registered it with the Patent and Trademark Office on June 11, 1996 and registered “State Farm Bank” on February 15, 2000. Complainant has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:
State Farm Bank Logo; State Farm Dollars; State Farm
Federal Credit Union logo; State Farm Federal Savings Bank logo; State Farm
Insurance & Financial Review; State Farm Insurance & Financial Review
logo; State Farm Mutual Funds; State Farm Mutual Funds logo; State Farm Benefit
Management Account; the State Farm Insurance 3 oval logo; State Farm Fire and
Casualty Co. logo; State Farm Catastrophe Services; and statefarm.com.
In Canada
Complainant has registered the State Farm 3 oval logo; State Farm; State Farm
Insurance Companies; State Farm Insurance and the State Farm Fire and Casualty
Co. logo. In the European Community the
State Farm 3 oval logo is registered. In
For over 70 years Complainant has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. Complainant does not allow unauthorized parties to use its marks as part of their Internet domain names.
Further Complainant developed its Internet web presence in 1995 using the domain name statefarm.com. At its web site, Complainant offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents. Complainant has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by Complainant.
In May of 2008 it was brought to Complainant's attention that Respondent had registered Complainant’s trademark "State Farm" as part of the [<statefarmsfinancial.org> domain name]. In addition, the Respondent registered, “statefarmsfinancial.net” with a privacy service, a separate arbitration for that domain name is also being filed. The domain name, “statefarmsfinancial.org,” sends a person to a web page for the company State Farms Financial, Inc., a debt negotiation service.
On May 22, 2008 a cease and desist letter concerning the domain name and the business name was sent by Complainant’s Intellectual Property Administrator via overnight mail to Respondent. On May 27, 2008 Respondent phoned Complainant and left a message advising that she had consulted with an attorney before forming her company and thus is using “State Farms” and not “State Farm”. Respondent stated her attorney advised her not to use any State Farm trademark symbols. Respondent also stated their company does not identify themselves as associated with State Farm Insurance. Respondent indicated she had no intention to change the company name or to abandon her domain name. Respondent stated that if Complainant wanted to pursue this, she would give Complainant her attorney’s name so that the “attorneys can duke it out.” On May 28, 2008, Complainant contacted the law firm Baker Botts, L.L.P to assist with this matter. On May 30, 2008, Truman H. Fenton, with Baker Botts L.L.P sent a cease and desist letter to the Respondent concerning the domain name and the business name. On June 23, 2008 Respondent’s attorney, Cheryl Meide with Meide Law Firm, P.A., responded to Complainant’s cease and desist letter. Ms. Meide stated she found Complainant’s allegations to be without merit. On July 28, 2008, Complainant had the law firm Baker Botts, LLP send another cease and desist letter to the Respondent’s attorney, Cheryl Meide. Subsequently, Ms. Meide contacted Baker Botts and advised they would be willing to “phase-out” use of the “State Farm” trademark over the next year. On August 25, 2008, at the direction of the Complainant, Baker Botts sent another cease and desist letter to Respondent’s attorney, Cheryl Meide. On September 10, 2008 Ms. Meade responded advising that the Respondent’s use did not constitute trademark infringement.
When the Respondent first created the web content for [the <statefarmsfinancial.org> domain name], although claiming it was not a usage of our mark, the site was designed with a red background. Red is a primary color used in Complainant’s advertising and web site. It was not until after Complainant’s retained counsel contacted Respondent, that red was removed from the web site.
Because of Complainant’s substantial efforts, the public associates the phrase “State Farm” with the owner of the service mark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning. The domain name at issue is confusingly similar to Complainant’s service mark that it has been using since 1930 and to Complainant’s other registered marks in the financial services arena. Moreover, the domain name is confusingly similar to products, services or information that Complainant offers generally to the public as well as on its web sites. Consumers who discover this domain name are likely to be confused as to Respondent's affiliation with, sponsorship by or connection to Complainant.
Respondent has no right or legitimate interest in the disputed domain name. The Respondent is not associated with, affiliated with or sponsored by Complainant, the owner of the service mark "State Farm." Complainant did not authorize the Respondent to register the domain name or to use the State Farm trademark for the Respondent’s business purposes.
Respondent does not possess independent intellectual property rights in the name. In addition, Complainant does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name.
Complainant believes that the
Respondent registered the name to create the impression of association with
Complainant, 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 Complainant.
It is clear that the name registered by Respondent is confusingly similar to Complainant’s trademarks. Indeed, the name includes one of Complainant's registered mark "State Farm." This domain is clearly intended to attract individuals seeking information on Complainant and create customer confusion as to the source or sponsorship of the site.
Complainant has filed numerous
complaints relating to its domain names under the ICANN Uniform Dispute
Resolution Process. The arbitrators have
consistently found that the use of Complainant’s trademarks in a domain name,
whether or not additional language, characters or hyphens are added to the
State Farm name, is confusingly similar to Complainant’s trademarks and that
such registrations have been done in bad faith.
As a result, Respondent has no legitimate claim in the domain name at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the domain name at issue in bad faith.
In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed domain name was in bad faith in that:
a) Respondent has not acquired a trademark or other intellectual property rights in the domain name in question. This obvious lack of right to use the name in question shows bad faith registration and use.
b) Despite having registered the name “statefarmsfinancial.org,” Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of Complainant, its affiliates or subsidiaries and is not an independent contractor agent of Complainant. Registering a domain name for products and services that it does not have authority to offer, shows that the Respondent has acted in bad faith.
c) While the Respondent registered the domain name “statefarmsfinancial.org,” giving the impression that interested individuals will receive information regarding Complainant, the fact is individuals are sent to a web page for the company State Farms Financial, Inc., a debt negotiation service. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
d) Complainant has long associated the trademark “State Farm” and the advertising using this trademark with the color red. Respondent knew, or should have known this, and thus originally used the color red for the web content of “statefarmsfinancial.org.” The Respondent’s usage of the color red on the web content associated with the domain name “statefarmsfinancial.org” demonstrates intent of bad faith.
e)
Respondent registered its domain name, “statefarmsfinancial.org” on May
13, 2008. State Farm registered its domain name “statefarm.com” on May 24,
1995. Respondent knew or should have
known of Complainant’s involvement in the insurance and financial services
arena, as well as its long-term use of the trademark “State Farm,” “State Farm
Bank,” “State Farm Insurance” and the long-term use of the domain name
“statefarm.com.” The Respondent’s registration of the domain name by the
Respondent was intended to be in bad faith.
Respondent contends that the STATE FARMS FINANCIAL
mark is in no way confusingly similar to Complainant’s “State Farm” mark.
Respondent’s mark is not simply “State Farms,” but rather “STATE FARMS
FINANCIAL.”
Likelihood of confusion must be based on the marks
as a whole, not on a dissection of the marks. Similarity is determined on the
basis of the total effect of the mark, rather than by comparing individual
features. Considering the total effect of the two relevant marks in this area,
there is no likelihood of confusion.
According to Respondent it is well settled that a
common term between two marks does not suffice to render them confusingly
similar. While in this instance both marks contain the letters “State Farm,”
the marks in their entirety differ distinctly from one another. It is plain
that the STATE FARM marks in question and the STATE FARMS FINANCIAL mark are
visually dissimilar as well as phonetically dissimilar. In addition, as proof
of the lack of any confusing similarity, Respondent is unaware of any confusion
whatsoever by any consumers or potential consumers between Respondent’s mark
and Complainant’s STATE FARM mark and/or services.
It is not enough even if the actual marks were
confusingly similar. To determine whether a likelihood of confusion exists, all
relevant facts and circumstances must be assessed. The multi-factor test set
forth in DuPont provides a guideline for assessing likelihood of confusion.
Thorough analysis of the instant facts and circumstances weigh against a
finding of likelihood of confusion. Specifically, the dissimilarity of the
marks in appearance, sound, and connotation; the dissimilarity of the services;
the sophistication of customers; the length and personal attention provided in
connection with the transactions; and the concurrent use without actual
confusion, sufficiently distinguish the STATE FARMS FINANCIAL mark from the
Complainant’s “State Farm” marks, ensuring that ultimately consumers are not
likely to be confused as to the source, affiliation, or sponsorship of
Respondent’s services.
In particular, the services that Respondent provides
under the STATE FARMS FINANCIAL mark are different than the services
Complainant provides under its State Farm marks. Respondent provides debt
negotiations in connection with the STATE FARMS FINANCIAL mark and no other
products or services. Respondent immediately refers its clients to outside
third parties for any services other than debt negotiations. Respondent simply
negotiates on behalf of its clients to help its clients better manage or
eliminate their debt.
Respondent’s STATE FARMS FINANCIAL mark has
nothing to do with the types of services provided by Complainant under the
State Farm marks. Indeed, the Federal Trademark Registrations that Complainant
primarily references are only in connection with “underwriting and servicing
auto, homeowners, life and fire insurance.” None of the asserted trademark
registrations or uses identify any connection with debt negotiation services.
Our own investigation also failed to come up with any State Farm Mutual
financial services related to debt negotiations with third parties to help
State Farm Mutual’s clients better manage or eliminate their debt. There is no
likelihood of confusion between the relevant marks and thus no trademark
infringement.
Respondent, through counsel hired only in June of
2008, repeatedly identified to Complainant that their services have no
connection with Respondent’s services, namely, debt negotiation services. In
each instance, Complainant failed to address or respond to the fact that the
parties provided different services. Instead Complainant merely responded, “we
reject your conclusion” without any rationale or explanation and demanded that
we provide Complainant with ownership of Respondent’s domain name.
Contrary to Complainant’s constant assertion,
because there is no likelihood of confusion between the marks at issue,
Respondent does not need permission from Complainant, and thus Respondent did
not seek Complainant’s permission to use Respondent’s own domain name
www.statefarmsfinancial.org, Complainant simply has no rights or valid claim to
this domain name. Respondent has established its intellectual property rights
to this name through appropriate and valid common law use. Respondent uses the
STATE FARMS FINANCIAL trademark and corresponding [<statefarmsfinancial.org>] domain name with its legitimate
and bona fide offering of debt negotiation services to the consuming public as
admitted by Complainant.
Complainant simply assumes that everyone wants to
be a part of Complainant. Complainant assumes that Respondent has intended to
capitalize on Complainant’s domain name/mark because Respondent’s domain name
embeds the term State Farm in [<statefarmsfinancial.org>
domain name] and Respondent does not have authorization from Complainant to use
Respondent’s mark. Respondent simply has no intention to be considered a part
of Complainant in any manner.
As previously stated, there is no likelihood of
confusion between the marks and no need to seek authorization from Complainant.
Moreover Respondent has never considered much less attempted to capitalize on
Complainant’s marks or any alleged good will associated with such marks.
Respondent has never intentionally or unintentionally caused consumers to
procure services from Respondent or its entity under the mistaken belief that
Respondent’s entity is affiliated with Complainant or is otherwise licensed or
related to Complainant. Respondent simply never contemplated the existence of
Complainant’s name, business, or marks.
Respondent incorporated under the State Farms
Financial, Inc. (“SFF”) corporate name and created its domain names without any
influence, notice, or consideration of State Farm Mutual’s “State Farm” mark
whatsoever. Barbara Battista, is the owner of SFF and her maiden name is
Barbara Crager. Ms. Battista originally selected the corporate name “Crager
Estate Farms” for its services. Respondent, Barbara Crager/Battista, originally
envisioned that the company would not only perform debt negotiation services,
but also provide services in connection with real estate. Ms. Battista then
received constructive feedback from friends and family that the term “Estate”
would evoke a negative association related to death and the surname “Crager”
was simply unnecessary. Thus the “E” was dropped from “Estate” to create
“State,” the name “Crager” was dropped from the mark, and the term “Financial”
was added as a positive way to reference the debt aspect of the company’s
services. Since the creation of Ms. Battista’s corporate name and trademark,
Barbara Battista no longer has an interest in providing real estate services in
connection with the mark and trade name STATE FARMS FINANCIAL given the current
economic state and particularly as it relates to real estate.
Respondent has not registered or acquired the [<statefarmsfinancial.org> domain
name] for the purpose of selling, renting, or otherwise transferring the domain
name registration to the Complainant. Respondent has not registered the domain
name in order to prevent Complainant from using any particular mark in a
corresponding domain name. Respondent has no interest in disrupting the
business of Complainant. Instead, Complainant has approached Respondent and
interrupted Respondent’s quiet use and enjoyment of its [<statefarmsfinancial.org> domain name]. Indeed in oral and
written negotiations explicitly identified by Respondent to be confidential
settlement negotiations Respondent was willing to acquiesce to Complainant in
removing any aspects of the website that may be objected to by Complainant and
was willing to agree to a one-year phase out use of the domain name without any
reimbursement of Respondent’s out-of-pocket costs related to the domain name.
Respondent begrudgingly was willing to do so only after numerous harassing
communications from Complainant that were becoming extremely costly for
Respondent to respond to and defend. Respondent explicitly maintained at all
times its valid rights to the [<statefarmsfinancial.org>
domain name], and consistently invalidated Complainant’s claims. Now
Complainant attempts to use Respondent’s efforts to confidentially settle the
matter to strip Respondent of its rightfully owned domain name. The only party
acting in bad faith in this proceeding is Complainant.
In its Additional Submission Complainant contends that Respondent has
greatly mischaracterized and misapplied the Dupont factors to the facts at
hand.
First, STATE FARMS FINANCIAL is very similar to STATE FARM under the
“Likelihood of confusion” test. Second, the additional word “financial” is
descriptive of the products and services covered by the federally registered
STATE FARM mark. Accordingly, the incontestable STAE FARM mark, which has been
in use since at least 1956, is extremely similar to Respondent’s business name
and second level domain name in all relevant ways: appearance, sound,
connotation, and overall commercial impression.
While the “likelihood of confusion” test considers a mark as a whole,
it is proper to give greater force and effect to the important or “dominant”
features of a composite mark because such features make the greatest impression
on the ordinary buyer. Accordingly, weighting the individual components of a
mark is an integral an unavoidable step in determining the overall impression
of the mark. If the “dominant” portion of both marks is the same, then
likelihood of confusion exists, notwithstanding peripheral differences.
According to Complainant courts often consider the “dominant” portion
of a mark to be the first word, prefix, or syllable, in the mark. In other
words, the presence of a well-known term as the first words in both marks
renders the marks similar. A court will treat a well-known and famous part of a
composite mark as the “dominant” portion of conflicting marks and give such
feature greater weight in the comparison. Accordingly, if a junior user takes
the entire mark of another and adds a suggestive or descriptive element, the
additional element is not sufficient to avoid confusion.
Applying the case law, STATE FARM is the “dominant” part in
Respondent’s second level domain name and commands greater weight in the
likelihood of confusion analysis because (1) the STATE FARM mark constitutes
the first two words of the second level domain name; and (2) it is the
well-known and famous part of Respondent’s composite mark, In particular, the
Board will appreciate that the STATE FARM mark and the name STATE FARMS
FINANCIAL are visually and phonetically similar. Respondent’s conclusory
statement to the contrary is unpersuasive where Respondent’s second level
domain name – STATEFARMSFINANCIAL – adopts and includes Complainant’s mark –
STATE FARM – in its entirety. IN addition, the STATE FARM mark constitutes two
out of the three word sin the second level domain name, making STATE FARM the
majority portion of that domain name. Furthermore, Respondent is the junior
user that simply added the letter “s” and the descriptive word “financial” to
the well-known and incontestable mark STATE FARM. A court will give little
weight to a particular feature that is descriptive or generic of the involved
goods or services. Respondent admits that the added term, “financial,” is
descriptive of Respondent’s services because the word “was added as a positive
way to reference the debt aspect of the company’s services.” Consequently, the
word “financial” is a descriptive word that has very little weight in the
likelihood of confusion test, rendering Respondent’s mark to be practically the
same as the STATE FARM mark. Therefore, this modification is not sufficient to
avoid confusion. The similarity of the marks strongly supports a conclusion
that is a right likelihood of confusion.
Respondent improperly asserts that its “dept negotiation” services
provided under the State Farms Financial name are sufficiently different than
the insurance and banking services State Farm provides under its marks, to
preclude any likelihood of confusion. This assertion, however, ignores
well-established case law and ignores the undisputed facts. The test of
“likelihood of confusion” encompasses any type of confusion, including:
confusion of source, sponsorship, affiliation, or connection. Furthermore, at
least one circuit court of appeals has found that insurance and bank services
are related as financial services so as to likely cause confusion. Even
services or products not in the same field have been deemed related.
These cases demonstrate that the products and services covered by the
STATE FARM registration alone qualify as being “related” to the “financial”
services provided by State Farms Financial under its business name and second
level domain name. Further, Complainant and its agents also provide a broad
array of financial services, other than insurance, to its customers and has
registered marks that cover these financial services. Specifically, four of
State Farm’s incontestable marks are worth highlighting here: STATE FARM
(underwriting and servicing auto, homeowners, life and fire insurance), STATE
FARM BANK (providing banking services to others), STATE FARM MUTUAL FUNDS
(mutual fund investment), and STATE FARM CATASTROPHE SERVICES (insurance claims
processing). The descriptive term “financial” in no way differentiates
Respondent’s offered services of “debt negotiations” from the offering of
insurance products, banking products and services, mutual funds, and insurance
claims services offered by Complainant under these incontestable marks. Rather,
“debt negotiations” is merely a financial service that the public may assume to
be performed by a bank or by an agent of a diversified financial service
company – e.g., a State Farm agent. The similarity of the services strongly
supports a conclusion that is a high likelihood of confusion.
Respondent relies on a lack of evidence of actual confusion as proof
that the marks are not confusingly similar. However, it is well settled that
actual confusion is not required for a finding of infringement. Again,
Respondent mischaracterizes this “proof” by simply concluding that there has
been concurrent use without actual confusion. This Dupont factor actually
requires consideration of the length of time during and the conditions under
which there has been concurrent use without evidence of actual confusion.
Furthermore, a court may properly find infringement even before an alleged
infringer has begun using the offending mark. Therefore, the fact that
Respondent’s website has only been in operation for a few months weighs heavily
in factor of Complainant as it is a relatively brief period of concurrent use.
Respondent’s use of the contested domain name is an unacceptable
dilution of State Farm’s incontestable, well-known, federally-registered
trademarks. Complainant has invested heavily in marketing efforts to build and
maintain one of the most recognizable brands in the
Respondent included a lengthy narrative of the purported origin of the
name State Farms Financials in an attempt to negate the record evidence of bad
faith. However, an infringer’s intent to deceive or confuse is not required to
prove infringement. The only test of infringement is “likelihood of confusion,”
which is a factual issue focusing upon the probable reaction of buyers, not the
subjective state of mind in the infringing seller. Alternatively, proof of
Respondent’s intent and purpose to trade on Complainant’s goodwill by using a
confusingly similar mark is strong evidence of a likelihood of confusion. Thus,
any evidence of Respondent’s subjective intent can only be used against her in
an infringement determination.
Even in the context of this proceeding, Respondent’s argument is
unavailing. First and foremost, Respondent’s narrative is self-serving hearsay
at best. Respondent offers no supporting affidavits or evidence of any kind to
substantiate this narrative. Second, even if this narrative were true, it would
actually support a finding of bad faith. Courts have recognized that the second
comer has a duty to so name and dress her service as to avoid all likelihood of
consumers confusing it with the product of the first comer.
The undisputed, objective evidence in the record suggests bad faith. First,
Respondent chose a similar mark as explained above. Second, Respondent sought
legal advice on the selected name and was advised to avoid using any of
Complainant’s logos. Third, in relating the lengthy narrative of the purported
origin of the name State Farms Financials, Respondent admitted actual knowledge
of a least some of Complainant’s trademarks. Fourth, Respondent originally used
a red background – a prominent feature of Complainant’s website and marketing
materials – on her website, only changing the background after being contacted
by Complainant’s attorneys. Finally, Respondent told Complainant that she
wanted to let the “attorneys duke it out” when initially contacted by
Complainant. These undisputed facts clearly suggest bad faith.
Here, Respondent clearly failed her duty to name her business so as to
avoid likelihood of consumer confusion. Regardless of how name originated, it
would have been reasonable for her to modify the name or select a different
name that would not be confused with STATE FARM. Respondent admits hat it had
actual knowledge of the STATE FARM marks and chose to use the contested domain
name anyway. Respondent’s continued use of this domain with actual knowledge of
complainant’s federally registered trademarks, her initial breach of her duty
to avoid confusion, and her failure to take immediate corrective action after
receiving a warning from Complainant support a finding of bad faith.
Therefore, under well-established U.S. trademark law, as explained
above, Respondent’s unauthorized use of [<statefarmsfinancial.org> domain
name] constitutes trademark infringement by confusing customers and the
general public as to potential sponsorship, affiliation an/or connection with
Complainant.
FINDINGS
The Panel finds that:
1.
the <statefarmsfinancial.org>
domain name is confusingly
similar to Complainant’s STATE FARM mark.
2.
Respondent
has not established any right or legitimate interest in the <statefarmsfinancial.org>
domain name and
3. Respondent has registered and is using the Domain Name
<statefarmsfinancial.org>
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.
The Panel finds that Complainant has sufficiently established rights in
the STATE FARM mark through registration of the mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996)
pursuant to Policy ¶ 4(a)(i). See
VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat.
Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS
SQUARE mark by registering it with the United States Patent and Trademark
Office (“USPTO”).”); see also Reebok Int’l Ltd. v. Santos, FA 565685
(Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and
Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK
mark. This trademark registration is
adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that the disputed domain
name is clearly confusingly similar to its trademark. However, Complainant does
not provide any additional argument or evidence. Nonetheless, the Panel finds
that the disputed domain name contains Complainant’s STATE FARM mark in its
entirety followed by the letter “s” and the descriptive term “financial.”
Complainant states that it conducts various financial, banking and investment
services. Previous panels have found the addition of a single letter or of a
descriptive term that has an obvious relationship to a complainant’s business
does not sufficiently distinguish a disputed domain name. See Victoria’s Secret
v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); see also 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)). Additionally, the
disputed domain name incorporates the generic top-level domain (“gTLD”) “.org.”
However, the Panel considers this to be irrelevant to its Policy ¶ 4(a)(i)
analysis. See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be
“.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i)
analysis). For all of these
aforementioned reasons, the Panel finds the <statefarmsfinancial.org> domain name to be
confusingly similar to Complainant’s STATE FARM mark for the purposes of Policy
¶ 4(a)(i).
Complainant must show that Respondent has no rights or legitimate
interests in respect of the disputed domain name. Respondent does not assume
the burden of proof, but may establish a right or legitimate interest in a
disputed domain name by demonstrating in accordance with paragraph 4(c) of the
Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to 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).
Complainant states that “Respondent is not
associated with, affiliated with or sponsored by State Farm” and therefore has
no rights or legitimate interests in the disputed domain name. The Panel looks
further into the record and considers that Respondent’s WHOIS information
identifies Respondent as “Barbara Battista.” This does not appear to have any
relationship to the disputed domain name. Without any further information in
the record, and upon Complainant’s assertions, the Panel is of the view that
Respondent is not commonly known by the <statefarmsfinancial.org>
domain name pursuant to
Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant
states that the disputed domain name utilizes Complainant’s STATE FARM mark and
resolves to a website for a company called “State Farms Financial, Inc.,” a
debt negotiation service. Complainant points out that the resolving website
appears as a similar color red to the red in Complainant’s mark. Complainant
contends that these circumstances are sufficient to demonstrate a lack of
rights and legitimate interests in the disputed domain name. Since the Panel
finds Respondent is utilizing Complainant’s mark to redirect Internet users
from Complainant’s business to Respondent’s unrelated business, it determines
that Respondent is not making a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) with the <statefarmsfinancial.org> domain name. See Bank of Am. Fork v. Shen, FA 699645
(Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain
name to redirect Internet users to websites unrelated to a complainant’s mark
is not a bona fide use under Policy ¶
4(c)(i)); see also Summit Group, LLC v.
LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect
Internet users to respondent’s own website for commercial gain does not
constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant urges the Panel to
find that Respondent has acted in bad faith arguing that Respondent registered
a confusingly similar disputed domain name. Complainant insists that this
demonstrates Respondent’s intent to attract individuals seeking information on
State Farm and create confusion as the source or sponsorship of the website
resolving from the disputed domain name. Complainant supports this argument by
discussing the similar color red used in the resolving website and
Complainant’s mark. This argument falls under the ambit of Policy ¶ 4(b)(iv).
The Panel finds that Respondent is truly attempting to commercially benefit
from a confusing similarity arising between Complainant’s mark and the disputed
domain name and therefore concludes that Respondent registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See
AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006)
(finding that the respondent took advantage of the confusing similarity between
the <theotheraol.com> and <theotheraol.net> domain names and the
complainant’s AOL mark, which indicates bad faith registration and use pursuant
to Policy ¶ 4(b)(iv)); see also Tower
Labs. Ltd. v. Seltzer, FA 791325
(Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and
was using the <bromoseltzer.com> domain name in bad faith because it
displayed a logo similar to the complainant’s BROMO SELTZER mark, which was
likely to confuse the public as to the source of the material exhibited at the
respondent’s website); see also Metro. Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad
faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent
is taking advantage of the confusing similarity between the <metropolitanlife.us>
domain name and Complainant’s METLIFE mark in order to profit from the goodwill
associated with the mark.”).
Moreover, Complainant argues
that Respondent had actual or constructive knowledge of Complainant’s rights in
the STATE FARM mark when Respondent registered and began using the disputed
domain name. Respondent does not counter this argument in its Response. The
Panel finds that Respondent was aware of Complainant’s STATE FARM mark. As a
result the Panel considers this to be further evidence of Respondent bad faith
registration and use of the disputed domain name pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Yahoo! Inc. v.
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 <statefarmsfinancial.org> domain name
be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: December 29, 2008
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