State Farm Mutual Automobile Insurance Company v. Barbara Battista
Claim Number: FA0811001232479
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.
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.
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 firstname.lastname@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum