State Farm Mutual Automobile
Insurance Company v. dahlcolor c/o Robert Dahl
Claim Number: FA0811001233291
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 NAMES
The domain names at issue are <statefarmfield.com> and <statefarmstadium.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 10, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 10, 2008.
On November 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <statefarmfield.com> and <statefarmstadium.com>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On November 18, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 8, 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@statefarmfield.com and postmaster@statefarmstadium.com by e-mail.
A timely Response was received and determined to be complete on December 1, 2008.
On December 3, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that Respondent has no rights or legitimate
interests in the disputed domain names and that Respondent is not associated
with, affiliated with or sponsored by State Farm, the owner of the service mark
"State Farm." Complainant
states that he did not authorize the Respondent to register the domain names or
to use the STATE FARM trademark for the Respondent’s business purposes.
Complainant contends that Respondent is not commonly known under the
domain names, “statefarmfield.com” or “statefarmstadium.com.” Complainant asserts that the Respondent does
not possess independent intellectual property rights in the names. Complainant also asserts that he does not
have a contractual arrangement with Respondent that would allow him to offer
services under the State Farm name.
Complainant contends that it is likely that the Respondent registered
the names to create the impression of association with Complainant, its agents,
products, sponsorships, and services; to trade off the good will associated
with the Complainant name; and/or to create initial interest confusion for
individuals looking for information about Complainant.
B. Respondent
Respondent has sent a response agreeing to transfer the disputed domain
names.
FINDINGS
State Farm is a nationally known company that
has been doing business under the name “State Farm” since 1930. State Farm engages in business in both the
insurance and the financial services industry.
State Farm first began using the “State Farm”
trademark in 1930 and registered it with the United States Patent and Trademark
Office on June 11, 1996 and registered “State Farm Insurance” on September 11,
1979. State Farm has also registered
with the United States Patent and Trademark Office the following marks that all
include the phrase “State Farm:”
the State Farm Insurance 3 oval logo; State
Farm Bank; State Farm Federal Savings Bank logo; State Farm Fire and Casualty
Co. logo; State Farm Benefit Management Account; State Farm Bayou Classic logo;
State Farm Catastrophe Services; State Farm Mutual Funds and
statefarm.com.
In Canada State Farm 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
State Farm developed its Internet web
presence in 1995 using the domain name statefarm.com.
DISCUSSION
Preliminary
Issue: Consent to Transfer
Respondent consents to transfer the <statefarmfield.com> and <statefarmstadium.com> domain names
to Complainant. However, after the
initiation of this proceeding, Godaddy.com, Inc. placed a hold on Respondent’s
account and therefore Respondent cannot transfer the disputed domain names
while this proceeding is still pending.
In a circumstance such as this, where Respondent
has not contested the transfer of the disputed domain names but instead agrees
to transfer the domain names in question to Complainant, the Panel may decide
to forego the traditional UDRP analysis and order an immediate transfer of the <statefarmfield.com> and <statefarmstadium.com> domain
names. See Boehringer Ingelheim Int’l
GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9,
2003) (transferring the domain name registration where the respondent stipulated
to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis
Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties
have both asked for the domain name to be transferred to the Complainant .
. . Since the requests of the parties in this case are identical, the Panel has
no scope to do anything other than to recognize the common request, and it has
no mandate to make findings of fact or of compliance (or not) with the
Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat.
Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has
agreed to comply with Complainant’s request, the Panel felt it to be expedient
and judicial to forego the traditional UDRP analysis and order the transfer of
the domain names.”).
However, in the facts of this case, the Panel is
of the view that the transfer of the disputed domain name deserves to be along
with the findings in accordance with the Policy.
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 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006)
(finding that the complainant had established rights in the PENTIUM, CENTRINO
and INTEL INSIDE marks by registering the marks with the USPTO); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that
a mark is registrable, by so issuing a registration, as indeed was the case
here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Both of the
disputed domain names contain Complainant’s STATE FARM mark in their entirety,
merely adding the generic top-level domain (“gTLD”) “.com,” and either the
generic term “field” or “stadium.”
Previous panels have found the inclusion of a gTLD to be irrelevant to a
Policy ¶ 4(a)(i) analysis. Moreover, the use of a generic term is not
sufficient to escape the finding of similarity and does not change the overall
impression of the designation as being connected to the trademark of the
Complainant. Accordingly, the Panel finds that both the <statefarmfield.com> and <statefarmstadium.com>
domain names are confusingly similar to Complainant’s STATE FARM mark pursuant
to Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level
domain “.com” is insufficient to differentiate a disputed domain name from a
mark); 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 AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to
differentiate the <aimprofiles.com> domain name from the complainant’s
AIM mark by merely adding the term “profiles”).
The Panel finds
that the Complainant has established the first element of the Policy.
Complainant must make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then Respondent carries the burden to show it
does have rights or legitimate interests.
See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828
(Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a
prima facie case that the respondent lacks rights and legitimate
interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL LLC v. Gerberg, FA 780200
(Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie
showing that Respondent does not have rights or legitimate interest in the
subject domain names, which burden is light.
If Complainant satisfies its burden, then the burden shifts to
Respondent to show that it does have rights or legitimate interests in the
subject domain names.”).
Complainant states
that Respondent is not affiliated with or sponsored by Complainant. Moreover,
Complainant states that it has never granted permission or otherwise authorized
Complainant to use the STATE FARM mark in any way. Finally, the WHOIS
information solely identifies Respondent as “dahlcolor c/o Robert Dahl.”
Without any further information in the record, the Panel finds that Respondent
is not commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)
(finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
Finally, by the time
the Complaint was filed and by the time this decision was issued, Respondent’s
disputed domain names resolve to websites indicating that they are “parked free
courtesy of GoDaddy.com.” This Panel finds, in accordance with precedent, that
this use on its own and without any further evidence is neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006) (“the operation of a
‘parking page’ in connection with the disputed domain name does not
constitute a bona fide offering of goods or services as contemplated by
[UDRP] Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as contemplated
by [UDRP] Policy ¶ 4(c)[iii].”); see also
Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18,
2007) (“The Panel also notes that Respondent is responsible for the content of
any website using the domain name at issue”); see also *MEDIATIS
The Panel finds
that the Complainant has established the second element of the Policy.
Complainant contends that Respondent has
registered the disputed domain names for the purpose of attempting to
commercially benefit from their confusing similarity with Complainant’s mark.
Each of the disputed domain names indicated that they are parked and display
links to directly competing third-parties. Because Complainant’s trademarks are
widely known, it is not likely that Respondent ignored their existence by the
time he registered the disputed domain names. For these reasons, the Panel finds
that the disputed domain names were registered and are being used in bad faith
pursuant to Policy ¶ 4(b)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iv), regardless of the
fact that the respondent was not earning click-through fees, because
“[a]lthough the websites accessed via the Disputed Domains may be operated by
domain parking service providers, that activity is legally and practically
attributable back to Respondent … [t]he key fact here is that Respondent, in
collaboration with the domain parking service providers, is exploiting
Complainant's goodwill.”); see
also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (finding bad faith
registration and use where the respondent parked the disputed domain name with
the registrar because “the view of the panel is that, in the absence of
evidence to the contrary in any particular case, of which there is none in the
present case, a party in the position of the Respondent is also responsible for
the sponsored links currently appearing on the website.”).
Accordingly the Panel finds that the
Complainant has made out bad faith registration and use of the domain names by
the Respondent.
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 <statefarmfield.com> and <statefarmstadium.com>
domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: December 23, 2008