State Farm Mutual Automobile Insurance Company v. dahlcolor c/o Robert Dahl
Claim Number: FA0811001233291
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.
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.
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 email@example.com and firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from Respondent to 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.
Respondent has sent a response agreeing to transfer the disputed domain names.
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.
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.
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