State Farm Mutual Automobile
Insurance Company
v.
Claim Number: FA0906001266272
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 <statefarmboardup.com> and
<statefarmclaimsassistance.com>, registered with Omnis
Network, LLC.
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.
Mr. Maninder Singh as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 3, 2009; the
National Arbitration Forum received a hard copy of the Complaint on June 4, 2009.
On June 9, 2009, Omnis Network, LLC confirmed by e-mail to the
National Arbitration Forum that the <statefarmboardup.com> and
<statefarmclaimsassistance.com> domain names are registered
with Omnis Network, LLC and that the
Respondent is the current registrant of the name. Omnis Network,
LLC has verified that Respondent is bound by the Omnis Network, LLC 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 June 15, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 6, 2009 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@statefarmboardup.com and postmaster@statefarmclaimsassistance.com by e-mail.
Respondent's Response was received
in electronic copy only on July 6, 2009. Therefore, in that no hard copy was
received by the Response deadline, the Response is considered deficient
under ICANN Rule 5.
On 16th July, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr. Maninder Singh as Panelist.
RELIEF SOUGHT
Complainant requests that the <statefarmboardup.com> and the <statefarmclaimsassistance.com> domain names be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
It is the contention of the Complainant that the State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. It is the case of the complainant that in 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank. State Farm is stated to have been engaging in business in both the insurance and the financial services industry. State Farm is also stated to have established a nationally recognized presence on televised and other media.
It is further the contention of the Complainant that State Farm 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 INSURANCE on September 11, 1979. The State Farm is also stated to have registered with the Patent and Trademark Office for the following marks that all include the phrase “State Farm”:
(i.)
State Farm Insurance Companies;
(ii.)
the State Farm Insurance 3 oval logo;
(iii.)
State Farm Bank;
(iv.)
State Farm Federal Savings Bank logo;
(v.)
State Farm Fire and Casualty Co. logo;
(vi.)
State Farm Benefit Management Account;
(vii.)
State Farm Bayou Classic logo;
(viii.)
State Farm Catastrophe Services;
(ix.)
State Farm Mutual Funds; and
(x.)
Statefarm.com.
It is also the contention of the complainant that 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 Mexico the State Farm 3 oval logo, State Farm and State Farm Insurance are registered. In this regard it has attached copies of registrations. According to the Complainant, the domain name registered by the Respondent incorporates State Farm’s registered trademark, “State Farm” and is confusingly similar to State Farm’s registered marks, especially since it includes insurance information.
It is the contention of the Complainant that for over 70 years State Farm 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. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
The Complainant also contends that State Farm developed its Internet web presence in 1995 using the <statefarm.com> domain name. 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 is stated to have been given by the State Farm at its website. The Complainant further contends that State Farm has expended 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 it.
It is the contention of the Complainant that in October of 2008 the attention of State Farm's was brought to the registration by Respondent of the Complainant’s trademark STATE FARM as part of its domain names, <statefarmboardup.com> and <statefarmclaimsassistance.com>. The domain names are sent to persons to web pages which are parked free courtesy, Omnis Network, and which contain advertisements for Omnis Network, LLC products and services. In this regard the Complainant has relied upon documents annexed as Annexures 2 & 3.
It is the contention of the complainant states on October 21, 2008 - followed by another letter dated November 19, 2008 – that cease and desist letters were sent by Complainant’s Intellectual Property Administrator via email to Respondent at jasoneharris@gmail.com. However, no response was received by the Respondent. Hence, on May 5, 2009 another cease and desist letter was sent, along with a draft arbitration complaint. Copies of Complainant’s cease and desist letters are at Annexure-4 of the Complaint.
The Complainant alleges that the Respondent has no right or legitimate interest in the disputed domain names. The Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the service mark "State Farm.” State Farm did not authorize the Respondent to register the domain names or to use the State Farm trademark for the Respondent’s business purposes.
It alleges that the Respondent is not commonly known under the domain names, <statefarmboardup.com> or <statefarmclaimsassistance.com>. According to Complainant, the Respondent has never been known by or performed business under the domain names at issue and does not possess independent intellectual property rights in the domain names. It further alleges that the State Farm does not have a contractual arrangement with the Respondent that would allow them to offer services under the State Farm name.
The Complainant also contends that State Farm believes that the Respondent registered the names to create the impression of association with State Farm, 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 State Farm.
It is the contention of the Complainant that the registration of domain names – <statefarmboardup.com> and <statefarmclaimsassistance.com> by the Respondent are confusingly similar to State Farm’s trademarks of the Complainant. Indeed, the names The purpose and intent of respondent for including the registered marks "State Farm of the Complainant as its domain names is to attract individuals seeking information on State Farm and create confusion in the minds of customer as to the source or sponsorship of the sites.
In support to its contentions the Complainant has relied upon the following decisions of the National Arbitration Forum relating to its domain names wherein, according to it, it has been consistently held that the use of State Farm’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 State Farm’s trademarks and that such registrations are in bad faith:-
(i.) State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc. - FA94662 (June 8, 2000)
(ii.) State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc. - FA94427 (May 27, 2000)
(iii.) State Farm Mut. Auto. Ins. Co. v. I & B - FA94719 (June 8, 2000)
(iv.) State Farm Mut. Auto. Ins. Co. v. JIT Consulting - FA94335 (April 24, 2000)
(v.) State Farm Mut. Auto. Ins. Co. v. Life en Theos - FA94663 (June 1, 2000)
(vi.)
State Farm Mut.
Auto. Ins. Co. v. Try Harder &
(vii.) State Farm Mut. Auto. Ins. Co. v. J & B, Inc. - FA94802 (June 13, 2000)
(viii.) State Farm Mut. Auto. Ins. Co. v. Richard Pierce - FA94808 (June 6, 2000)
(ix.) State Farm Mut. Auto. Ins. Co. v. HPR - FA94829 (June 22, 2000)
(x.) State Farm Mut. Auto. Ins. Co. v. Dean Gagnon - FA0710001087389 (November 16, 2007),
(xi.) State Farm Mut. Auto. Ins. Co. v. Jung Tae Young - FAFA0710001087458 (November 20, 2007),
(xii.) State Farm Mut. Auto. Ins. Co. v. Richard Pompilio - FAFA0710001092410 (November 20, 2007).
B. Respondent
With regard to use of domain name – <statefarmboardup.com>, the respondent replied as under: -
The purchase of the domain name – <statefarmboardup.com> - was in good faith and contrary to the statements made by state farm; such use has not been in bad faith. It is not even accessible and it is still under development. There is no consumer confusion or trade mark infringement as it is not in use in trade and commerce.
The Complainant-State Farms’ statement that owner has acted in bad faith is without merit.
The Domain name was purchased on behalf of Chicago Board Up Services and it has not been used generally on the internet to advertise its services.
The Chicago Board Up is an emergency service provided or board up services after disasters which are usually covered under insurance and the billing is directed to the insurance companies and they maintain their websites. The website <chicagoboardup.com> describes the emergency services provide, one of which is that of board up.
Their domain name is descriptive of the services which are offered by Chicago Board Up. Further, their domain name, Chicago Board UP has performed board up services which, in the past, the billing has been directed to state farm. This does not infringe on any trade mark rights of state farm. There is no confusion that exists and such an argument of Complainant is premature as the domain name is not currently in use.
The purchase of the domain name has been for a legitimate business purposes, has not been used in bad faith, and its use has not been started recently.
With reference to domain name – <statefarmclaimsassistance.com>, the respondent stated that -
Purchase of this domain was done in good faith and contrary to the statements made by state farm such has not been used in bad faith. Such is not even accessible and is still under development. In other words there is no consumer confusion or trade mark infringement as such is not in use in trade and commerce.
State Farms statement that owner has acted in bad faith is without merit.
The domain was purchased on behalf of Harris Insurance Services and to date such has not been used generally on the internet to advertise its services.
Harris Insurance Services is a public adjusting firm which provides insurance claimants with assistance in filing their claims. In other words Harris Insurance Services provides claims assistance to property owners who are insured with State Farm Insurance Company or any insurance company. Their website <harrrisinsuranceservices.com> describes in detail the services provided.
This domain name is descriptive of the services which are offered by Harris Insurance Services. It does not infringe on any trade mark rights of state farm. No confusion exists and such an argument is clearly premature as the domain name is not currently in use.
The purchase of the domain name was done for a legitimate business purposes, not in bad faith, and its use has not started as of today’s date.
C. Additional Submissions
No additional submissions made either by the complainant or the
respondent.
FINDINGS
The Panel finds that the <statefarmboardup.com>
and <statefarmclaimsassistance.com> domain names registered by Respondent in bad
faith, is confusingly similar to the STATE FARM marks; Respondent has no rights
or legitimate interests in relation to the domain name; and the domain name is
being used in bad faith.
The Panel also finds that the <statefarmboardup.com> and <statefarmclaimsassistance.com> domain names deserve to be transferred to the Complainant and the
Respondent is not entitled to use this domain name. The Complaint deserves to
be allowed forthwith and the Panel decides accordingly. However, in terms of
the ICANN Policy and the requirements thereunder, the formal observations /
findings of the Panel are as under.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complainant 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 observes that because of State Farm’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 names at issue are confusingly similar to State Farm’s service mark that it has been using since 1930 and to State Farm’s other registered marks. Moreover, the domain names are confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites. Consumers who discover these domain names are likely to be confused as to Respondent's affiliation with, sponsorship by or connection to State Farm.
The Panel observes that Complainant has sufficiently
established rights in the STATE FARM mark under Policy ¶ 4(a)(i) through its
several registrations of the STATE FARM mark with the United States Patent and
Trademark Office (“USPTO”) (i.e., Reg. No. 1,979,585 issued June 11,
1996). NAF in its decision in the case
of Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) has
held that - “As the [complainant’s] mark is registered with the USPTO, the
complainant has met the requirements of Policy 4(a)(i).”); WIPO also through
its decision in - Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) has held that - "Panel
decisions have held that registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive."
Both of the <statefarmboardup.com>
and <statefarmclaimsassistance.com>
domain names contain Complainant’s entire STATE FARM mark and add the generic
top-level domain (“gTLD”) “.com.” In
addition, the <statefarmboardup.com>
domain name adds the generic term “board up” with the deleted space. The <statefarmclaimsassistance.com>
domain name adds the descriptive terms “claim” and “assistance,” which describe
Complainant’s insurance business. Complainant contends
that both of the <statefarmboardup.com>
and <statefarmclaimsassistance.com>
domain names are confusingly similar to its STATE FARM mark. The Panel agrees with contention of the Complainant
that both the domain names - <statefarmboardup.com>
and
<statefarmclaimsassistance.com> - are confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
The Panel considers the following decisions relevant
to the dispute involved in the present Complaint –
(1)
Oki Data
Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) – holding that “The
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”;
(2)
Arthur
Guinness Son & Co. (
(3)
Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum
Mar. 5, 2007) - holding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”;
(4)
Jerry Damson, Inc. v.
The Panel is conscious of the fact that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent 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 asserts that both of the <statefarmboardup.com> and <statefarmclaimsassistance.com> domain names resolve to identical websites that are parked and contain advertisements for the Registrar’s services. The Panel agrees, that Respondent’s use of the disputed domain names to host parked websites is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy 4(c)(i) or 4(c)(iii)); see also Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest).
Respondent is listed in the WHOIS
information as “
Complainant argues that Respondent is not making any demonstrable preparations to use the disputed domain names in connection with any “legitimate content.” the Panel agrees with Complainant’s argument that Respondent’s failure to make an active use of the disputed domain names is evidence that Respondent’s lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Complainant asserts that Respondent’s use of the <statefarmboardup.com>
and <statefarmclaimsassistance.com> domain names for parked
websites creates a likelihood of confusion as to Complainant’s affiliation with
the disputed domain names. The Panel
finds that a likelihood of confusion exists and that Respondent’s conduct
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank
of Am. Corp. v.
Complainant argues that Respondent has not made any demonstrable preparations to use either one of the disputed domain names. The Panel agrees that such lack of use of the <statefarmboardup.com> and <statefarmclaimsassistance.com> domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Having regard to above, Respondent has no legitimate claim in the domain names at issue. In addition, the facts in evidence, inter-alia, enumerated here under, demonstrate that Respondent has registered and is using the names in bad faith;-
a) Respondent has never been known by the name “State Farm.” The Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain names in question. Moreover, Respondent has not registered the names in question with the Secretary of State in the state in which it does business or filed incorporation papers with respect to the same. This obvious lack of right to use the names in question shows bad faith registration and use.
b) Despite having registered the <statefarmboardup.com> and <statefarmclaimsassistance.com> domain names, Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm. Registering domain names 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 <statefarmboardup.com> and <statefarmclaimsassistance.com> domain names, giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to web pages which are parked free courtesy of Omnis Network and which contains advertisements for Omnis Network, LLC products and services. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
d)
The Respondent is not using, nor are
there any demonstrable preparations to use the domain names in connection with
a bona fide offering of goods or
services. As of the date of this Complaint,
there was no legitimate content associated with the names and no demonstrable
indication that legitimate content would be forthcoming. Even if Respondent did put State Farm or
professional designation information on its web sites, their content along with
their proposed domain names, would be in direct conflict with
f) Respondent has been sent Complainant’s cease and desist
letters for notification of Respondent’s unauthorized use of the names in
question. Failure to respond with
legitimate information for use or intention to use the names and then failure
to comply with Complainant’s cease and desist requests demonstrates it has
registered and is using the names in bad faith.
g) Respondent’s multiple registrations of Complainant’s mark without permission demonstrates bad faith intent to use the marks for commercial gain or to inappropriately use the goodwill associated with the registered mark. This is bad faith registration and use of Internet domain names.
h)
The Respondent registered its <statefarmboardup.com>
and <statefarmclaimsassistance.com> domain names on
September 21, 2008. State Farm registered its domain name <statefarm.com>
on May 24, 1995. The Respondent knew or
should have known of Complainant’s long-term use of the trademark “State Farm,”
and the long-term use of the domain name “statefarm.com.” The registration of
these domain names by the Respondent was intended to be in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED in favour of the Complainant.
Accordingly, it is Ordered that domain names
: <statefarmboardup.com>
and <statefarmclaimsassistance.com> be TRANSFERRED
to Complainant.
Maninder Singh, Panelist
Dated: 22.07.2009
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