State Farm Mutual Automobile Insurance Company v. Eli Shoval
Claim Number: FA0910001291281
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 <statefar.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2009.
On October 26, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <statefar.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 October 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 16, 2009.
On November 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank. State Farm engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
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. State Farm has also registered numerous additional names in the State Farm family of marks in a number of countries. 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. State Farm developed its Internet web presence in 1995 using the <statefarm.com> domain name.
In May of 2009 it was brought to State Farm’s attention that Respondent had registered Complainant’s trademark “State Farm” as part of the <statefar.com> domain name. The domain name re-directs users to <perfectinsurance.com>, which contains links to various insurance products and companies, including those in direct competition with State Farm Insurance. Several cease and desist letters were sent by State Farm to Respondent prior to the filing of this Complaint.
Respondent has no right or legitimate interest in the disputed domain name. Respondent is not associated with, affiliated with or sponsored by State Farm. State Farm did not authorize the Respondent to register the domain name or use the State Farm trademark for the Respondent’s business purposes. State Farm believes that the Respondent registered the name to create the impression of association with State Farm, to trade off the good will associated with the State Farm name and to create customer confusion as to the source or sponsorship of the site.
Respondent never registered the disputed domain name. According to public records, it was registered in 2002 by a previous owner. Respondent purchased it in 2008. Respondent did not therefore act in bad faith as alleged in the complaint. Respondent never had an intention to knowingly infringe on any of complainant’s trademarks, and thus were bona fide utilizing incidental visitors to this web address to find whatever services they were looking for. Efforts were made to make clear to visitors that they had not arrived at the statefarm.com website. Headers of web pages never included complainant’s trademark, and thus visitors had no reason to assume they were actually visiting any of complainant’s websites.
For most of the time during the years 2002-2009, during the time “State Far” had been used on the internet, its web page portal contained multiple categories and links to help browsers find information regarding Statefair as well as about travel, gardening, flowers, finance, health and other categories. For a short time in 2009, the <statefar.com> domain name was redirected to <perfectinsurance.com>. Visitors were well aware that they did not arrive at the statefarm.com website. However, the use of the redirection has been discontinued, and is no more in use. Respondent never received any cease and desist neither letters nor e-mails in June 2009. Respondent purchased this domain name for a large amount of money from the original owner and transfer with no compensation would cause unreasonable financial harm.
1. Complainant is a nationally known company that does business in the insurance and financial services industry.
2. Complainant’s trademark STATE FARM permits Complainant to bring this action against the disputed <statefar.com> domain name.
3. The disputed domain name is confusingly similar to Complainant’s trademark.
4. Respondent purchased the disputed domain name in 2008 from the original registrant who registered the domain name in 2002.
5. The disputed domain name had various subject matters on the website from time to time during the years 2002 through 2008, some of which had nothing to do with insurance or financial services.
6. After Respondent purchased the disputed domain name Respondent admits to using the website to redirect users to <perfectinsurance.com> which website contained links which sent users to sites that directly competed with Complainant’s insurance business.
7. Respondent has no rights to or legitimate interests in the disputed domain name.
8. Respondent registered and used the disputed domain name 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.
Complainant has established rights in the STATE FARM mark under Policy ¶ 4(a)(i) through its registration of the mark with the United States Patent and Trademark Office issued June 11, 1996. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) finding that “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.” See also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, and that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of the Policy…”
Complainant contends that the <statefar.com> domain name is
confusingly similar to Complainant’s STATE FARM mark. Respondent does not contest this contention
in the Response. The disputed domain
name contains a substantial portion of the mark. It deleted the letter “m” and the space
within the mark. In addition, the
disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The disputed domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try
Complainant prevails under Policy ¶ 4(a)(i).
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 the burden shifts to Respondent to show he 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 before the burden shifts to respondent. See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant contends that Respondent is not commonly known by the <statefar.com> domain name. The WHOIS information for the disputed domain name lists ”Eli Shoval” as the registrant. The Complaint further alleges that it has not licensed or authorized Respondent to use the STATE FARM mark. Complainant’s contention is correct. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc.v. Lee Yi, FA139720 (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).
The pleadings show that the <statefar.com> domain name resolves to a website that contains hyperlinks to various third-party websites, some of which directly compete with Complainant. Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) rejecting the respondent’s contention of rights and legitimate interests because respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to the Policy. See also Skyhawke Techns., LLC v. Tidewinds Group Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) which stated “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Respondent fails to present any adequate reason why he has rights to or legitimate interests in the disputed domain other than his belief that he does.
Complainant prevails under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and used the disputed domain name in bad faith. Respondent states that the disputed domain name was registered by a previous owner of the domain name in the year 2002 and that he purchased the domain name from that owner in the year 2008. Respondent contends that there is no evidence of bad faith registration presented by Complainant. Respondent indeed shows, by exhibit, that between the years 2002 and 2008, the <statefar.com> domain name was used for various purposes, some purposes having nothing to do with insurance or financial services at all.
That state of facts, Respondent contends, shows a failure of Complainant’s case because there is no evidence presented by Complainant to show bad faith registration as required under the Policy.
Previous panels have found that the relevant
registration date of a domain name under the Policy is the date that a
respondent acquires the disputed domain name, not the date that the domain name
was originally registered by a third-party. See
Gewista-Werbegesellshaft mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005) which stated: “[H]aving reviewed
earlier decisions of panels, the Panel believes, that the fact, that the
Respondent did not register the disputed domain name itself but acquired it
from the previous owner, does not mean that the Respondent has not ‘registered’
the Domain Name within the meaning of the Policy since there is no reason to
differentiate between a direct registration and registration after
transfer. The domain name at issue was
in fact ‘registered’ within the meaning of the Policy when it had been acquired
by the Respondent [from a prior registrant].”
See also BWR Resources Ltd. v.
Waitomo Assoc, Ltd., D2000-0861
(WIPO Oct. 4, 2000) finding that registration refers to the date when the
respondent acquired the name from the person who first registered it. See
also Ass’n of Junior Leagues Int’l Inc. v. This Domain My Be For
The disputed domain name resolved to a website
that featured hyperlinks to third-party websites, some of which directly
competed with Complainant’s insurance business.
Respondent’s use of the disputed domain name is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) concluding
that the use of a confusingly similar domain name to attract Internet users to
a directory website containing commercial links to websites of a complainant’s
competitors represents bad faith registration and use under the Policy. See also David Hall Rare Coins v.
Complainant argues that Respondent’s use of the disputed domain name to display hyperlinks to competing websites creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name in violation of Policy ¶ 4(b)(iv). This contention is correct. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See also Luck’s Music Library v. Stellar Artist Mgmt., FA 956509 (Nat. Arb. Forum Oct. 30, 2000).
Complainant prevails under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefar.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 1, 2009
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