State Farm Mutual Automobile Insurance Company v. Agency Experts Inc. c/o Charles Spencer
Claim Number: FA1003001312378
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 <statefarmcumming.com> (the “Domain Name”), 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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum on March 9, 2010.
On March 10, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmcumming.com> domain name is 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 March 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 12, 2010.
On March 25, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In February of 2010 it was brought to Complainant’s attention that Respondent had registered Complainant’s trademark STATE FARM as part of the Domain Name <statefarmcumming.com>. The Domain Name resolves to a webpage parked by GoDaddy.com, which advertises GoDaddy’s various products. On February 24, 2010, a cease and desist letter was sent by Complainant via email to Respondent. On February 24, 2010, Respondent advised he would be keeping the Domain Name.
Respondent is not commonly known by the Domain Name. It is believed that the Respondent has never been known by or performed business under the Domain Name. The Respondent does not possess independent intellectual property rights in the name. In addition, State Farm does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name. State Farm believes that the Respondent registered the Domain Name 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.
Respondent has acted in bad faith: The Domain Name is clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the site. The facts in evidence demonstrate that Respondent has registered and is using the Domain Name in bad faith.
Complainant has filed numerous complaints relating to its domain names under the UDRP. The panelists have consistently found 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 have been done in bad faith.
Respondent’s registration of the Domain Name was in bad faith in that:
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 trademark or other intellectual property rights in the Domain Name. This obvious lack of right to use the name in question shows bad faith registration and use.
b) Despite having registered the Domain Name, 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 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 giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a webpage parked by GoDaddy.com, which advertises GoDaddy’s various products. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
d) Respondent was sent Complainant’s cease and desist letter for notification of Respondent’s unauthorized use of the Domain Name. Failure to comply with Complainant’s letter demonstrates it has registered and is using the Domain Name in bad faith.
e) Respondent registered the Domain Name on February 19, 2010, while Complainant 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 the Domain Name by the Respondent was intended to be in bad faith.
Respondent confirms that it registered the Domain Name from GoDaddy.com
on February 19, 2010. Respondent, Agency
Experts, states that it is a consulting firm directing efforts towards
insurance agencies. According to
Respondent, in an attempt to be creative, it was thought that it would be a
good strategy to contact State Farm Agents in
Respondent states it was unaware that GoDaddy.com set up a web page for the Domain Name, much less that GoDaddy.com was directing traffic to other goods and services. There has been no financial gain by the Respondent or attempt at gain.
Respondent acknowledges that while the registered Domain Name was created in fact to "promote" State Farm agents, products, sponsorships, and services through creative web based advertising for an existing State Farm Agent in the Cumming, GA area, it was not created to mislead or confuse individuals looking for information about State Farm.
Respondent admits “[i]t is clear that the name registered by Respondent is confusingly similar to State Farm’s trademarks because it was the intent to attract individuals seeking information on State Farm and it's fine products and direct them to an authorized agent. However, Respondent does not believe it acted in bad faith. The Respondent's business mission is to come up with creative marketing ideas to offer insurance agencies.
Respondent Un-Locked the Domain and reported to the Complainant on March 9, 2010 that the Domain Name was available for transfer and the Authorization Codes were provided at that time.
The Respondent believes that Internet and Web Based marketing programs are evolving at such a dramatic pace that this attempt at generating consulting revenues was a suitable program, but has been terminated. Respondent confirms that no contact will be pursued with any State Farm Agent regarding this marketing program.
As to Complainant’s request that the Domain Name registration be transferred, Respondent states that it concurs and has complied with the Complainant's request. Respondent confirms that no contact will be pursued with any State Farm Agent regarding this marketing program.
Complainant 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.
Complainant operates in both the insurance and financial services
industries. Complainant first began
using the “State Farm” trademark in 1930 and registered it with the Patent and
Trademark Office (“USPTO”) on June 11, 1996 and registered “State Farm Insurance”
on September 11, 1979. State Farm has
registered its marks in the
State Farm developed its Internet web presence since 1995 using the domain name <statefarm.com>.
The Domain Name was registered on February 19, 2010.
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 Panelist observes, however, that in a circumstance such as this, where Respondent has not contested the transfer of the Domain Name but instead agrees to transfer it to Complainant, the Panel may forego the complete UDRP analysis and order an immediate transfer of the Domain Name. 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.”).
Accordingly, the Panelist will order transfer of the Domain Name from Respondent to Complainant.
The Panel concludes that relief requested by Complainant shall be GRANTED. Accordingly, it is Ordered that the <statefarmcumming.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: April 12, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum