State Farm Mutual Automobile
Insurance Company v. Karen Cappy
Claim Number: FA1004001317330
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 NAME
The domain name at issue is <statefarmagents.mobi>, 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.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 5, 2010.
On April 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <statefarmagents.mobi> 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 April 7, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of April 27, 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 postmaster@statefarmagents.mobi. Also on April
7, 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 April 27, 2010.
On or about April 28, 2010, Complainant filed an Additional Submission
pursuant to NAF Supplemental Rule 7(A). Likewise, on or about April 28, 2010
Respondent filed its additional submission pursuant to Supplemental Rule 7(A).
On May 6, 2010, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
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 with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:
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.
In January of 2010 it was brought to State Farm's attention that Respondent had registered Complainant’s trademark "State Farm" as part of the domain name, <statefarmagents.mobi>. The domain sends users to a web page parked free courtesy of GoDaddy.com which advertises the sale of domain names.
On January 25, 2010, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent. It was returned as undeliverable and indicating the email address was invalid. On January 26, 2010, another cease and desist letter was sent to the Respondent via certified mail. On February 19, 2010, another cease and desist letter was sent to the Respondent via certified mail; however it too was returned indicating the address was invalid.
The State Farm mark is distinctive and has acquired secondary meaning. The domain name at issue is confusingly similar to State Farm’s servicemark. The domain name is 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 this domain name are likely to be confused as to Respondent's affiliation with, sponsorship by or connection to State Farm.
Respondent has no right or legitimate interest in the disputed domain name. State Farm did not authorize the Respondent to register the domain name or to use the State Farm trademark for the Respondent’s business purposes. Respondent is not commonly known under the domain name, <statefarmagents.mobi>. It is believed that the Respondent has never been known by or performed business under the domain name at issue. 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 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.
The domain name was registered in bad faith. The name registered by Respondent is confusingly similar to State Farm’s trademarks. The name includes one of State Farm's registered marks "State Farm.” This domain is clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the site.
In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed 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 a trademark or other intellectual property rights in the domain name in question. Moreover, Respondent has not registered the name 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 name in question shows bad faith registration and use.
b) Despite having registered the name <statefarmagents.mobi>, 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 <statefarmagents.mobi> giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a webpage parked free courtesy of GoDaddy.com which advertises the sale of domain names. 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 name 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 name and no demonstrable indication that legitimate content
would be forthcoming. Even if Respondent
did put State Farm or professional designation information on its web site, its
content along with its proposed domain name, would be in direct conflict with
e) Respondent’s registration information is not accurate. Providing inaccurate information or failing to update information promptly as stated in the Registrar’s Registration Agreement reflects that the Respondent has acted in bad faith.
f) The Respondent registered its domain name, <statefarmagents.mobi> on January 22, 2010. 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.
B. Respondent
Respondent contends as follows:
Respondent invested $48,678.90 in software development for a site which
was to be launched April 1, 2010. The
site was a free open source site for State Farm Agents. The site was to operate
with an advertisement option for State Farm agents to broadcaster through
social media and essentially a clone of Twitter but also enabled broadcast on
mobile networks. The site also enables communication with customers and agent
after the sale of insurance was made. The site was purchased with the intent of
using it for State Farm agents only on mobile devices. Respondent never had any
bad intent with the site. There are no trademarks for STATE FARM AGENTS. There
was never any content on <www.statefarmagents.mobi>.
C. Additional Submissions
Complainant additionally contends as follows:
As a corporate policy, Complainant does not authorize any outside entities to use their name, their trademarks or other identification of their companies in domain name registrations or to advertise or endorse particular products or services. This policy is intended as a consistent means of protecting Complainant’s registered marks.
Despite the lack of a citation, the “news article” provided by the Respondent which asserts that Complainant took down the elaborate website described in the Response, the fact of the matter is that there was never any content on www.statefarmagents.mobi. Since its registration on January 22, 2010 the website has remained a web page parked free courtesy of GoDaddy.com which advertises the sale of domain names.
Complainant has no record of Respondent indicating he was working with Complainant’s purchasing department or its independent contractor agents on this unauthorized business venture.
Respondent additionally contends as follows:
There was never any content on www.statefarmagents.mobi. Since its registration on January 22, 2010
the website has remained a web page that is parked for free by Godaddy.com who
advertises the sale of domain names.
Although parked the site was operational and working in a test
environment. Respondent signed up several State Farm agents. Those agents
bought and paid for the service before State Farm took the domain name. At the
time, the agents were told by State Farm to not cooperate with Respondent or they
may lose their independent license to sell State Farm services.
State Farm does not own the copyright of <statefarmagents.mobi> art work. Notice was given that Respondent was not
affiliated with State Farm. <statefarmagents.mobi>
should have been bought by State Farm. The fact that it was not bought by State
Farm is proof that they did not see the URL a threat to their trademark and
thus abandon the right to own the name.
FINDINGS
Prior to the registration of the at-issue
domain name Complainant had rights in the mark STATE FARM by virtue of its
registration of such mark with the United States Patent and Trademark Office
and otherwise.
Respondent or an agent of Respondent
registered the at-issue domain name on or about January 22, 2010.
The domain name references a parking page
which was not created by Respondent.
Respondent intended to launch a website
referenced by the at-issue domain name targeted at State Farm agents.
DISCUSSION
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’s registration of the STATE FARM mark with the United States Patent and Trademark Office demonstrates its rights in such mark under Policy 4(a)(i). Complainant’s trademark rights pre‑date Respondent’s registration of the <statefarmagents.mobi> domain name. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The at-issue domain
name is confusingly similar to Complainant’s mark. It is universally held that
panels should not consider the top level domain name when comparing a disputed domain
name to a Complainant’s mark under Policy ¶4(a)(i).
The Panel thus disregards the at-issue domain name’s top level, .mobi, in comparing
the domain name with Complainant’s trademark. See Starkey v. Bradley, FA
874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi
should be treated the same way as .com and should be ignored when comparing the
mark and the disputed domain name.”). Similarly, numerous panels have
held that the addition of a generic
word or words, here “agents,” to a Complainant’s mark does not necessarily
distinguish a disputed domain name from such mark. See Arthur Guinness Son & Co. (
The application of
Policy 4(a)(ii) is a two‑tiered process.
Complainant must first make out a prima facie case showing that
Respondent lacks rights and legitimate interests in the disputed domain name.
The threshold for such showing is low. 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). Once Complainant establishes a prima facie
case the burden in effect shifts to Respondent who must demonstrate that it
nevertheless has rights and legitimate interests in the at-issue domain name.
Complainant asserts
that Respondent is not known by the disputed domain name and has not traded
under that name. In
addition, the WHOIS information lists “Karen Cappy” as the disputed
domain name’s registrant. Therefore the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006). Complainant has not
authorized Respondent to use its STATE FARM mark nor is the Respondent
affiliated with the Complainant in any capacity. Such findings and undisputed assertions are sufficient to carry
Complainant’s slight initial burden. Respondent must thus present contrary
evidence if there is to be a finding of rights and interest in her favor.
Respondent impliedly asserts that she demonstrates
rights and interest pursuant to Policy ¶4(c)(i) by
claiming that substantial steps were taken toward implementing a commercial
website designed to aid State Farm agents in communicating with State Farm customers/potential
customers and in advertising through social media. However, Respondent presents
no evidence corroborating its bald claims.
Although Respondent admits to having
contracted with State Farm agents regarding proposed <statefarmagents.com> website, there is no independent
evidence of any State Farm agent ever contacting Respondent nevertheless
purchasing any services from her. No State
Farm agent has come forward in support of Respondent’s contentions either via a
declaration or otherwise. No person or
entity is specifically named by Respondent as being a user of Respondent’s
services. Additionally, Respondent does
not contend that the proposed website will use the Complainant’s trademark in a
descriptive fashion or other benign manner.
Nor is there any claim that an agent of Complainant might have had
authority, actual or apparent, to authorize the use of the STATE FARM mark and
did so authorize Respondent’s use of the STATE FARM mark.
Although Respondent rattles on about a proposed web based endeavor, there are no written plans or pro-forma financials or other evidence within the record corroborating that a new endeavor or business was in the works. Respondent thus fails to show any material preparations to use the domain name “in connection with a bona fide offering of goods or services” and Policy ¶4(c)(i) is inapplicable. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim). Since paragraph 4(c)(i) is immaterial, there is no need for the panel to consider whether or not Respondent’s intended use might constitute a bona fide offering of goods or services.
Given the foregoing, the Panel finds that Respondent lacks rights and interests in respect of the domain name.
Complainant fails to conclusively show circumstances indicative of bad faith under Policy ¶4(b)i ,ii or iii. However, there is competent evidence indicating that Respondent intended to “intentionally [attempt] to attract, for commercial gain, Internet users to [Respondent’s] web site…, by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [that] web site...” See Policy ¶4(b)iv, see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (finding that “…Respondent’s disputed domain names must cause Internet users mistakenly to believe that the disputed domain names are affiliated with Complainant. The user confusion that the domain names must cause is evidence that Respondent registered and used the domain names in bad faith.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
While it is conceivable that the Respondent
registered the <statefarmagents.com>
domain name without any specific intent to trade on Complainant’s mark, such a
conclusion seems unreasonable given the strength of the Complainant’s mark and
the admission by Respondent that the domain name registration was made with the
intent to use <statefarmagents.com>
to reference a website that was going to cater to Complainant’s agents. Respondent admits contacting one or more
unnamed State Farm agents seeking their participation in Respondent’s scheme. Thus,
Respondent clearly had actual knowledge of Complainant’s rights in the STATE
FARM trademark since the reason for registering the particular domain name apparently
was precisely because of the STATE FARM mark. See Bluegreen Corp. v. eGo,
FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where
the method by which the respondent acquired the disputed domain names indicated
that the respondent was well aware that the domain names incorporated marks in
which the complainant had rights); see also Yahoo!
Inc. v.
Furthermore, Respondent
is unreasonable if she believes that registration of a domain name used as a
parking page in anticipation of her future business, a business admittedly
intending to offer services to Complainant’s customer’s and agents, would not
meet with objections from Complainant especially when the disputed <statefarmagents.com>
domain name in dominant part contains Complainant’s well know trademark. Respondent either was, or should have been,
well aware of Complainant’s mark prior to registering the disputed domain name.
See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.” The Policy’s enumerated list of bad faith
circumstances is “without limitation.” Under
the circumstances, not bothering to check
with Complainant before registering the disputed domain name, even if only to
reject Complainant’s likely admonition that Respondent’s intended use of the
domain name runs afoul of the UDRP or otherwise offends Complainant’s trademark
rights, shows a careless disregard for Complainant’s rights and indicates
Respondent’s bad faith registration and use of the disputed domain name.
Such behavior also denies Respondent’s duty
under Policy ¶2(d) which mandates that it is
Respondent’s “responsibility to determine whether [her] domain name
registration infringes or violates someone else’s rights.” This is
not to say that each and every domain name registrant has a duty to check with every
potential mark holder before registering a domain name or putting it to use,
but only that under the circumstances of the instant case failing to do so evidences
bad faith since any reasonable business person in a like situation would ask
permission rather than risk having to ask forgiveness and possible exposure to
litigation. Importantly, under the
domain name Registration Agreement, and pursuant to Policy ¶2(a)
Respondent promises (“represent[s] and
warrant[s]”) that she is not going to
use the registered domain name against the rights of any third party. But here
that is exactly what Respondent appears to do.
Finally, the fact that Respondent’s domain
name registration information was incorrect and/or that Respondent was evasive regarding
Complainant’s attempts to contact Respondent by mail and by email is further
evidence of Respondent’s bad faith. Respondent
fails to offer any credible explanation for not responding to Complainant’s
pre-UDRP communications. Providing false and misleading contact information to
the Registrar is a breach of the Registration Agreement and Policy ¶2(c). Similarly other indicia of evasive conduct, such as Respondent’s refusal to accept
registered mail or ignoring emails, likewise shows Respondent’s bad faith.
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 <statefarmagents.mobi> domain name be
TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 20, 2010
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