State Farm Mutual Automobile Insurance Company v. Stroia Financial
Claim Number: FA1012001364522
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Smith of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Stroia Financial (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmfinancialplanning.com>, registered with GoDaddy, 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.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2010; the National Arbitration Forum received payment on December 21, 2010.
On December 21, 2010, GoDaddy, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmfinancialplanning.com> domain name is registered with GoDaddy, Inc. and that Respondent is the current registrant of the name. GoDaddy, Inc. has verified that Respondent is bound by the GoDaddy, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 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@statefarmfinancialplanning.com. Also on December 27, 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 Response was received and determined to be complete on January 20, 2011. However, the Response was received after the deadline to file a response and therefore the Forum does not consider this Response to be in compliance with ICANN Rule 5(a) and/or the Annex to the Supplemental Rules.
On January 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C., as Panelist.
PRELIMINARY MATTER
While the Response was not in compliance with ICANN Rule 5(a), the Panel has decided to exercise its discretion to consider the Response so that the merits of the case might be addressed. While the Panel may decide differently under different circumstances, it is the Panel’s view that wherever possible and practicable, as long as there is no prejudice to any party to the proceedings, all substantive arguments should be considered.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts:
· 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. 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. State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:
o The State Farm Insurance 3 oval logo; State Farm Bank; State Farm 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; State Farm Dollars; State Farm Green Space; State Farm Red Magazine; and statefarm.com.
· State Farm also has many trademark registrations in Canada.
· 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 domain name <statefarm.com>. At its website, State Farm offers 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. State Farm has expended substantial time, effort and funds to develop its website as a primary source of Internet information for the products, services and information provided by State Farm.
· In December of 2010, it was brought to State Farm's attention that Respondent had registered Complainant’s trademark "State Farm" as part of the disputed domain name, <statefarmfinancialplanning.com>. The disputed domain name sends a person to a web page which states it is provided by GoDaddy.com and which contains numerous links for various products and companies, including insurance companies who are in direct competition with State Farm Insurance.
· On December 20, 2010, Complainant sent a cease and desist letter via email to Respondent at mattstroia@yahoo.com. On December 20, 2010, the Respondent replied, via email, accusing Complainant of being a scam and trying to steal his property.
· Because of State Farm’s substantial efforts, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning. The domain name at issue is confusingly similar to State Farm’s servicemark that it has been using since 1930 and to State Farm’s other registered marks. Moreover, the domain name is confusingly similar to products, services or information that State Farm offers generally to the public as well as on its websites. 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, <statefarmfinancialplanning.com>. Complainant believes 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 it to offer services under the State Farm name.
· Complainant 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.
· It is clear that the name registered by Respondent is confusingly similar to State Farm’s trademarks. Indeed, 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.
· State Farm has filed numerous complaints relating to its domain names under the ICANN Uniform Dispute Resolution Process. The arbitrators 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. See State Farm Mut. Auto. Ins. Co. v. Advisory Servs., Inc., FA 94662 (Nat. Arb. Forum June 8, 2000); see also State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA 94427 (Nat. Arb. Forum May 27, 2000); see also State Farm Mut. Auto. Ins. Co. v. I & B, FA 94719 (Nat. Arb. Forum June 8, 2000); see also State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA 94335 (Nat. Arb. Forum Apr. 24, 2000); see also State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA 94663 (Nat. Arb. Forum June 1, 2000); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000); see also State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA 94802 (Nat. Arb. Forum June 13, 2000); see also State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA 94808 (Nat. Arb. Forum June 6, 2000); see also State Farm Mut. Auto. Ins. Co. v. HPR, FA 94829 (Nat. Arb. Forum June 22, 2000); see also State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA 1087389 (Nat. Arb. Forum Nov. 16, 2007); see also State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FA 1087458 (Nat. Arb. Forum Nov. 20, 2007); see also State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FA 1092410 (Nat. Arb. Forum Nov.20, 2007).
· 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.” 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 <statefarmfinancialplanning.com>, 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 <statefarmfinancialplanning.com>, giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a web page which states it is provided by GoDaddy.com and which contains numerous links for various products and companies, including insurance companies who are in direct competition with State Farm Insurance. 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 website, its content along with its proposed domain name, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers. Failure to resolve the domain name to legitimate website content indicates that the Respondent has no legitimate reason for having registered the name and demonstrates that it has registered and is using the name in bad faith.
e) The Respondent registered its domain name, <statefarmfinancialplanning.com> on December 17, 2010. 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 the domain name by the Respondent was intended to be in bad faith.
B. Respondent
Respondent asserts:
· Respondent has no intention of using the disputed domain name in bad faith. Respondent did not receive any income from the domain name.
· Complainant filed the Complaint on the evening of December 21, 2010, less than 100 hours after Respondent purchased the name via GoDaddy.com. When Complainant filed the Complaint, Respondent had yet to set up (or do anything) with the disputed domain name. GoDaddy.com has a default setting on which advertisements appear on newly purchased parked domain names (Complainant and its associates have taken advantage of this sort of advertising, as they are listed 3 times as advertisers). It was not Respondent’s intention for ads to be placed on the page.
· Complainant has no idea what use Respondent intended for the disputed domain name. Complainant has no reason to believe Respondent is using it or acting in bad faith. Complainant has no registered trademarks involving “state farm” and “financial planning.” The words “financial planning” are not anywhere to be found in the scope of Complainant’s copyright, nor is it inferred in any way.
· Complainant made an extremely unprofessional and weak attempt at contacting Respondent to resolve this potential conflict before filing a complaint. Later, in an email, Complainant commented that they assumed Respondent would not respond to them or work with them. They assumed incorrectly as Respondent offered to work with them. The only communication prior to filing arbitration was via this highly suspicious email, home.internetcd.681e00@statefarm.com, sent on the morning of December 20, 2010. This email looked like a phishing scam and was also flagged as spam by Yahoo mail. Respondent thought most professional companies like State Farm would use a much more professional email address (and better grammar), so it looked like a scam to Respondent. Respondent received no phone call prior to the arbitration. Again, a phone call would seem to be a more professional, legitimate approach for communication. Good faith, common sense effort for communication is clearly lacking in their approach. According to a GoDaddy representative, Complainant even contacted GoDaddy to complain and asked them to drop the registration before trying to email Respondent. GoDaddy refused their request.
· Complainant simply and incorrectly assumed that Respondent would not respond and that Respondent would not cooperate. One day later, when Respondent offered to cooperate, Complainant said it was too late because it had already paid for arbitration. Now that Respondent has had a Complaint filed against him (and has been treated unprofessionally), and has met with domain name and intellectual property attorneys, Respondent no longer wishes to cooperate with State Farm and now retracts his offer to transfer the domain name. Respondent has now spent a lot of unnecessary time and money on the matter and believes Complainant’s request to transfer the name is illegal.
· Complainant is taking advantage of people by using the arbitration system improperly and not making a good faith effort to communicate with people first, especially in this case.
· Respondent asks that this Complaint be dropped immediately or that the arbitration panel rule in his favor. Respondent owned this domain less than 100 hours before it was frozen by GoDaddy, and Complainant incorrectly assumed Respondent’s acts to be in bad faith without making a good faith, professional effort to contact him. Also, Respondent believes State Farm does not own the rights to the domain name as seen in the scope of its own copyright information.
The Panel finds:
1. Respondent’s <statefarmfinancialplanning.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain name.
3. Respondent registered and is using the disputed domain name in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Respondent did not address this element. The material before the Panel established that Complainant owns a trademark registration for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996). Complainant produced evidence of several STATE FARM trademark registrations in both the United States and Canada. Other panels have held and this Panel agrees that a USPTO trademark registration is conclusive evidence of Complainant’s rights in a mark (in this case the STATE FARM mark) according to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’).”).
Respondent’s <statefarmfinancialplanning.com> domain name is confusingly similar to Complainant’s STATE FARM mark because the disputed domain name incorporates Complainant’s mark with only the following minor changes: the deletion of the space between terms, the addition of the descriptive terms “financial” and “planning,” and the affixation of the generic top-level domain (“gTLD”) “.com.” Adding terms that describe a business does not remove the disputed domain name from the realm of confusing similarity. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”).
The Panel also finds that neither the removal of the space between terms nor the addition of the gTLD prevents the disputed domain name from being deemed confusingly similar to Complainant’s mark as spaces are not permitted and gTLDs are required in domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Therefore, the Panel finds that Respondent’s <statefarmfinancialplanning.com> domain name is confusingly similar to Complainant’s STATE FARM mark for the purposes of Policy ¶ 4(a)(i).
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 did not authorize Respondent to use its STATE FARM mark in the disputed domain name, nor did Complainant authorize Respondent to sell products or services on Complainant’s behalf. The WHOIS information for the disputed domain name lists the registrant as “Stroia Financial.” There is nothing before the Panel to show there is any connection between this name and the disputed domain name. Respondent is not commonly known by the disputed domain name. Prima facie, Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant alleges the disputed domain name resolves to a generic directory page filled with pay-per-click links to Complainant’s website, the websites of competing financial services providers, and the websites of unrelated third parties. Maintaining a pay-per-click website that resolves from a disputed domain name appropriating Complainant’s mark does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name).
Complainant has met the burden of establishing a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. The burden now shifts to Respondent to show he has rights or legitimate interests. Respondent put forward no information or arguments on this element of the case. Therefore, Complainant having met its burden, and Respondent having failed to meet his burden, the Panel finds the Respondent lacks rights or legitimate interest in the disputed domain name.
Policy ¶ 4(b) sets out four particular circumstances which, if found, shall be evidence of bad faith registration and use. The circumstances of this case do not readily fall within any of the four enumerated circumstances.
Policy ¶ 4(b) does not, however, limit the circumstances in which a Panel may find bad faith to those specifically listed. The Policy leaves it open “without limitation” for a Panel to find bad faith in appropriate circumstances. In this case, the Panel considers the following circumstances:
· Respondent registered a domain name containing Complainant’s well-known STATE FARM mark. Respondent has not asserted that he did not know about Complainant’s mark. He has provided no explanation as to why he chose Complainant’s mark. His failure to address this point leads the Panel to the inference that Respondent was aware of Complainant’s mark and services when he registered the disputed domain name.
· There is no evidence Respondent was ever known as STATE FARM or that Respondent has ever traded as STATE FARM. Respondent did not establish any trademark or other intellectual property rights in the disputed domain name. Respondent is not authorized to sell products or engage in sponsorships or services for or on behalf of Complainant. Respondent has registered a domain name for products and services Respondent has no authority to offer.
· The disputed domain name gives the impression interested individuals will receive information regarding State Farm, individuals are sent to a web page stating it is provided by GoDaddy.com and which contains numerous links for products and companies, including insurance companies who are in direct competition with Complainant. Even if this use of the disputed domain name was instigated by GoDaddy.com, once the disputed domain name was registered, Respondent became responsible for its content. In this case, he permitted GoDaddy.com to permit the disputed domain name to be parked on a site containing links to competitors of Complainant.
· Respondent has provided no evidence that he is using or making demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Respondent gave no explanation whatsoever as to why he chose Complainant’s mark. He gave no explanation as to his intended use for the dispute domain name. He says Complainant has no idea what use he intended for the disputed domain name. He fails to disclose, however, what use he may have intended. It is difficult to conceive of any use of the STATE FARM mark that would not conflict with Complainant’s mark and cause confusion to consumers.
The Panel has decided that in these circumstances, in the absence of any reasonable explanation from the Respondent on these points, the circumstances demonstrate bad faith registration and use of the disputed domain name 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 <statefarmfinancialplanning.com> domain name BE TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: February 7, 2011
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