State Farm Mutual Automobile Insurance Company v. Masami Takahashi
Claim Number: FA1012001365284
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 Masami Takahashi (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmclaim.info>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2010; the National Arbitration Forum received payment on December 29, 2010.
On December 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmclaim.info> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 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@statefarmclaim.info. Also on January 5, 2011, 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 on January 26, 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).
An Additional Submission from Complainant was received and determined to be complete on January 31, 2011.
On February 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it is a nationally known company that has been doing business since 1930. It engages in business in both the insurance and the financial services industry. It also has established a nationally recognized presence on televised and other media. It owns numerous registered trademarks that include the term STATE FARM. It operates a website at the domain name <statefarm.com>.
According to the Complainant, the disputed domain name is confusingly similar to its mark and Internet users who discover this domain name are likely to be confused as to Respondent's affiliation with, sponsorship by, or connection to the Complainant.
Further, says the Complainant, the Respondent has no right or legitimate interest in the disputed domain name. The Complainant did not authorize the Respondent to register the domain name or to use its trademark for the Respondent’s business purposes. 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. The Complainant does not have a contractual arrangement with the Respondent that would allow him to offer services under the Complainant’s name.
The Complainant alleges that the Respondent registered the disputed domain name to create the impression of association with the Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the Complainant’s name; and/or to create initial interest confusion for individuals looking for information about the Complainant. This constitutes bad faith registration and use under the Policy.
B. Respondent
The Respondent states that the disputed domain name was originally obtained to serve as an educational blog website geared to informing policyholders on what to expect during the claim process. As insurance claims, specifically homeowner claims, represent one of the largest and most devastating types of peril faced by American home owners, with monetary losses ranging from a couple thousand to multi-millions of dollars, there is typically much concern on behalf of the policyholder on the commencement of a “claim”. The purchase of the disputed domain name was in good faith.
The Respondent alleges that the disputed domain name is not accessible and it is still under development. There is no consumer confusion or trademark infringement as it is not in use in trade and commerce.
According to the Respondent, the disputed domain name was purchased on behalf of the Respondent’s employer, an American corporation which provides “personal property” claim services for both policy holders and insurers. Thus, he does indeed have an interest in the domain name.
Further, says the Respondent, the disputed domain name is descriptive of the services which are offered by his employer, a company that has provided services for the Complainant currently and in the past. It is of course logical that given the fact of the Complainant’s dominance in the American insurance industry, a company which is contracted to service policyholders of all the major insurance carriers would have a legitimate interest in claims made by policyholders of the Complainant, that is, “State Farm claims”.
The Respondent denies that he registered and is using the disputed domain name in bad faith. He states that the Complainant has not provided any evidence and that its mere assertions do not supply a sufficient basis upon which the Panel may conclude that the Respondent acted in bad faith.
The Respondent requests that the Panel find that the Complainant has attempted to engage in reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission, the Complainant states that, despite the Respondent’s claims that this domain name was registered to serve as an “educational blog,” the fact of the matter is that the Respondent’s employer is a company that “provides inventory services for Public Adjuster” and who offers “unique insurance claim processing.” By his own admission in the Response, the disputed domain name was registered for the Respondent’s own business purposes. As stated previously, the Respondent does not possess independent intellectual property rights in the name and the Complainant does not have a contractual arrangement with the Respondent that would allow him to offer services under the Complainant’s name.
Further, says the Complainant, the Respondent reiterates, multiple times, that because of his employer’s line of business in the insurance field it somehow gives him the right to infringe the Complainant’s trademark since the Complainant is the largest insurer. The logic of such an argument is nonsensical. The Respondent’s focus on having the Complainant’s mark in his domain registration, to the exclusion of all other insurance companies, shows that he acted in bad faith. Why did the Respondent not register <insuranceclaims.info>, <insuranceclaimsservices.info>, <allstateclaims.info>, <geicoclaims.info>, <progressiveclaims.info>, <americanfamilyclaims.info>, <nationwideclaims.info>, <travelersclaims.info>, <prudentialclaims.info>, <farmersclaims.info>, etc? The simple truth is that he registered the disputed domain name to create the impression of association with the Complainant, its agents, products, sponsorships, and services and to trade off the good will associated with the Complainant’s name; and/or to create initial interest confusion for individuals looking for information about the Complainant.
The Complainant owns numerous registered trademarks containing the term STATE FARM.
The Complainant’s mark, and its products and services, are very well known in the United States.
The Respondent is well aware of the Complainant’s business activities.
The Complainant has not authorized the Respondent to use its marks.
The Respondent is using the disputed domain name to point to a website which states “This web site is coming soon” and contains some advertising links to domain name services.
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.
Before dealing with the substantive issues, the Panel will deal with the procedural issue raised by the fact that the Response was received one date after the deadline. In accordance with 10 (c) of the Rules, the Panel may extend, in exceptional cases, a period of time fixed by the Rules. According to 10 (b) of the Rules, in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Accordingly, the Panel decides to accept the tardy Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).
The Complainant claims rights in the STATE FARM mark through its numerous registrations of the mark with the United States Patent and Trademark Office. These trademark registrations sufficiently prove Complainant’s rights in the STATE FARM mark under Policy ¶ 4(a)(i). 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).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
It is obvious that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s mark, because it consists of the mark followed by the common word “claim”. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
The Respondent’s only argument regarding this element of the Policy is that he works for a company that is active in the insurance claims business, so he has an interest in the disputed domain name. The Panel does not accept that argument. Firstly, there is no evidence to show that the employer, an American company, would have rights or legitimate interests in the disputed domain name, in particular because of its confusing similarity to the Complainant’s well-known mark. Further, there is no evidence to show that the Respondent has any rights to the disputed domain name. Finally, the Panel holds, for the reasons set forth below, that the Respondent registered and is using the disputed domain name in bad faith, and thus he cannot have rights or legitimate interests in the disputed domain name.
The Respondent admits that he is very familiar with the Complainant’s business activities. Indeed, he says that he works for a company active in the insurance business. Thus, he should have known that the disputed domain name would be considered to be confusingly similar to the Complainant’s well-known mark.
The Respondent alleges that he registered the disputed domain name to serve as an educational blog website geared to informing policy holders on what to expect during the insurance claim process. The Panel cannot accept this assertion, because there was no reason to incorporate the Complainant’s registered trademark into a domain name used for such purposes. Indeed, generic names such as <insurance-claims.info> or <insurance-claims-process.info> would have been more appropriate. For sure, the Respondent states that he used the Complainant’s mark because it is a very large and well-known insurer. But incorporation of the mark is likely to confuse Internet users into thinking that the web site refers specifically to the Complainant’s claim process. As the Complainant rightly says, this will likely create confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.
The Panel finds that the Respondent has not provided a credible explanation of how he intended to provide legitimate services under the disputed domain name. But surely he should have done so, if indeed he had legitimate services in mind, given his knowledge of the business and of the Complainant’s mark.
The disputed domain name resolves to a web site which states, “This web site is coming soon” and contains some advertising links to domain name services. Consumers finding that website might be mislead into thinking that the Complainant is not providing up-to-date information on its claims processing process. This could tarnish the Complainant’s mark and disrupt the Complainant’s business, a part of which may compete with the business of the Respondent’s employer.
Having considered all the facts in this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Reverse domain name hijacking
The Respondent alleges that the Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Since the Panel finds in favor of the Complainant, it dismisses the request for a finding of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. The request for a finding of reverse domain name hijacking is dismissed.
Accordingly, it is Ordered that the <statefarmclaim.info> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 7, 2011
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