State Farm Mutual Automobile Insurance Company v. Wally Pike
Claim Number: FA1101001369238
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 Wally Pike (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm-car-insurance.com>, registered with Tucows 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.
Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 24, 2011.
On January 24, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarm-car-insurance.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@statefarm-car-insurance.com. Also on January 27, 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 timely Response was received and determined to be complete on January 28, 2011.
On February 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, State Farm Mutual Automobile Insurance Company, is the holder of a series of the STATE FARM registrations with the United States Patent and Trademark Office (“USPTO”). Further, the Complainant has registered the State Farm 3 oval logo; State Farm; State Farm Insurance Companies; State Farm Insurance and the State Farm Fire and Casualty Co. logo. In the European Community the State Farm 3 oval logo is registered. In Mexico the State Farm 3 oval logo, State Farm and State Farm Insurance are registered.
State Farm is a US 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.
Respondent’s disputed domain name, <statefarm-car-insurance.com>, is confusingly similar to Complainant’s registered and common law marks as it overlaps in the dominant part of the Complainant’s STATE FARM marks.
Complainant’s rights in the STATE FARM mark predate Respondent’s registration of the <statefarm-car-insurance.com> domain name.
Respondent has no rights and legitimate interest in the contested domain name neither through use, nor any registered rights, as he passively keeps domain. Instead of the actual use of the domain name, the domain redirects users to <homestead.com>, a page for the company Homestead, an Intuit Company, which advertises the sale of websites. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
B. Respondent
Based on the documents and information submitted in the case, the Respondent is an individual. The information provided is deficient of the date whether he is engaged in any type of business, including any business competitive with Complainant’s. Having searched for available domains, the Respondent has bought the contested domain through Homestead technologies and Tucows inc. since the domain was available for sale.
FINDINGS
1. Complainant is a well established and widely known US mutual insurance firm with 70 years presence in the market. Complainant is the holder of a series of the STATE FARM registrations with the United States Patent and Trademark Office (“USPTO”). Further, the Complainant has registered the State Farm 3 oval logo; State Farm; State Farm Insurance Companies; State Farm Insurance and the State Farm Fire and Casualty Co. logo. In the European Community the State Farm 3 oval logo is registered. In Mexico the State Farm 3 oval logo, State Farm and State Farm Insurance are registered.
2. The documents submitted by the parties contain no information about the type of business which Respondent is involved in.
3. The domain name <statefarm-car-insurance.com> was registered by Tucows, Inc. in the name of Contactprivacy.com on November 20, 2010 and further bought by Respondent.
4. The domain redirects users to <homestead.com>, a page for the company Homestead, an Intuit Company, which advertises the sale of websites.
5. The domain name at issue, <statefarm-car-insurance.com>, is confusingly similar to a series of Complainant’s registered marks in which the dominating element is STATE FARM.
6. Upon the receipt of the written notice on initiation of the proceedings, Respondent has stipulated that the domain name may be transferred to Complainant.
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.
The Panel finds necessary to take into account the following aspects in the decision making process.
Pursuant to Policy 4(a)(i), Complainant has provided evidence of rights in a series of the STATE FARM marks as registration of marks with appropriate governmental authorities confers rights in the marks to Complainant. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); 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’)”).
The Respondent did not rebut Complainant’s argumentation. Furthermore, the Respondent agreed to transfer the domain to Complainant. This might be regarded as the acknowledgement of the complaint by Respondent that makes the dispute to be moot.
Based on the case papers and due to the lack of the evidence to the contrary, the Panel is of the opinion that it deals with a bona fide purchaser of the contested web-site, i.e. a person who purchased the domain name in good faith, believing that he or she has clear rights of ownership after the purchase and having no reason to think otherwise. In situations where a seller behaves fraudulently, the bona fide purchaser is not held responsible. Someone with a conflicting claim to the property under discussion would need to take it up with the seller, not the purchaser.
However, as soon as Respondent became aware of the intellectual property rights which the disputed domain name encroaches on, he immediately decided to transfer the <statefarm-car-insurance.com> domain name to Complainant and Respondent took the steps to transfer the domain to Complainant. However, as far as the transfer was initiated when the administrative proceedings were pending, Tucows Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
At the same time, for the purposes of this decision, the Panel finds also necessary to make the reservation that the documents submitted in the case lack any information which might evidence any ties between the Respondent and initial registrant of the contested domain or to make any grounded conclusion whether the transfer of the domain has been made for the purposes of avoiding liability, or for any other reasons, and which, respectively, might serve as the evidence of the bad faith registration and use of the domain name by the Respondent.
For the time being, the domain name <statefarm-car-insurance.com> redirects Internet users to the <homestead.com> webpage, a webpage which advertises website design services. The Panel finds that such use of the confusingly similar disputed domain name to redirect Internet users to a website unrelated to Complainant as commenced by the initial registrant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
However, there are no supporting documents on which it might be possible to allocate the true date of transfer of the contested domain name and to establish whether the current owner has ever had an opportunity to start any legitimate noncommercial or fair use of the domain name.
This, actually, prevents the Panel to make the accurate analysis of the case and provide grounded legal findings regarding Policy Paragraphs 4(a)(ii) and 4(a)(iii).
Notwithstanding the above reservation, in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel has decided to accept the Response in making its decision, and notes that Respondent has chosen not to challenge any of Complainant’s assertions but, rather, to agree to transfer the disputed domain names to Complainant in satisfaction of Complainant’s requested remedy. (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.”).
Respondent has stipulated that the domain name <statefarm-car-insurance.com> be transferred to Complainant, and, accordingly, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarm-car-insurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: February 23, 2011
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