State Farm Mutual Automobile Insurance Company v. State Farm Staffing c/o Michelle Thomas
Claim Number: FA1101001369245
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Smith of State Farm Mutual Automobile Insurance Company, Idaho, USA. Respondent is State Farm Staffing c/o Michelle Thomas (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmstaffing.com>, 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.
Houston Putnam Lowry, Chartered Arbitrator, 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, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmstaffing.com> 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 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@statefarmstaffing.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
While Respondent made no formal submission, it sent an email which said:
“Sir I can not reach you by phone. I an NOT using this domain. I guess I just wasted my money. I did get permission from someone with state farm compliance but I do not want to jeopardize them.
Please call me at XXX-XXX-XXXX
Sent from my Verizon Wireless BlackBerry”
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any formal response from Respondent.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
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. State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:
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.
In Canada State Farm 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. 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 the site contains links to insurance information.
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 web site, 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 expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.
Conduct on Part of Respondent
In November 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, “statefarmstaffing.com.” The 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 November 29, 2010, a cease and desist letter was sent by Complainant via email to Respondent at statefarmstaffing@fuse.net. On November 29, 2010, Respondent advised, via email, they would contact us. On December 22, 2010, another cease and desist letter was sent to the Respondent via email; however, no response was received from the Respondent. On January 12, 2011, a cease and desist letter was sent, along with a draft arbitration complaint.
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 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, “statefarmstaffing.com.” 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.
Respondent Has Acted in Bad Faith
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 Services, Inc., FA94662 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA94427 (Nat. Arb. Forum, May 27, 2000), State Farm Mut. Auto. Ins. Co. v. I & B, FA94719 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA94335 (Nat. Arb. Forum April 24, 2000), State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA94663 (Nat. Arb. Forum June 1, 2000), State Farm Mut. Auto. Ins. Co. v. Try Harder & Company, FA94730 (Nat. Arb. Forum June 15, 2000), State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA94802 (Nat. Arb. Forum June 13, 2000), State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA94808 (Nat. Arb. Forum June 6, 2000), State Farm Mut. Auto. Ins. Co. v. HPR, FA94829 (Nat. Arb. Forum June 22, 2000), State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA0710001087389 (Nat. Arb. Forum, November 16, 2007), State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FAFA0710001087458 (Nat. Arb. Forum, November 20, 2007), State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FAFA0710001092410 (Nat. Arb. Forum, November 20, 2007). (Decisions can be viewed at www.icann.org)
As in the cases above, Respondent has no legitimate claim in the domain name at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the name in bad faith.
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 “statefarmstaffing.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 “statefarmstaffing.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 web site, 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 web site 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) Respondent has been sent Complainant’s cease and desist letters for notification of Respondent’s unauthorized use of the names in question. Failure to comply with Complainant’s cease and desist requests demonstrates it has registered and is using the names in bad faith.
f) The Respondent registered its domain name, “statefarmstaffing.com” on November 23, 2010. (See Attachment 2) State Farm registered its domain name “statefarm.com” on May 24, 1995. (See Attachment 5) 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 failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, owns the STATE FARM mark and has been doing business under that mark since 1930. Complainant engages in business in the insurance industry and the financial services industry. Complainant holds multiple trademark registrations for its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,979,585 issued June 11, 1996).
Respondent, State Farm Staffing c/o Michelle Thomas, registered the <statefarmstaffing.com> domain name on November 23, 2010. Respondent uses the disputed domain name to operate a directory website featuring numerous commercial links which directly compete with Complainant in the insurance industry.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant contends it has established rights in its STATE FARM mark. In order to establish rights in a mark, previous panels have found that registration with a federal trademark authority is sufficient. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Here, Complainant holds numerous trademark registrations for its STATE FARM mark with the USPTO (e.g. Reg. No. 1,979,585 issued June 11, 1996). The Panel concludes Complainant has confirmed its rights in the STATE FARM mark through trademark registration pursuant to Policy ¶4(a)(i).
Complainant asserts Respondent’s <statefarmstaffing.com> is confusingly similar to its STATE FARM mark. The disputed domain name uses Complainant’s mark in its entirety and merely differs by the deletion of a space between words of the mark, the addition of the generic term “staffing,” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds the deletion of a space between words of a mark and the affixation of a gTLD are not enough to avoid a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). The Panel also finds the adding of a generic term is not sufficient to distinguish the disputed domain name from Complainant’s mark. 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). Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶4(a)(i).
The Panel finds the elements of Policy ¶4(a)(i) satisfied.
Complainant argues Respondent has no rights or legitimate interests in the <statefarmstaffing.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel determined once a complainant has made out a prima facie case in support of its allegations, the burden shifts to the respondent to show it has rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. Here, Complainant has made a prima facie showing. Since Respondent failed to submit a response to the Complaint, the Panel is free to assume Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, this Panel will look to the record to find out whether Respondent has rights or legitimate interests under Policy ¶4(c).
Complainant alleges Respondent is not commonly known by the disputed <statefarmstaffing.com> domain name. Complainant asserts it has not authorized Respondent to use its STATE FARM mark within the disputed domain name and alleges Respondent has never operated a business under the disputed domain name.
Respondent’s email suggests Respondent was given “permission” to use Complainant’s mark under conditions which suggested the permission was not validly given. Since Respondent is not willing to give any information to substantiate this claim, the Panel is not persuaded valid permission was ever given.
Although the WHOIS information identifies Respondent as “State Farm Staffing,” which is similar to the disputed domain name, the Panel nevertheless finds Respondent lacks rights and legitimate interests in the disputed domain name, especially in light of Respondent’s email. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). The Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Respondent’s disputed domain name resolves to a website featuring a directory of links to third-party websites, some of which directly compete with Complainant’s offerings in the insurance industry. Respondent presumably profits each time an Internet users clicks on one of the displayed links. The Panel finds Respondent’s use of the disputed domain name 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds the elements of Policy ¶4(a)(ii) satisfied.
The Panel finds Respondent registered and used the disputed domain name in an attempt to disrupt Complainant’s business. Internet users seeking information on Complainant’s products and services will potentially purchase those same products and services from Complainant’s competitors based on Respondent’s display of misleading links to competing insurance providers on the website resolving from the <statefarmstaffing.com> domain name. The Panel finds this creates a disruption of Complainant’s business and is therefore evidence of bad faith under Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
As established previously, Complainant is likely profiting through the receipt of click-through fees obtained each time an Internet user clicks on one of the displayed third-party links. The Panel finds Respondent’s registration and use of the disputed domain name was done for the purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. Accordingly, the Panel finds bad faith registration and use under Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds the elements of Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmstaffing.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: March 8, 2011
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