State Farm Mutual Automobile Insurance Company v. Paul Nicholson
Claim Number: FA1107001398580
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Paul Nicholson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org>, 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 July 14, 2011; the National Arbitration Forum received payment on July 14, 2011.
On July 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@statefarmice.biz, postmaster@statefarmice.com, postmaster@statefarmice.info, and postmaster@statefarmice.org. Also on July 20, 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 August 12, 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.
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 response from Respondent.
Complainant requests that the domain names 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 names registered by the Respondent incorporate State Farm’s registered trademark, “State Farm” and are confusingly similar to State Farm’s registered marks, especially since they include 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 March of 2011 it was brought to State Farm's attention that Complainant’s trademark "State Farm" had been registered as part of the domain names, “statefarmice.biz,” “statefarmice.com,” “statefarmice.info,” and “statefarmice.org.” The domain names send users to web pages which states they are parked free by GoDaddy.com and which contain numerous links for various products and companies, including insurance companies who are in direct competition with State Farm Insurance.
On March 23, 2011, a cease and desist letter was sent by Complainant via email to Respondent. On April 8, 2011, another cease and desist letter was sent to the Respondent; however, no response has been received from the Respondent. On April 25, 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 names at issue are 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 names are confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.
The Respondent has no right or legitimate interest in the disputed domain names. The Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the servicemark "State Farm." State Farm did not authorize the Respondent to register the domain names or to use the State Farm trademark for the Respondent’s business purposes.
Respondent is not commonly known under the domain names. It is believed that the Respondent has never been known by or performed business under the domain names at issue. The Respondent does not possess independent intellectual property rights in the names. 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 names 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 names registered by Respondent are confusingly similar to State Farm’s trademarks. Indeed, the names include one of State Farm's registered marks "State Farm.” These domains are 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 names at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the names in bad faith.
In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed domain names 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 names in question. Moreover, Respondent has not registered the names 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 names in question shows bad faith registration and use.
b) Despite having registered the domain names, 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 names, giving the impression that interested individuals will receive information regarding State Farm, the fact is users are sent to web pages which state they are parked free by GoDaddy.com and which contain 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 names 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 names and no demonstrable indication that legitimate content would be forthcoming. Even if Respondent did put State Farm or professional designation information on its web sites, their content along with their proposed domain names, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers. Failure to resolve the domain names to legitimate web site content indicates that the Respondent has no legitimate reason for having registered the names and demonstrates that it has registered and is using the names in bad faith.
e) Respondent’s multiple registrations of this famous mark without permission demonstrates bad faith intent to use the marks of others for commercial gain or to inappropriately use the good will associated with the registered mark. This is bad faith registration and use of internet domain names.
f) Respondent has been sent Complainant’s cease and desist letters for notification of Respondent’s unauthorized use of the names in question. Failure to respond with legitimate information for use or intention to use the names and then failure to comply with Complainant’s cease and desist request demonstrates it has registered and is using the names in bad.
g) The Respondent registered these domain names on March 18, 2011. 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,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com.” The Respondent’s registration of the domain names was intended to be in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant State Farm Mutual Automobile Insurance Company registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996), and uses the mark in connection with underwriting and servicing automobile, homeowners, life and fire insurance. Complainant also holds trademark registrations for numerous marks that include the STATE FARM mark dating back to 1957 (e.g. Reg. No. 645,860 registered May 21, 1957). Complainant has been conducting business under the name “State Farm” since 1930, and operates its official website resolving from the <statefarm.com> domain name to provide detailed information about its insurance and financial service products.
Respondent Paul Nicholson registered the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names on March 18, 2011. These disputed domain names resolve to parked websites which contain numerous links for various products and companies, including direct competitors of 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."
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 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 claims it has rights in the STATE FARM mark due to its trademark registration with the USPTO (Reg. No. 1,979,585 registered June 11, 1996). Complainant provides additional support for its assertion of rights in the STATE FARM mark through its trademark registration of numerous marks that include the STATE FARM mark dating back to 1957 (e.g. Reg. No. 645,860 registered May 21, 1957) and its continuous use of the mark in commerce providing insurance and financial services. The Panel finds Complainant’s federal trademark registration of the STATE FARM mark, and numerous registrations incorporating its STATE FARM mark, satisfies Policy ¶4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶4(a)(i).”).
Respondent’s <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names are confusingly similar to Complainant’s STATE FARM mark because Respondent’s domain names incorporate the entirety of Complainant’s mark, removes the space between terms of the mark, adds the generic term “ice”, and adds the generic top-level domain (“gTLD”) “.biz,” “.com,” “.info,” and “.org,” respectively. The Panel finds such minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent does not have any rights or legitimate interests in the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names. Based on this prima facie allegation by Complainant and its supporting documentation, the burden shifts to Respondent to prove otherwise. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Respondent has failed to respond to this proceeding, thereby failing to meet its burden of going forward and leaving the Panel free to find Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶4(a)(ii). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Out of an abundance of caution, the Panel will use its discretion to examine the record and determine whether Respondent has rights or legitimate interests in the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names under Policy ¶4(c).
The WHOIS information for the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names identifies “Paul Nicholson” as the registrant, which indicates Respondent is not commonly known by the disputed domain names. Respondent has not offered any evidence to suggest that Policy ¶4(c)(ii) applies in the instant proceeding. Furthermore, Complainant asserts Respondent is not licensed or otherwise authorized to use the STATE FARM mark. Complainant contends the disputed domain names create an impression of association between it and Respondent, when no such association exists. Without a scintilla of affirmative evidence to the contrary, the Panel must find Respondent is not commonly known by the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name).
Respondent’s <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names each resolve to a website featuring click-through hyperlinks to third-party websites, including Complainant’s competitors in the insurance and financial service industry. Complainant alleges Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). The Panel presumes Respondent is profiting through the receipt of click-through fees by operating the websites resolving from the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names. Therefore, the Panel finds Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does 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 Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶4(c)(i) or ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names each resolve to a website including hyperlinks to third-party websites of Complainant’s financial and insurance service competitors, which diverts Complainant’s business to its competitors. The Panel finds Respondent’s disputed domain names create a disruption of Complainant’s business and diverts Internet users seeking Complainant’s services to competitors of Complainant, which is evidence of bad faith registration and use pursuant to 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)).
Complainant claims Internet users searching for Complainant’s services will be confused by the disputed domain names when each resolve to a web directory with links to third-party competitors of Complainant. Further, Internet users may become confused about Complainant’s sponsorship or affiliation with the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> disputed domain names and resolving websites due to the Complainant’s mark being displayed on some of the resolving sites. Respondent attempts to profit from this confusion through its presumed receipt of click-through fees by linking to third-party websites. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <statefarmice.biz>, <statefarmice.com>, <statefarmice.info>, and <statefarmice.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: August 22, 2011
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