State Farm Mutual Automobile Insurance Company v. jon hook
Claim Number: FA1205001446663
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is jon hook (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his 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 May 31, 2012; the National Arbitration Forum received payment on May 31, 2012.
On June 1, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2012 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@statefarmhb.com, postmaster@hbstatefarm.com, and postmaster@statefarmInsuranceca.com. Also on June 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 28, 2012, 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
This Complaint is based on the following factual and legal grounds:
State Farm’s Trademark Rights to the Name “State Farm” and “State Farm Insurance”
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 and registered “State Farm Insurance” on September 11, 1979. 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, State Farm Bank, State Farm Bank logo, State Farm Bayou Classic, State Farm Catastrophe Services, State Farm Classic, State Farm Mutual Funds, State Farm Dollars, State Farm Green Space, State Farm Red Magazine
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 the websites contain 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 on the Internet
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 February of 2012 it was brought to State Farm's attention that Complainant’s trademark "State Farm" had been registered as part of the domain names “StateFarmHB.com,” “HBStateFarm.com,” and “StateFarmInsuranceCA.com.” The domain names send a person to web pages which state they are provided by GoDaddy.com and contain numerous links for various products and companies, including insurance companies in direct competition with State Farm Insurance.
On February 13, 2012, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent at xxxxxxxx@gmail.com. On March 13, 2012, another cease and desist letter was sent to the Respondent via email; however, there was no response from the Respondent. On April 4, 2012 a cease and desist letter was sent, along with a draft arbitration complaint.
Respondent Has No Legitimate Interest in the Domain Names
Because of State Farm’s substantial efforts, the public associates the phrase “State Farm” with the owner of the service mark “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 service mark 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 service mark "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 “StateFarmHB.com,” “HBStateFarm.com,” or “StateFarmInsuranceCA.com.” 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 registrations and use.
b) Despite having registered the domain names “StateFarmHB.com,” “HBStateFarm.com,” and “StateFarmInsuranceCA.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 these domain names 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 “StateFarmHB.com,” “HBStateFarm.com,” and “StateFarmInsuranceCA.com” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to parked web pages which state they are provided by GoDaddy.com and contain ads with links to insurance companies in direct competition with State Farm. 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 the Respondent did put information on its website, its content along with the 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 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 domain names including Complainant’s trademark 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 marks. This is bad faith registration and use of internet domain names.
f) Respondent has been sent Complainant’s cease and desist letter 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 faith.
g) The Respondent registered its domain names on February 6, 2012. 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
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant has rights in the STATE FARM and STATE FARM INSURANCE marks. Complainant provided the Panel with evidence of its United States Patent & Trademark Office (“USPTO”) trademark registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996). Complainant also provides evidence of its trademark registration for the STATE FARM INSURANCE mark (e.g., Reg. No. 1,125,010 registered September 11, 1979) with the USPTO. Panels have previously held the registration of a mark with a federal trademark authority is sufficient evidence of having rights in the mark. 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). This Panel agrees and finds Complainant has rights in the STATE FARM and STATE FARM INSURANCE marks pursuant to Policy ¶4(a)(i).
Complainant contends the <statefarmhb.com> and <hbstatefarm.com> domain names are confusingly similar to the STATE FARM mark. The addition of the letters “hb” does not make the <statefarmhb.com> and <hbstatefarm.com> domain names distinct from the STATE FARM mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The deletion of spaces and the addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶4(a)(i) determination. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Respondent’s <statefarmhb.com> and <hbstatefarm.com> domain names are confusingly similar to the STATE FARM mark under Policy ¶4(a)(i).
Complainant also contends the <statefarmInsuranceca.com> domain name is confusingly similar to the STATE FARM INSURANCE mark. Respondent’s deletion of spaces and addition of the gTLD “.com” do not prevent a finding of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Respondent’s addition of the letters “ca” (apparently a geographical designation) does not sufficiently differentiate the <statefarmInsuranceca.com> domain name from the STATE FARM INSURANCE mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). Respondent’s <statefarmInsuranceca.com> domain name is confusingly similar to the STATE FARM INSURANCE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 contends Respondent is not commonly known by the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names. Complainant argues Respondent has never traded under a name or acquired a trademark reflected by the disputed domain names. Complainant claims Respondent is not an independent contractor of Complainant, is not authorized to use Complainant’s marks in domain names, and is not associated with, affiliated with, or sponsored by Complainant. Additionally, the WHOIS record for the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names lists “jon hook” as the registrant of the domain names. Based upon this information, the Panel finds Respondent is not commonly known by the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant claims the use of the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names does not give Respondent rights or legitimate interests in the disputed domain names. The disputed domain names resolve to websites displaying links to Complainant’s competitors in the insurance and financial services industries. Screenshots of the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names’ resolving websites show these links are displayed under headings such as “Farmers Insurance Group” and “Affordable Life Insurance.” The panels in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), held that the display of a series of competitive links on a website resolving from a disputed domain name is a use which violates the tenets of Policy ¶¶4(c)(i) and 4(c)(iii). Therefore, this Panel finds Respondent’s use of the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent registered the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names in bad faith. Complainant argues Respondent registered the disputed domain names to create the impression of association with Complainant and to create initial interest confusion for individuals looking for information about Complainant. Complainant claims the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names resolve to websites displaying links under headings such as “A/E E&O Insurance” and “Progressive Insurance” that are connected to Complainant’s competitors in the insurance and financial services industries. Complainant claims Respondent is directly or indirectly profiting from the links on the disputed domain names. Based upon this uncontroverted evidence, the Panel finds Respondent created confusion as to the source of the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names so Respondent could take commercial advantage of Internet users’ confusion pursuant to Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This is sufficient evidence of registration and use of the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent knew or should have known about Complainant’s rights in its marks prior to the registration and use of the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names because of Complainant’s longstanding and famous trademark rights at the time of the registration of the disputed domain names. Given Respondent’s location and the famous nature of Complainant’s marks, it seems clear Respondent must have known about Complainant’s marks before registering the disputed domain names. Respondent’s actual knowledge of Complainant’s rights in the STATE FARM and STATE FARM INSURANCE marks at the time it registered and began using the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names is adequate proof of bad faith under Policy ¶4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
The Panel finds 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 the <statefarmhb.com>, <hbstatefarm.com>, and <statefarmInsuranceca.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: July 5, 2012
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