State Farm Mutual Automobile Insurance Company v. Tryon Enterprises, LLC
Claim Number: FA1304001495913
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Tryon Enterprises, LLC (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com>, registered with GoDaddy.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2013; the National Arbitration Forum received payment on April 22, 2013.
On April 24, 2013, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2013 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@cedarrapidsstatefarm.com, postmaster@iowacitystatefarm.com, and postmaster@northlibertystatefarm.com. Also on April 25, 2013, 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 May 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Respondent is not commonly known by the domain names <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com>.
ii. The domain names redirect to a financial services company completely unrelated to Complainant.
i. While Respondent registered the domain names <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> giving the impression that interested individuals will receive information regarding Complainant, the fact is individuals are redirected to the webpage <http://tryonfinancial.com>, a financial services company.
ii. Respondent knew or should have known of Complainant’s long-term use of the trademark STATE FARM.
Respondent has not submitted a Response to this case.
1. Respondent’s <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> domain names is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> domain names.
3. Respondent registered or used the <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> domain names 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 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.
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, State Farm Mutual Automobile Insurance Company, argues that it engages in business in both the insurance and financial services industry. Complainant contends that it is the owner of trademark registrations with the USPTO for the STATE FARM mark (e.g., Reg. No. 1,979,585, registered June 11, 1996). See Complainant’s Exhibit 1. The Panel notes that Respondent appears to reside within the United States. Thus, the Panel determines that Complainant’s registration of the STATE FARM mark with the USPTO proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that in August of 2011, it was brought to Complainant’s attention that its trademark STATE FARM had been registered as part of the domain names <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com>. The Panel notes that Respondent incorporates Complainant’s STATE FARM mark in its entirety and adds the geographic terms “Cedar Rapids,” “Iowa City,” or “North Liberty.” The Panel finds that Respondent’s addition of geographic terms does not distinguish Respondent’s domain names from Complainant’s mark under Policy ¶ 4(a)(i). See BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”). The Panel notes that Respondent removes the spaces in Complainant’s STATE FARM mark and adds the generic top-level domain (“gTLD”) “.com” to its domain names. 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).”). Accordingly, the Panel concludes that Respondent’s <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 asserts that Respondent is not commonly known under the domain names <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com>. Complainant claims that Respondent has never been known by or performed business under the domain names at issue. The Panel notes that the WHOIS information identifies “Tryon Enterprises, LLC” as the registrant of the domain names. See Complainant’s Exhibit 2. The Panel holds that Respondent is not commonly known by the disputed domain names pursuant to 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).
Complainant argues that the domain names redirect to a financial services company completely unrelated to Complainant. Complainant contends that the domain names resolve to the webpage <http://tryonfinancial.com>. See Complainant’s Exhibit 3. The Panel determines that Respondent’s competing use of the disputed domain names is not 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that while Respondent registered the domain names <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> giving the impression that interested individuals will receive information regarding Complainant, the fact is individuals are redirected to the webpage <http://tryonfinancial.com>, a financial services company. See Complainant’s Exhibit 3. Complainant argues that these domains are clearly intended to attract individuals seeking information on Complainant and create customer confusion as to the source or sponsorship of the sites. The Panel finds that Respondent’s competing use of the disputed domain names shows bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant claims that Respondent knew or should have known of Complainant’s long-term use of the trademark STATE FARM. Complainant asserts that Respondent registered its domain names on August 2, 2011, whereas Complainant registered its domain name “statefarm.com” on May 24, 1995. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cedarrapidsstatefarm.com>, <iowacitystatefarm.com>, and <northlibertystatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 5, 2013
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