State Farm Mutual Automobile Insurance Company v. brad zude
Claim Number: FA1309001521286
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is brad zude (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmlouisville.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 September 25, 2013; the National Arbitration Forum received payment on September 25, 2013.
On Sep 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmlouisville.com> domain name(s) is/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 September 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@statefarmlouisville.com. Also on September 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 October 22, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds:
State Farm 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 name registered by the Respondent incorporates the State Farm registered trademark, “State Farm” and is confusingly similar to State Farm registered marks, especially since the website contains 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 January of 2013 it was brought to the attention of State Farm that Complainant’s trademark "State Farm" had been registered as part of the domain name “StateFarmLouisville.com.” The domain name sends a person to a parked web page with click-through advertisements to various companies/products, some of which are in direct competition with State Farm Insurance.
On January 31, 2013, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent at [redacted]. On February 26, 2013, another cease and desist letter was sent to the Respondent via email; however, there was no response from the Respondent. On April 23, 2013 a cease and desist letter was sent, along with a draft arbitration complaint.
Respondent Has No Legitimate Interest in the Domain Name
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 the State Farm servicemark that it has been using since 1930 and to other State Farm 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.
The Respondent has no right or legitimate interest in the disputed domain name. 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 name or to use the State Farm trademark for the Respondent’s business purposes.
Respondent is not commonly known under the domain name “StateFarmLouisville.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 trademarks. Indeed, the name includes the State Farm registered mark "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 a State Farm trademark 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 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 domain name “StateFarmLouisville.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 “StateFarmLouisville.com,” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a parked web page with click-through advertisements to various companies/products, including some 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 the Respondent did put information on its website, its content along with the 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 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.
See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c )(i); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c )(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
e) Respondent has been sent Complainant’s cease and desist letter for notification of Respondent’s unauthorized use of the name in question. Failure to respond with legitimate information for use or intention to use the name and then failure to comply with Complainant’s cease and desist request demonstrates it has registered and is using the name in bad faith.
f) The Respondent registered its domain name on January 23, 2013. 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 name was intended to be in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent submitted a number of emails, which said:
1. I don’t have time to jump through all your hoops. I’ll be more than happy to transfer it and be done. Just tell me where to transfer it. I don’t have time to read 10 pages of your filings. Thanks.
2. I have already stated that I'd transfer the domain over. I’m not sure what the hang up is on your end.
(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 must prove 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 claims rights in the STATE FARM mark, which is used in connection with insurance and the financial services industry. Complainant is the owner of registrations for the STATE FARM mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996). The Panel accepts this as adequate proof of Complainant’s rights in the STATE FARM mark under Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant claims Respondent’s <statefarmlouisville.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The disputed domain name includes Complainant’s STATE FARM mark in its entirety, along with the geographic term “louisville” and the generic top-level domain (“gTLD”) “.com.” The disputed domain name removes the space between “state” and “farm” in Complainant’s STATE FARM mark. The addition of a geographic term does not sufficiently distinguish a disputed domain name from a trademark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The addition of a gTLD and removal of spaces does not adequately distinguish the disputed domain name from Complainant’s mark. See I 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)). Domain names must contain a gTLD and cannot contain spaces. To hold otherwise would be to eviscerate the UDRP. Therefore, Respondent’s <statefarmlouisville.com> domain name is confusingly similar to Complainant’s STATE FARM 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 claims Respondent does not have any rights or legitimate interests in the <statefarmlouisville.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way. The WHOIS record for the disputed domain name lists “brad zude” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on the record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Under the facts of this case, the Panel finds Respondent is not commonly known by the <statefarmlouisville.com> domain name pursuant to Policy ¶4(c)(ii).
The <statefarmlouisville.com> domain name resolves to a parked web page displaying click-through advertisements, some of which directly compete with Complainant. The displayed hyperlinks include “Car Insurance” and “Medicare Supplement Plans.” Past panels have found that displaying third party links that compete with Complainant does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)). This Panel agrees and finds Respondent’s use of the <statefarmlouisville.com> domain name to display click-through advertisements, some of which directly compete with 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <statefarmlouisville.com> domain name in bad faith. Respondent is attempting to attract Internet users to the confusingly similar domain name, which resolves a parked web page featuring click-through advertisements. Past panels have found such conduct violates 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).”). This Panel concurs and finds Respondent’s to attempt to attract Internet users to the confusingly similar domain name featuring a parked web page with click-through advertisements constitutes bad faith registration and use under Policy ¶4(b)(iv).
Complainant claims Respondent has knowledge of Complainant’s rights in and use of the STATE FARM mark prior to registering the <statefarmlouisville.com> domain name because of Complainant’s long-term use of its mark dating back to 1930 and its own domain name, <statefarm.com>, dating back to 1995. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes Respondent must have had actual notice of Complainant's mark based on Complainant’s long-term use. This means Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Furthermore, Respondent has informally consented to the entry of an order transferring the disputed domain name to Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <statefarmlouisville.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 30, 2013
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