State Farm Mutual Automobile Insurance Company v. Robert Pietronuto
Claim Number: FA1311001528021
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Robert Pietronuto (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dotstatefarm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2013; the National Arbitration Forum received payment on November 4, 2013.
On November 4, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dotstatefarm.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 November 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@dotstatefarm.com. Also on November 4, 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.
A timely Response was received and determined to be complete on November 25, 2013.
On November 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant uses the STATE FARM trademark in connection with insurance and financial services, and the trademark has been in continuous use since 1930. Complainant has been using the <statefarm.com> domain name to make a presence for its STATE FARM business on the Internet since 1995. Complainant has registered the STATE FARM mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,979,585 registered on June 11, 1996).
Respondent’s <dotstatefarm.com> domain name clearly infringes on the STATE FARM trademark, and minor additions to the famous STATE FARM trademark do not factor into the analysis.
The Respondent is not known as the disputed domain name, and Complainant has no contractual arrangements that would otherwise allow Respondent to appropriate the STATE FARM mark in any manner.
Respondent is using the <dotstatefarm.com> domain name to host hyperlinks to various unrelated sources, as well as hyperlinks that shuttle Internet users to competing services.
According to the Complainant, the Respondent:
- Disrupts the business of Complainant by allowing hyperlinks on the <dotstatefarm.com> domain name’s website that send Internet users straight to Complainant’s competitors;
- Creates the impression that Internet users are visiting a website associated with Complainant when the websites have no relation with the official STATE FARM business; and,
- Knows or should know that STATE FARM is a registered trademark that may be used only at the exclusive provision of Complainant.
B. Respondent
The Respondent presents himself as “Robert Pietronuto.” Respondent claims that because the domain name merely sends users to the GoDaddy.com, LLC affiliated website, it is not a click-through website. Respondent notes that he has “no problem in reassigning the site to [Complainant]” as requested.
In an informal e-mail submitted by Respondent, Respondent explains that he registered the <dotstatefarm.com> domain name because “by putting [‘]dot[‘] in front” as a prefix in the domain name registration, there were more domain names available to Respondent that he wished to register (e.g., <statefarm.com> is not available but Respondent can register <dotstatefarm.com>.)
Trademarks and Disputed Domain Name
The Complainant is the owner of the U.S. trademark registrations
U.S. No. 1,979,585 STATE FARM Word (registered June 11, 1996)
U.S. No 4,211,626 STATE FARM Figurative (registered September 18, 2012)
U.S. No 4,227, 731 STATE FARM Figurative (registered October 16, 2012)
U.S. No 2,319,867 STATE FARM BANK Word (registered February 15, 2000)
U.S. No 4,211,628 STATE FARM BANK Figurative (registered September 18, 2012)
U.S. No 4,211,629 STATE FARM BANK Figurative (registered September 18, 2012)
U.S. No 2,444,342 STATEFARM.COM Word (registered April 17, 2001)
U.S. No 2,444,341 STATEFARM.COM Word (registered April 17, 2001)
U.S. No 2,450,890 STATEFARM.COM Word (registered May 15, 2001)
U.S. No 1,125,010 STATE FARM INSURANCE Word (registered September 11, 1979)
U.S. No 2,544,840 STATE FARM DOLLARS Word (registered March 5, 2002)
U.S. No 3,878,512 STATE FARM RED MAGAZINE Word (registered November 23, 2010)
U.S. No 2,617,950 STATE FARM CATASTROPHE TEAM Word (registered September 10, 2002)
U.S. No 3,891,810 STATE FARM GREEN SPACE Word (registered December 21, 2010)
U.S. No 2,591,039 STATE FARM MUTUAL FUNDS Word (registered July 9, 2002)
U.S. No 2,198,246 STATE FARM BAYOU CLASSIC Word (registered October 20, 1998)
U.S. No 2,617,951 STATE FARM CATASTROPHE SERVICES Word (registered September 10, 2002)
U.S. No 3,368,764 STATE FARM FEDERAL CREDIT UNION Figurative (registered January 15, 2008)
U.S. No 2,720,762 STATE FARM INSURANCE AND FINANCIAL REVIEW Word (registered June 3, 2003)
U.S. No 3,368,928 STATE FARM LEARNING AND TEACHING EXCHANGE Word (registered January 15, 2008)
U.S. No 3,997,978 STATE FARM NATION Word (registered July 19, 2011)
U.S. No 4,068,699 STATE FARM NATION REWARDS Word (registered December 6, 2011)
U.S. No 2,381,383 STATE FARM PREMIER SERVICE Word (registered August 29, 2000)
U.S. No 2,381,236 STATE FARM PREMIER SERVICE Figurative (registered August 29, 2000)
The Complainant is also the owner STATE FARM trademarks in Canada, Mexico, and European Union.
The Respondent registered the <dotstatefarm.com> domain name on April 11, 2013.
Preliminary Issue: Respondent’s Consent to Transfer
The Panel notes that Respondent consents to transfer the <dotstatefarm.com> domain name to Complainant contingent upon Complainant’s agreement to waive all of Respondent’s liability. However, ordinarily a consent to transfer must be in the form of an unconditional surrender of the domain name without any reservations. As Respondent vaguely suggests that he be held without any liability, the Panel cannot see that Respondent has sufficiently consented to transfer the domain name within the meaning of the UDRP. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides to analyze the case under the elements of the UDRP.
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.
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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 that Respondent is not known as the <dotstatefarm.com> domain name. Complainant explains that Complainant has no contractual arrangements that would otherwise allow Respondent to appropriate the STATE FARM mark in any manner. The Panel notes that Respondent identifies himself only as “Robert Pietronuto”, the same name listed in the domain name’s WHOIS information as registrant of the domain name. The Panel agrees that Respondent has clearly not met its burden in showing that Respondent has ever been known by the <dotstatefarm.com> domain name under Policy ¶ 4(c)(ii). See, e.g., St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next argues that Respondent is using the <dotstatefarm.com> domain name to host hyperlinks to various unrelated sources, as well as hyperlinks that shuttle Internet users to competing services. The Panel note that the domain name currently resolves to a GoDaddy.com, LLC parking website wherein competing automobile insurance is offered along with generic hyperlinks to medical supplement plans that insure consumers. The Respondent seems to argue that Respondent is not responsible for these hyperlinks, and that the disputed domain name is not used for a click-through website.
The Panel note however that Respondent is ultimately the owner of <dotstatefarm.com> and is therefore also responsible for how the disputed domain name is used, and for the content that appears on the domain name’s website. See, e.g., Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).The Panel agree that Respondent’s use of the <dotstatefarm.com> domain name to host competing hyperlinks 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. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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).”).
Complainant argues that Respondent disrupts the business of Complainant by allowing hyperlinks on the <dotstatefarm.com> domain name’s website that send Internet users straight to Complainant’s competitors. The Panel agree that hyperlinks such as “Allstate® Auto Insurance,” “Esurance Auto Insurance,” and “GEICO Auto Insurance” appear on the domain name’s resolving website among other hyperlinks, and that Respondent’s allowance of competing hyperlinks on the domain name’s website evidences Policy ¶ 4(b)(iii) bad faith. 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)).
Complainant also argues that Respondent creates the impression that Internet users are visiting a website associated with Complainant when the website has no relation with the official STATE FARM business. The Panel notes the competing and unrelated goods and services promoted through the <dotstatefarm.com> domain name’s website. See Compl., at Attached Ex. 3. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel found that the competing hyperlinks on the respondent’s website generated commercial advertising revenues for the respondent, and that such gains were accrued because Internet users would likely visit the website under the belief that the content therein necessarily had some connection with the mark-holding complainant. The Panel traces Respondent’s bad faith to Policy ¶ 4(b)(iv), as Internet users are likely to assume that the domain name is affiliated with Complainant and the STATE FARM mark, and Respondent generates advertising revenue through this confusion each time an Internet user clicks on one of the hyperlinks. See also 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).
Complainant finally argues that Respondent knew or should have known that STATE FARM is a registered trademark that may be used only at the exclusive provision of Complainant. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, in this case the Panel finds that, due to the fame of Complainant's mark, the fact that Complainant and Respondent are from the same country and that Respondent has registered Complainants trademark as a domain name with only a descriptive domain name-related term in front of the trademark, the Respondent had actual knowledge of the mark and Complainant's rights at the time Respondent registered the disputed domain name.
Thus, the Panel concludes 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), see also State Farm Mutual Automobile Insurance Company v. FMH INC. ADVERTISING, FA1450934 (Nat. Arb. Forum Aug. 8, 2012).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dotstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 10, 2013
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