State Farm Mutual Automobile Insurance Company v. Mclink c/o Marcos Cajiao
Claim Number: FA1404001552103
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Mclink c/o Marcos Cajiao (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmcode.com> and <statefarmcode.info>, 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 April 1, 2014; the National Arbitration Forum received payment on April 1, 2014.
On April 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmcode.com> and <statefarmcode.info> 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 April 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2014 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@statefarmcode.com, postmaster@statefarmcode.info. Also on April 2, 2014, 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 April 28, 2014, 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
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” including, but not limited to,:
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 Companies Foundation, 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 Companies Foundation; State Farm Insurance, StateFarm.com, StateFarm.ca, and others. In the European Community State Farm and 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 the State Farm registered trademark, “State Farm” and are confusingly similar to State Farm registered marks, especially because they contain 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 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 September 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 names “StateFarmCode.com” and “StateFarmCode.info.” The domain names initially resolved to parked web pages containing click through ads for various insurance products/companies, including some in direct competition with Complainant. The domain names now resolve to parked web pages with no content, and which state they are provided by GoDaddy.com.
On October 4, 2013, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent at xxxxxxx@hotmail.com. On October 28, 2013, another cease and desist letter was sent to the Respondent via email; however, there was no response from the Respondent. On January 23, 2014 a cease and desist letter was sent, along with a draft arbitration complaint. On February 10, 2014 an email response was received from Respondent asking for Complainant to contact him by phone. On February 21, 2014, Complainant’s Intellectual Property Administrator spoke with Respondent by phone, at which time he indicated the domains were registered for the purpose of getting Complainant’s attention in order to make a marketing presentation to them. Respondent indicated he would transfer the domains to Complainant after he was allowed to make the marketing presentation.
Respondent Has No Legitimate Interest in the Domain Name
Because of substantial effort taken by State Farm, 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 the State Farm servicemark that it has been using since 1930 and to other State Farm 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. In fact, Respondent admitted the domains were registered solely to get the attention of Complainant.
Respondent is not commonly known under the domain name “StateFarmCode.com” or “StateFarmCode.info.” 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 trademarks. Indeed, the names include the State Farm registered mark "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 sites.
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 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 “StateFarmCode.com” and “StateFarmCode.info,” 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 “StateFarmCode.com” and “StateFarmCode.info” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals were initially sent to parked web pages containing click through ads for various insurance companies/products, including some in direct competition with Complainant. The domain names now resolve to parked web pages with no content, and which state they are provided by GoDaddy.com. 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 websites, 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.
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 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.
f) The Respondent registered its domain names on September 6, 2013. (See Attachment 2) State Farm registered its domain name “statefarm.com” on May 24, 1995. (See Attachment 5) 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 formal Response in this proceeding. However, Respondent sent an email which said “I am ready to desist of the use of StateFarmCode.com” “StateFarmCode.info” let know what I have to do.”
(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 prove the following three elements to obtain an order cancelling or transferring 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 formal 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.”).
Respondent’s email is not sufficiently clear to constitute consent to transfer the disputed domain names from Respondent to Complainant. For instance, Respondent might simply mean Respondent was willing to change how he used the disputed domain names. Therefore, the Panel will evaluate the matter on the merits.
Complainant is a nationally known company doing business under the name “State Farm” since 1930. Complainant engages in business in both the insurance and the financial services industries. Complainant registered the STATE FARM trademark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996) as well as with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 559,285 registered March 15, 2002) and Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 10,501,997 registered May 15, 2012). Providing evidence of registrations with governmental trademark offices, such as the USPTO, CIPO, or OHIM, is normally sufficient to establish rights in a mark. See State Farm Mutual Auto. Ins. Co. v. Leighton Alan Holdings, FA 0616915 (Nat. Arb. Forum February 16, 2006) (finding that Complainant has rights in the STATE FARM mark established through its registrations with the USPTO and CIPO); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)). This Panel concludes Complainant has rights in the STATE FARM mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <statefarmcode.com> and <statefarmcode.info> domain names are confusingly similar to Complainant’s STATE FARM mark. Respondent adds the gTLD “.com” to the <statefarmcode.com> domain name and the gTLD “.info” to the <statefarmcode.info> domain name. Respondent removes the space between Complainant’s STATE FARM mark, which does not reduce the confusion between the disputed domain names and the Complainant’s mark because spaces are not permitted characters in domain name syntax. See Cargill, Inc. v. Domain Privacy Group, FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶4(a)(i)). Respondent adds the term “code” to both of the disputed domain names. The word “code” is not descriptive of Complainant’s businesses nor is it a geographical term. However, on balance, the disputed domain names are confusingly similar to Complainant’s very strong mark. Even more telling is the fact Respondent intended them to be confusing similar.
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 has no rights or legitimate interests in the <statefarmcode.com> and <statefarmcode.info> domain names. Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). Respondent is not associated with, affiliated with or sponsored by Complainant. Complainant did not authorize Respondent to register the domain names or use them in any way. Respondent does not possess independent intellectual property rights in the disputed domain names. The WHOIS information for the disputed domain names lists “Marcos Cajiao” as registrant. A respondent is not commonly known by a disputed domain name where there is no evidence in the record indicating respondent is commonly known, in business or by the public, by that domain names. See State Farm Mut. Auto. Ins. Co. v. Domain Registration c/o Registerfly.com, FA 0637374 (Nat. Arb. Forum March 15, 2006) (finding respondent is not commonly known by the disputed domain names because there is no evidence in the record suggesting that respondent is commonly known by the disputed domain names.). Under this evidence, it seems obvious Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶4(c)(ii).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Complainant claims Respondent registered the disputed domain names to create the impression of association with Complainant and to trade off the good will associated with Complainant’s mark. Respondent’s disputed domain names resolved to a parked website with pay-per-click advertisements for insurance companies and other products on September 9, 2013, some of which directly compete with Complainant. Some of the links featured on Respondent’s resolving website from September include, “Car Insurance- $19 month,” “Free Auto Insurance Quote,” “Esurance Car Insurance,” “Blue Cross Blue Shield,” “GEICO Auto Insurance,” “Affordable Medicare Plans,” and “Individual Health Plans.” Using a confusingly similar domain name to resolve to a website displaying links and advertisements that compete with a complainant does not convey rights or legitimate interests in a disputed domain name under Policy ¶¶4(c)(i) or 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. Bryan Cruz, FA 0766658 (Nat. Arb. Forum Sept. 11, 2006) (finding respondent had no rights or legitimate interests in a disputed domain name when it used a confusingly similar domain name to resolve to a website displaying third-party links indirect competition with complainant and respondent receives pay-per-click referral fees from the displayed links.). Respondent’s use of the <statefarmcode.com> and <statefarmcode.info> domain names on September 9, 2013 does not provide for rights or legitimate interests in the domain names under Policy ¶¶4(c)(i) or 4(c)(iii).
As
of April 1, 2014 Respondent’s disputed domain names currently resolve to a
website hosted by GoDaddy.com offering advertisements for GoDaddy.com, LLC’s
domain name services. There is no legitimate content associated with the
disputed domain names and no indication that legitimate content would be
forthcoming. The resolving website advertises “New .COMs just $9.99* / Reg. $14.99.”
A respondent has no rights or legitimate interests in a disputed domain name
where the domain name resolves to a website displaying advertisements unrelated
to a complainant. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat.
Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of
the complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the disputed domain names). Respondent’s use of the disputed domain
names on April 1, 2014 does not convey rights or legitimate interests to
Respondent under Policy ¶¶4(c)(i) or 4(c)(iii).
Respondent registered the disputed domain names to attract Complainant’s attention so Respondent could make an advertising presentation. This does not amount to a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the <statefarmcode.com> and <statefarmcode.info> domain names in bad faith under Policy ¶4(b)(iv). Respondent’s disputed domain names previously resolved to a website displaying various links which directly competed with Complainant. Complainant also claims Respondent intended to attract Internet users to its resolving websites and confuse them as to Complainant’s association with the resolving websites and thus commercially profit from the confusion. Using a domain name in this fashion indicates bad faith use and registration under Policy ¶4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Domain Registration c/o Registerfly.com, FA 0637374 (Nat. Arb. Forum March 15, 2006) (finding bad faith use and registration where respondent used confusingly similar domain names to resolve to a website displaying commercial advertisements and links from which respondent likely received click-through fees.). Respondent’s registration and September 2013 use of the disputed domain names indicates bad faith use and registration under Policy ¶4(b)(iv).
Complainant claims Respondent’s current use of the <statefarmcode.com> and <statefarmcode.info> domain names indicates bad faith use and registration. The disputed domain names now resolve to a parked website with no content, and state they are provided by GoDaddy.com. The resolving website displays information including, “Learn how you can get this domain,” “This web page is parked FREE, courtesy of GoDadd.com,” and “New .COMs just $9.99.” Using a confusingly similar domain name to resolve to a website displaying advertisements unrelated to complainant indicates bad faith use and registration. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name). Respondent’s current use of the <statefarmcode.com> and <statefarmcode.info> domain names indicates bad faith use and registration under Policy ¶4(b)(iv).
Complainant claims Respondent was aware of Complainant and Complainant’s registered mark when Respondent registered the disputed domain names on September 6, 2013. This seems obvious because Respondent indicated he wanted to trade the disputed domain names so he could make an advertising pitch to Complainant. See 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). This indicates bad faith registration and use of the disputed domain names.
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 <statefarmcode.com> and <statefarmcode.info>> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 5, 2014
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