State Farm Mutual Automobile Insurance Company v. A K
Claim Number: FA1502001603714
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is A K (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmcreditcardr.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2015; the Forum received payment on February 6, 2015.
On February 7, 2015, NameSilo, LLC confirmed by e-mail to the Forum that the <statefarmcreditcardr.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2015, 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@statefarmcreditcardr.com. Also on February 09, 2015, 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 March 2, 2015.
Complainant issued a timely Additional Submission on March 6, 2015, in a manner according to the Forum's Supplemental Rule #7.
On March 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant has registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). Complainant uses the mark in business in both the insurance and the financial services industry. Complainant claims that the <statefarmcreditcardr.com> domain name is confusingly similar to the mark.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent ever held licensing rights to use the STATE FARM mark in domain names. Further, the Respondent is not making a bona fide offering, and the resolving webpage is not a legitimate noncommercial fair use.
Respondent has registered and is using the domain name in bad faith. Although Respondent claims it is using the disputed domain name to operate a review website, Respondent has failed to provide sufficient evidence to establish good faith use. Also, Respondent clearly had actual knowledge of Complainant’s rights in the STATE FARM mark, and the use of a disclaimer cannot mitigate a finding of bad faith.
B. Respondent
Respondent does not dispute Complainant’s rights in the STATE FARM mark. Respondent argues that the <statefarmcreditcardr.com> domain name is not confusingly similar to the mark because the “r” at the end of the domain name is an abbreviation for the word “review.” The use of abbreviations is a common practice with registration of domain names.
Respondent does not dispute that it is not commonly known as the domain name or that it does not possess licensing rights to use the STATE FARM mark in domain names. Respondent claims that it is making a legitimate noncommercial fair use of the domain name because it resolves to a review website, and such use is protected by the First Amendment. In hosting such a website, Respondent is making a nominative fair use of the mark in the domain name. Respondent also concedes that it has provided links to Complainant’s own website, but that Respondent does not profit whatsoever from these links.
Respondent has not registered or used the domain name in bad faith. Respondent does not dispute that it originally parked the page, but that this is common technique for a registrant to do when it is formulating a website. Additionally, Respondent is now hosting a website where Internet users can voice complaints or praises related to the services offered by Complainant. Respondent has also included a disclaimer on the resolving webpage which negates any possibility that Internet users will think it is sponsored by or affiliated with Complainant.
C. Complainant’s Additional Submission
The disputed domain name does not represent nominative fair use or protected speech because the disputed domain name does not communicate or express Respondent’s right to express opinions about Complainant. Additionally, Respondent cannot claim that it is operating a general review site, because it has registered a disputed domain name that is confusingly similar to Complainant’s STATE FARM mark.
In regards to bad faith, Respondent relies heavily on disclaimer language, which still cannot override evidence of bad faith. Additionally, Respondent’s parking behavior shows bad faith.
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that has been doing business under the name “State Farm” since 1930. State Farm engages in business in both the insurance and the financial services industry. State Farm registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996. (e.g., Reg. No. 1,979,585).
Respondent, A K, registered the <statefarmcreditcardr.com> domain name on August 21, 2014. The domain name initially resolved to a parked page hosted by Dreamhost. Once State Farm sent their cease and desist letter, the site was updated to a pretextual review site.
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.
Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <statefarmcreditcardr.com> domain name is confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i). The disputed domain name includes the entire mark and adds “credit cardr,” which is a term descriptive of the services offered under the STATE FARM mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Also, the addition of a gTLD, such as “.com,” and the omission of spaces between the words of a mark fail to distinguish the domain name from the mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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).
Respondent has no rights or legitimate interests in the <statefarmcreditcardr.com> domain name. Respondent does not have licensing rights to use the STATE FARM mark in domain names. “A K” is listed as the registrant of record for the disputed domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent claims that it is making a legitimate noncommercial fair use of the domain name because it resolves to a webpage where Internet users can write reviews on services offered by State Farm. Respondent says he is making a nominative fair use of the domain name with his review site. Respondent also claims that such use is protected by the First Amendment.
The <statefarmcreditcardr.com> domain name does not represent nominative fair use or protected speech, because the domain name itself does not communicate or express Respondent’s right to express opinions about Complainant. See Sears, Rebuck and Co. v. Hanna Law Office, D2000-0669 (WIPO Sept. 8, 2000) (“If Respondent truly wanted to let Internet users know that its website was a complaint [or review] site, it would have initially registered and used a domain name with such a communicative message.”).
As in Sears, Respondent here offered no evidence of a bona fide offering of goods and services prior to notice of the dispute. Respondent’s website was parked until State Farm sent its original cease and desist letter. See Sears, D2000-0669 (“Prior to March 28, 2000, the date when Complainant sent a cease and desist letter to Respondent, Respondent had posted an ‘under construction’ website.”). And, Respondent “could not have had a legitimate contemplated use for offering goods and services at the Domain Name” given the fame of the STATE FARM mark. See id.
The post-dispute content of Respondent’s website does not support Respondent’s claim that the site is a non-commercial review site. The title page reads: “State Farm Credit Card – Sign On | Card Application | Pay Bill.” The post-dispute content is a pretext to prevent transfer. See Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., D2001-0398 (WIPO July 2, 2001) (“[T]he Panel finds that the spintopic.com site is a pretext, designed solely to avoid a finding of cybersquatting by inventing a purported fair use.”).
In a recent proceeding, the Respondent here, A K, made a nearly identical use of the <americaneaglecreditcardr.com> domain name, claiming a review site after the proceedings had begun. The Panel found Respondent’s use to be pretexual. See Retail Royalty Company and AE Direct Co LLC v. A K, FA 1580871 (Nat. Arb. Forum Oct. 31, 2014).
In any event, use of a confusingly similar domain name to host a review website cannot provide a valid defense for Respondent. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”).
As a general rule, a registrant is responsible for any page parked at the disputed domain name. WIPO Overview 2.0, § 3.8 (citing numerous cases including Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., D2006-1315 (WIPO Feb. 25, 2007)). Before Complainant sent Respondent the initial cease and desist letter, the disputed domain name resolved to a parking webpage. After the cease and desist letter was sent, the resolving webpage changed to reflect the alleged review website. Therefore, Respondent registered and uses the disputed domain name in bad faith.
Respondent had actual knowledge of Complainant’s STATE FARM mark when registering the <statefarmcreditcardr.com> domain name. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent’s use of a disclaimer does not prevent a finding of Policy ¶ 4(a)(iii) bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcreditcardr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.) Panelist
Dated: March 28, 2015
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