State Farm Mutual Automobile
Insurance Company v. Twin City Church
Claim Number: FA0601000624673
PARTIES
Complainant
is State Farm Mutual Automobile
Insurance Company (“Complainant”), One State Farm Plaza, Bloomington, IL
61710. Respondent is Twin City Church (“Respondent”), 1611 E
Taylor St, Bloomington, IL 61701.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmpeople.com>, registered with Tucows Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration
Forum electronically on January 11, 2006; the National Arbitration Forum
received a hard copy of the Complaint on January 12, 2006.
On January 12, 2006, Tucows Inc. confirmed by e-mail to the
National Arbitration Forum that the <statefarmpeople.com>
domain name is registered with Tucows Inc. and that the Respondent is the
current registrant of the name. Tucows
Inc. has verified that Respondent is bound by the Tucows Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On January 17, 2006, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of February 6, 2006 by which Respondent could file a
Response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent’s registration as
technical, administrative and billing contacts, and to postmaster@statefarmpeople.com
by e-mail.
A timely Response was received and determined to be
complete on February 6, 2006.
Each of the parties submitted timely Additional Submissions
and they were considered by the Panel.
On February 17, 2006, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name(s) be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The domain name at issue, <statefarmpeople.com>, is confusingly similar to
Complainant’s registered service mark.
Respondent has no rights or legitimate interests in respect
of the disputed domain name.
Respondent registered and is using the disputed domain name
in bad faith.
B.
Respondent
The Respondent offers no argument that the domain name at
issue is not confusingly similar to Complainant’s mark.
Respondent asserts that it has legitimate interests in
respect of the domain name at issue.
Respondent denies that it registered and is using the
domain name in bad faith.
C. Additional Submissions
Each of the parties has filed an Additional Submission to
refute allegations of the other party and each filing was fully considered in
rendering this Decision.
FINDINGS
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":
State Farm Insurance Companies; the State Farm Insurance 3 oval
logo; State Farm Bank; State Farm Federal Savings Bank logo; State Farm Fire
and Casualty Co. logo; State Farm Benefit Management Account; State Farm Bayou
Classic logo; State Farm Catastrophe Services; State Farm Mutual Funds and
statefarm.com.
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 fully incorporates State Farm's registered trademark.
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.
Respondent has not been authorized by State Farm to use any of its marks.
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.
In July
of 2005 it was brought to State Farm's attention that Twin City Church of
Bloomington, Illinois registered Complainant's trademark "State Farm"
as part of the domain name, "statefarmpeople.com." The domain name
redirects a person to
<http://webdotcom.qsrch.com/dpark?s=www.statefarmpeople.com&prt=wc01>,
which contains numerous links with regard to various product information,
including insurance.
On July 29, 2005 a cease and desist
letter was sent by Complainant's Intellectual Property Administrator via
certified mail to Respondent. On
November 16, 2005 a response letter was received from Respondent, stating
Respondent will respond to the July 29, 2005 letter. On December 14, 2005 a cease and desist letter was sent by
Complainant's counsel with an attached copy of a draft complaint; however, no
response has been received from Respondent.
The
Respondent is not associated with, affiliated with or sponsored by State Farm,
the owner of the servicemarks "State Farm" and "State Farm
Insurance." State Farm did not
authorize the Respondent to register the domain name or to use the State Farm
trademarks for the Respondent's business purposes.
Respondent
is not commonly known under the domain name,
"statefarmpeople.com." There
has been no evidence proffered that the Respondent has been known by or
performed business under the domain name at issue. The Respondent does not
possess independent intellectual property rights in the name. State Farm does not have a contractual
arrangement with Respondent that would allow him to offer services under the
State Farm name.
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.
The
Respondent registered its domain name, "statefarmpeople.com" on July
7, 2005. 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."
DISCUSSION
Paragraph 15(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 established rights
in the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996) through
registration with the United States Patent and Trademark Office (“USPTO”). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <statefarmpeople.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire STATE FARM mark and adds the term “people.” The addition of generic terms to a mark is insufficient to distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”.
Accordingly, Complainant has
satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the confusingly similar <statefarmpeople.com> domain name to operate a website featuring links to various competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such diversionary use is 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent is neither commonly known by the <statefarmpeople.com> domain name nor licensed to register domain names featuring Complainant’s STATE FARM mark. Respondent is not commonly known by the <statefarmpeople.com> domain name for purposes of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Accordingly, Complainant has
satisfied Policy ¶ 4(a)(ii).
Accordingly, Complainant has
satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that
the <statefarmpeople.com> domain name be TRANSFERRED from
Respondent to Complainant.
_
James A. Carmody, Esq., Panelist
Dated: March 1, 2006
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