State Farm Mutual Automobile Insurance Company v. Manila Industries, Inc.
Claim Number: FA0609000805213
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmbureau.com>, registered with Compana, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 5, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <statefarmbureau.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 October 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@statefarmbureau.com by e-mail.
Although a Response was received after the deadline, the Panel, in the exercise of its discretion, has chosen to consider the Response.
On
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." 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmbureau.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmbureau.com> domain name.
3. Respondent registered and used the <statefarmbureau.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. The domain name is not confusingly similar to Complainant’s mark because it refers to a commonly used generic term to describe the collective of farm bureaus operating in each of the 50 states. Because Complainant’s “alleged” mark is descriptive or generic it has not enforceable trademark rights under the policy.
2. Respondent has rights and a legitimate interest in the domain name because it is using it as an advertising portal that provides access to a broad range of services.
3. Respondent did not register the domain name to interfere with Complainant’s business as Respondent is in the business to provide locator services.
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known insurance and financial services company. In connection with the provision of these services, Complainant has registered a number of trade and service marks including the STATE FARM mark, which has been registered with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 1,979,585 issued June 11, 1996).
Respondent registered the <statefarmbureau.com>
domain name
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 asserts rights in the STATE FARM mark through
registration with the USPTO. The Panel
finds that Complainant’s registration and extensive use of the STATE FARM mark
is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant contends that Respondent’s <statefarmbureau.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 generic term “bureau.” Contrary to the assertion of Respondent, numerous panels have found that the addition of a generic term to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). E.g., 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); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <statefarmbureau.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. 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”).
The Respondent is using its disputed domain name to resolve to a website that features links to various third party commercial websites. The Panel infers that Respondent is using the disputed domain name in order to collect referral fees for each misdirected Internet user. The Panel finds that Respondent’s 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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).
Furthermore, Complainant contends, and the record reflects, that Respondent is neither commonly known by the <statefarmbureau.com> domain name nor authorized to register domain names featuring Complainant’s STATE FARM mark in any way. Under such circumstances, the Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the disputed domain name to resolve to a
website featuring links to various other competing commercial websites within
the insurance and financial industry.
The Panel finds that such use of the disputed domain name evinces bad
faith registration and use under Policy ¶ 4(b)(iii). S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum
Furthermore, Respondent’s use of the <statefarmbureau.com> domain name
will likely cause confusion as to Complainant’s sponsorship of and affiliation
with the resulting website. The Panel
finds that such use of a domain name evinces Respondent’s bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution
Finally, Respondent has previously been the subject of
numerous adverse claims under the UDRP.
As such, the Panel finds that Respondent’s conduct amounts to a pattern
of registering confusingly similar domain names in an effort to prevent others
from reflecting their established marks in domain names. Such conduct amounts to bad faith
registration and use pursuant to Policy ¶ 4(b)(ii). See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat.
Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over
50 domain names that correspond to different well-known trademarks, evidence of
a pattern exists); see also Am.
Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmbureau.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 28, 2006
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