State Farm Mutual Automobile
Insurance Company v. Greg Cook
Claim Number: FA0703000932815
PARTIES
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 <statefarmhome.com>, registered with Go Daddy
Software, 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.
P-E H
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 6, 2007.
On March 6, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <statefarmhome.com> domain name is
registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 8,
The National Arbitration Forum did not receive a hard copy of the
Response until March 29, 2007, after the deadline for Response. Therefore, the National Arbitration Forum
considers the Response to be deficient according to Supplemental Rule 5(a).
On March 30, 2007, Respondent sent an e-mail to the National
Arbitration Forum, explaining why the hard copy of the Response was close to
one hour late, namely because of technical problems with Respondent’s fax
machine.
Ruling a Response inadmissible because of formal deficiencies is
an extreme remedy. In this case, the
Panel considers the Response to meet all other applicable requirements
stipulated in ICANN Rule 5. According to
ICANN Rule 10(b), the Panel shall ensure that the Parties are treated with
equality and that each Party is given a fair opportunity to present its case. It is the opinion of the Panel that it would
be unfair not to accept and consider the Response in this case. See
Metro. Life Ins. Co. v. Secure Whois Information Service, FA 910715
(Nat. Arb. Forum Mar. 16, 2007) (deeming
any procedural deficiencies to be inconsequential and deciding to consider the
response, which was only received in hard copy before the deadline).
On April 4, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr. P-E H
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that it is a nationally known company that has been
doing business under the name “State Farm” since 1930. Complainant registered
the mark STATE FARM INSURANCE in 1979 and STATE FARM in 1996.
Complainant has, for over 70 years, expended substantial time, effort and funds to develop the goodwill associated with the name “State Farm” and does not allow unauthorized parties to use its marks as part of their Internet domain names.
Complainant developed its web presence in 1995 using the domain name <statefarm.com> and has expanded substantial time, effort and funds to develop its website as a primary source of Internet information for the products, services and information provided by Complainant.
In December 2006, it was brought to Complainant’s attention that Respondent utilized a privacy service, Domains By Proxy (DBP), to register the disputed domain name, which includes Complainant’s trademark State Farm. The domain name sends a person to a web page that indicates it is parked free courtesy of GoDaddy.com. The page contains “Sponsored Links,” which includes numerous links for various insurance products and companies in direct competition with Complainant (a printout from the site is provided as Annex 3 of the Complaint).
Complainant sent a cease and desist letter on December 7, 2006 and received a reply from Respondent indicating that the registration of the disputed domain name was legal and non-infringing and that Respondent would retain ownership of the domain name in question.
Complainant argues that the State Farm mark is distinctive and has acquired a secondary meaning. The domain name is confusingly similar to the trademark and consumers who discover <statefarmhome.com> are likely to be confused as to Respondent's affiliation with, sponsorship by or connection to Complainant.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not associated with, affiliated with or sponsored by Complainant, who has not authorized Respondent to register the domain name. Respondent is not commonly known under the domain name.
Complainant concludes that Respondent registered the name to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with Complainant and/or to create initial interest confusion for individuals looking for information about Complainant.
Complainant has filed numerous complaints relating to its domain names under the ICANN Uniform Domain Name Dispute Resolution Policy. The arbitrators have consistently found that the use of Complainant’s trademarks in a domain name, whether or not additional language, characters or hyphens are added, is confusingly similar to Complainant’s trademarks and that such registrations have been done in bad faith. Complainant refers to a number of those cases in the Complaint, such as State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc., FA 94662 (Nat. Arb. Forum June 8, 2000); State Farm Mut. Auto. Ins. Co. v. I & B, FA 94719 (Nat. Arb. Forum June 8, 2000); State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA 94663 (Nat. Arb. Forum June 1, 2000); State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA 94802 (Nat. Arb. Forum June 13, 2000); and State Farm Mut. Auto. Ins. Co. v. HPR, FA 94829 (Nat. Arb. Forum June 22, 2000.)
B. Respondent
Respondent denies most of Complainant’s accusations.
Respondent argues that the disputed domain name is not confusingly similar to Complainant’s mark, as Complainant let a previous registration of the <statefarmhome.com> domain name (created May 28, 2005) expire after just one year of registration (Domain History for <statefarmhome.com> attached to the Response as Annex 2). Respondent concludes that Complainant’s action of having no interest in the domain name and of letting the same expire demonstrated the domain name was not confusing enough to be similar to their trademark or service mark.
When search engines employ the
words “state farm home,” over 30 million sites are generated, the majority of
which have nothing to do with Complainant.
Respondent further argues that the domain name is not confusingly
similar to a trademark, as the domain name is used by individual “State”(s) of
the
Respondent claims to have rights or
legitimate interests in the <statefarmhome.com> doamin name, as Complainant
showed no interest in renewing the same. Respondent admits not being known by the
domain name, but informs that he “may
seek to use the domain name to provide goods or services completely unrelated
to insurance.” Respondent registered
the <statefarmhome.com> domain name because it is
easy to remember.
Respondent denies having registered or used the domain name in bad faith, referring to that the disputed domain name is not in use but only currently parked free courtesy of GoDaddy.com. Respondent states that he has no control of the content of the connecting site.
Respondent further denies having used the DBP service to hide personal information in order to prevent Complainant to find out the real registrant. Respondent claims to have used DBP in order to prevent spam and identity theft, the same service used for Respondent’s other three domain names.
Finally, Respondent argues that Complainant’s communications with the Registrar, DBP and Respondent are actions of harassment and discrimination, which has caused Respondent mental and physical distress.
FINDINGS
Complainant
engages in business in the insurance and financial services industry and has
been performing its business under the “State Farm” brand since 1930. Complainant is owner of several registered trademarks,
including but not limited to STATE FARM (registered in 1996), STATE FARM BANK
and STATE FARM INSURANCE (registered in 1979) in
Respondent
registered the disputed domain name on November 9, 2006. Respondent therewith utilized a privacy
service called Domains By Proxy (“DBP”). On December 7, 2006, Complainant sent a cease
and desist letter to Respondent’s DBP-address.
On December 21, 2006, Respondent replied and indicated that the domain
name was registered in compliance with the law and that Respondent would retain
ownership of the <statefarmhome.com> domain name.
No specific information is provided regarding Respondent’s business.
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 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;
(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 established rights
in the STATE FARM trademark in the
Respondent’s domain name
registration <statefarmhome.com> incorporates Complainant’s mark STATE FARM, in combination
with the generic word “home,” which offline generally is a word for a place
where someone lives, however online—and especially in connection with a domain
name—also typically indicates the “home page” for a certain company. In the present case the word “home” may
however also refer to Complainant’s homeowners insurance services.
The mere addition of generic terms to a mark is insufficient to
distinguish Respondent’s domain name from Complainant’s mark. See Arthur Guinness Son & Co. (
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to distinguish the
domain name from Complainant’s mark.
Accordingly, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s STATE FARM trademark. Policy ¶
4(a)(i) has been satisfied.
Complainant’s assertion that 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 Document Tech.,
Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes out
a prima facie showing, the burden of production on this factor shifts to
the Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Respondent admits not being known by the domain name at issue. See 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 is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Respondent claims to have rights or
legitimate interests in the <statefarmhome.com> domain name, as Complainant
showed no interest in renewing the same. However, just because a certain domain name is
available for someone to register, it does not automatically mean that the registrant
has rights or legitimate interests in the same. Respondent has not revealed any specific plans
for the <statefarmhome.com>
domain name, other than that he “may
seek to use the domain name to provide goods or services completely unrelated
to insurance.” Respondent informed
that he registered the disputed domain name because it is easy to remember, which, again, does not
constitute any rights or legitimate interest per se.
Respondent claims that the <statefarmhome.com> domain name is parked free with the registrar, GoDaddy, and that Respondent is not responsible for the competing links displayed on the website. The Panel notes that Respondent has not introduced any evidence of its lack of control, such as by introduction of its agreement with the service provider. Even if Respondent were able to establish such lack of control, the Panel would still find Respondent responsible for these links because it is Respondent who has authorized the service provider to use the domain name at issue. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nat. Arb. Forum Nov. 30, 2006) (“Respondent cannot duck its responsibility for the site by saying that others choose the content. Passive holding of a domain name is neither evidence of or against bad faith, and must be evaluated in light of all of the circumstances relating to the domain name.”).
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
Complainant argues that Respondent knew or should have known (“actual or constructive knowledge”) of Complainant’s trademark STATE FARM, and therefore Respondent registered and used the domain name in bad faith. Registration of a domain name that is confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
According to Respondent, when search engines employ the words “state farm home”, “over 30 million sites are generated, the majority of which have nothing to do with the Complainant.” The Panel notes that “State Farm” is a nationwide insurance company, with homeowners insurance among its services. A search for “State Farm Home” conducted by the Panel at the search engine Google reveals a great number of hits/links related to Complainant, and the first ten hits are directly related to Complainant’s web site at www.statefarm.com and/or to other sites describing Complainant’s services.
It is also noted by the Panel that Respondent dedicates a lengthy part of his Response to the fact that the disputed domain name used to be held by Complainant (a fact not mentioned at all in the Complaint). Respondent refers the abandonment of the domain name as evidence proving that the disputed domain name is not confusingly similar to Complainant’s mark. The Panel is not convinced by that argument. Rather, the information provided by Respondent on this issue may well be an indication of Respondent’s knowledge of Complainant’s trademarks and domain name prior to Respondent’s registration of the <statefarmhome.com> domain name.
Complainant alleges that Respondent is
attempting to disrupt Complainant’s business by displaying links to
Complainant’s competitors at Respondent’s confusingly similar domain name. As noted above, the Panel finds Respondent
responsible for these links because it is Respondent who has authorized the
service provider to use the domain name at issue. Therefore, by redirecting Internet users seeking Complainant’s financial and
insurance services to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). 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)).
The Panel concludes that Respondent registered and has been using the disputed domain name in bad
faith.
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 <statefarmhome.com> domain name be TRANSFERRED
from Respondent to Complainant.
Mr. P-E H
Dated: April 18, 2007
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