State Farm Mutual Automobile Insurance Company v. Domain Brand Protection / Domain Brand Protection Group LLC
Claim Number: FA1506001622008
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Domain Brand Protection / Domain Brand Protection Group LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1-800-statefarm.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.
On June 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <1-800-statefarm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@1-800-statefarm.com. Also on June 2, 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 July 13, 2015.
On July 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant states that Complainant is a nationally known company that has been doing business under the trademark STATE FARM since 1930.
In 1999, the Complainant opened a Federally Chartered Bank known as State Farm Bank. The Complainant engages in business in both the insurance and the financial services industry, and has also established a nationally recognized presence on televised and other media.
The Complainant has registered the STATE FARM trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). The trademark is used on or in connection with underwriting and servicing auto, homeowners, life and fire insurance. The disputed domain name <1-800-statefarm.com> is confusingly similar to the STATE FARM trademark because the domain name contains the entire trademark and adds the phrase “1-800-” along with the generic top-level domain (“gTLD”) “.com.”
The Respondent does not have rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the Respondent has failed to make an active use of the disputed domain name. Previously, the disputed domain name resolved to a website with the message, “Website Coming Soon.” Now, the disputed domain name resolves to an error page with no content. See Compl., at Attached Ex. 3.2.
The Respondent has engaged in bad faith registration and use.
The Complainant informs that Complainant on February 26, 2015, sent a cease and desist letter via email to the Respondent. On March 25, 2015, another cease and desist letter was sent to the Respondent via email; however, there was no response from the Respondent. On May 4, 2015 a final cease and desist letter was sent, along with a draft arbitration complaint.
B. Respondent
The Respondent’s Response consists solely of an email sent to the Forum in which Respondent states, “I hereby contest the allegations of the compliant.”
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,979,585 STATE FARM (word), registered on June 11, 1996 for services in Intl Class 36
- No. 4,211,626 STATE FARM (fig), registered on September 18, 2012 for services in Intl Class 36
- No. 4,227,731 STATE FARM (fig), registered on October 16, 2012 for services in Intl Class 36
- No. 2,319,867 STATE FARM BANK (word), registered on February 15, 2000 for services in Intl Class 36
- No. 4,211,628 STATE FARM BANK (fig), registered on September 18, 2012 for services in Intl Class 36
- No. 4,211,629 STATE FARM BANK (fig), registered on September 18, 2012 for services in Intl Class 36
- No. 2,444,342 STATEFARM.COM (word), registered on April 17, 2001 for services in Intl Class 36
- No. 2,444,341 STATEFARM.COM (word), registered on April 17, 2001 for services in Intl Class 38
- No. 2,450,890 STATEFARM.COM (word), registered on May 15, 2001 for services in Intl Class 42
- No. 1,125,010 STATE FARM INSURANCE (word), registered on September 11, 1979 for services in Intl Class 36
- No. 2,544,849 STATE FARM DOLLARS (word), registered on March 5, 2002 for services in Intl Class 35
- No. 3,878,512 STATE FARM RED MAGAZINE (word), registered on November 23, 2010 for goods in Intl Class 16
- No. 2,617,950 STATE FARM CATASTROPHE TEAM (word), registered on September 10, 2002 for services in Intl Class 36
- No. 3,891,810 STATE FARM GREEN SPACE (word), registered on December 21, 2010 for services in Intl Class 35
- No. 2,591,039 STATE FARM MUTUAL FUNDS (word), registered on July 9, 2002 for services in Intl Class 36
- No. 2,591,039 STATE FARM MUTUAL FUNDS (word), registered on July 9, 2002 for services in Intl Class 36
- No. 2,198,246 STATE FARM BAYOU CLASSIC (word), registered on October 20, 1998 for services in Intl Class 35
- No. 2,617,951 STATE FARM CATASTROPHE SERVICES (word), registered on September 10, 2002 for services in Intl Class 36
- No. 3,368,764 STATE FARM FEDERAL CREDIT UNION (fig), registered on January 15, 2008 for services in Intl Class 36
- No. 2,720,762 STATE FARM INSURANCE AND FINANCIAL REVIEW (word), registered on June 3, 2003 for services in Intl Class 36
- No. 3,368,928 STATE FARM LEARNING AND TEACHING EXCHANGE (word), registered on January 15, 2008 for services in Intl Class 41
- No. 3,997,978 STATE FARM NATION (word), registered on July 19, 2011 for services in Intl Class 42
- No. 4,068,699 STATE FARM NATION REWARDS (word), registered on December 6, 2011 for services in Intl Class 35
- No. 2,381,383 STATE FARM PREMIER SERVICE (word), registered on August 29, 2000 for services in Intl Class 36
- No. 2,381,236 STATE FARM PREMIER SERVICE (fig), registered on August 29, 2000 for services in Intl Class 36
The Complainant is also the owner REGISTERED STATE FARM trademarks in Canada, Mexico and the European Union.
The disputed domain <1-800-statefarm.com> was registered on February 12, 2015.
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.
The Complainant has registered the STATE FARM trademark with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996).
The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). 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.”).
The disputed domain name contains the entire trademark STATE FARM and adds the phrase “1-800-” along with the gTLD “.com.” As a general rule, making punctuation-related alterations (such as adding hyphens) and adding the gTLD “.com” can never distinguish a domain name from the trademark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Also, simply adding numbers to a domain name that contains the entire trademark at issue is not enough to avoid confusing similarity. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark).
In this case, “1-800-” is indicating a toll-free telephone number, these kind of numbers that are very common for businesses that want to provide potential customers and others with a “free” customer service or business information.
The addition of “1-800-” before the Complainant’s trademark only indicates that this relates to a free customer information service provided by the Complainant, thereby in fact extending the confusion.
Thus, the Panel finds that the <1-800-statefarm.com> domain name is confusingly similar to the STATE FARM trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
The Complainant asserts that the Respondent is not commonly known as the <1-800-statefarm.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the STATE FARM trademark in domain names. The Panel notes that “Domain Brand Protection” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that the Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, the Respondent cannot have rights or legitimate interests 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).
The Complainant argues that Respondent’s use of the <1-800-statefarm.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use, as the Respondent has failed to make any active use of <1-800-statefarm.com> . The Complainant notes that at one point the domain name resolved to a webpage with a message reading “Website coming soon.” Now, however, the resolving webpage contains only an error message. The Panel notes that the disputed domain name was registered on February 12, 2015. It is interesting to note that the initial passive use was to inform that activation to a web site is coming soon, but as the next step was to take that message away with no such activation. As found in prior cases, certain periods of non-use of a domain name cannot give the respondent rights under Policy ¶¶ 4(c)(i) or (iii). See, e.g., Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); c.f. Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name). In this case, the period is only five months, but the circumstances above in fact support the conclusion that the Respondent is passively holding the domain name, thereby supporting the conclusion that the Respondent lacks rights or legitimate interests in <1-800-statefarm.com>. Also, the Respondent has in fact replied to the Complaint, simply contesting the allegations, but with no arguments and/or evidence to show rights or legitimate interests.
While the Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
The Complainant argues that the Respondent has engaged in bad faith registration and use. Complainant alleges that Respondent must have had actual and/or constructive knowledge of the Complainant's rights in the STATE FARM trademark prior to registration of the <1-800-statefarm.com> domain name because of the Complainant's widespread use of the trademark and its trademark registrations with the USPTO.
While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that the Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). As stated above, the disputed domain name is created to clearly indicate that it is related to a toll-free customer service provided by the 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)."
The Panel accepts the Complainant’s argument regarding the Respondent’s alleged failure to actively use the <1-800-statefarm.com> domain name mentioned under Complainant’s Policy ¶ 4(a)(ii) argument supra, and the Panel thereforealso finds bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
As said, in this case, <1-800-statefarm.com> was initially and for a short time used to link to a web site informing “website coming soon!”, however thereafter this simple use disappeared. Again, the Respondent is only stating that he contest the allegations of the Compliant. The Panel make the conclusion that the disputed domain name was registered in bad faith and with the goal to be used to mislead the Complainant’s customers to believe that they has come to a customer service site provided by the Complainant. To use the domain name initially to show that such service is “coming soon!” and then delete that message, is of course negative for the Complainant, and the Panel cannot exclude the possibility that the Respondent by such use was planning to offer the Complainant the domain name for sale, for valuable consideration in excess of documented out-of pocket costs directly related to <1-800-statefarm.com> .
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1-800-statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 23, 2015
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