State Farm Mutual Automobile Insurance Company v. Peter Ekstrom
Claim Number: FA1507001627244
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Peter Ekstrom (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldcallsforstatefarm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panellist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2015; the Forum received payment on July 2, 2015.
On July 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goldcallsforstatefarm.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 July 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@goldcallsforstatefarm.com. Also on July 6, 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.
The Forum received Respondent’s timely Response on July 21, 2015.
On July 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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's contentions can be summarised as follows:
Complainant has been doing business under the name STATE FARM since 1930. It operates in the insurance and financial services industry. It is the owner of a number of trade mark registrations in the US and Canada including its mark STATE FARM.
Complainant’s web site is established at statefarm.com registered in 1995.
The STATE FARM mark is distinctive. The Domain Name is confusingly similar to the STATE FARM mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not associated with Complainant in any way. Complainant did not authorise Respondent to register the Domain Name or to use the STATE FARM trade mark. Respondent is not commonly known by the Domain Name. Respondent does not possess any intellectual property rights in the STATE FARM name.
The Domain Name registered on March 20, 2015 initially resolved to a web page for Gold Call Scripts. After receipt of the cease and desist it now resolves to a parked web page which states 'Website Coming Soon.' Respondent registered the Domain Name to create the impression of association with Complainant, to trade off the goodwill of Complainant’s mark and/or to create initial interest confusion for individuals looking for information about Complainant.
Failure to use the Domain Name since receipt of the cease and desist indicates Respondent has no legitimate reason for having registered the name.
B. Respondent
Respondent sent a short e mail which said it should be regarded as the official response from Respondent. It simply stated that the Domain Name was not in use and so Respondent had complied with the Cease and Desist letter received from Complainant.
Complainant has been doing business under the name STATE FARM since 1930. It operates in the insurance and financial services industry. It is the owner of a number of trade mark registrations in the US and Canada including STATE FARM.
The Domain Name registered on March 20, 2015 initially resolved to a web page for Gold Call Scripts. After receipt of the cease and desist it now resolves to a parked web page which states 'Website Coming Soon.'
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.
Identical or Confusingly Similar
The Domain Name consists of Complainant's STATE FARM registered mark, the generic financial phrase 'goldcallsfor' and the gTLD .com.
See Disney Enter. v Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alternations to Complainant’s DISNEY mark in finestdisneyhomes.com were insufficient to differentiate the domain name from the mark).
The gTLD .com does not serve to distinguish the Domain Name from the STATE FARM mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. Complainant contends that the site is set up for commercial benefit to compete with Complainant using the latter's intellectual property rights to make a profit.
Respondent has used the site to promote goods and services in competition with those of Complainant. It uses Complainant's trade mark and does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) finding that Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panellist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Complainant also alleges that Respondent's use of the site is commercial and he is using it to make profit from using a web site which competes with Complainant in a confusing manner. As held above the Panel believes that the use is confusing in that visitors to the site might reasonably believe it is connected to or approved by Complainant offering financial services under a Domain Name which contains Complainant’s trade mark.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goldcallsforstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: August 12, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page