State Farm Mutual Automobile Insurance Company v. Robert Wiley / statefarmagentprinting.com
Claim Number: FA1701001711938
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Robert Wiley / statefarmagentprinting.com (“Respondent”), represented by William S. Richmond of Platt Cheema Richmond PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmagentprinting.com>, registered with 1&1 Internet SE.
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 Panelist in this proceeding.
Hon. Sir Ian Barker QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 11, 2017.
On January 13, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <statefarmagentprinting.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017 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@statefarmagentprinting.com. Also on January 16, 2017, 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 February 6, 2017. Respondent sent an email to the Forum on February 7, 2017 stating that the website accessed by the disputed domain name had been disabled/taken down but expressing the wish to keep the disputed domain name which Respondent claims as his property.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on February 10, 2017.
On February 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon Sir Ian Barker QC 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 is a nationally-known company in insurance and financial services which has been in business since 1930 using the mark “STATE FARM”.
The trademark “STATE FARM” was first registered with the United States Patent & Trademark Office on June 11, 1996. Complainant has also registered other United States trademarks which incorporate the words “State Farm”. It has trademark registrations in both Canada and Mexico for “STATE FARM” and other marks which include the words “State Farm”.
Complainant began using the domain name <statefarm.com> on May 24, 1995. On the website is found detailed information about Complainant’s business and products as well as information for consumers and about Complainant’s independent agents.
Complainant has spent considerable money and effort in promoting its “State Farm” brand, trademarks and website.
Respondent registered the disputed domain name on March 28, 2016. At the date of filing of the complaint, the disputed domain name resolved to a web-page marketing Respondent’s promotional materials.
Complainant gave Respondent no authority of any kind to reflect its “STATE FARM” trademark in the disputed domain name.
Complainant sent “cease and desist” letters to Respondent on April 12, 2016, May 2, 2016 and August 24, 2016. With the last letter was sent a draft arbitration complaint.
Complainant claims that the disputed domain name is confusingly similar to its registered trademarks. The generic addition of the words “agent” and “printing” do not extinguish the confusing similarity.
Respondent does not have any rights or legitimate interests in the disputed domain name and does not qualify for any of the situations envisaged by paragraph 4(c) of the Policy.
Respondent registered and is using the disputed domain name in bad faith. His only reason for registering the disputed domain name could be to trade on Complainant’s goodwill in the name “State Farm” and to suggest for Respondent’s commercial gain some sort of affiliation by Respondent with Complainant which would confuse Internet users.
Complainant must have known of Complainant’s business and trademark when registering the disputed domain name and therefore acted in bad faith.
B. Respondent
Respondent owns a small printing business specializing in business cards. He operates a website through the domain name <thinkwithink.com> which reflects the goods and services he offers. Respondent has provided numerous business cards to insurance agents, including those of Complainant. He is offering bona fide goods and services. He does not wish to divert consumers from Complainant nor to tarnish Complainant’s trademarks.
Respondent has rights in that the disputed domain name which refers to an industry (printing) different from Complainant’s industry (insurance).
Respondent did not register and does not use the disputed domain name in bad faith. He had no intention of registering the disputed domain name a) for the purpose of selling or otherwise disposing of it or b) to prevent Complainant from reflecting its trademark in a corresponding domain name or c) to disrupt the business of a competitor.
Upon receipt of the complaint, Respondent removed the web content associated with the disputed domain name “as a demonstration of good faith and to allow for this proceeding to move forward without delay or complication”.
C. Complainant’s Additional Submission
Respondent failed to rebut the allegation that the disputed domain name is confusingly similar to Complainant’s trademark. Respondent relied upon a different website accessed by a different domain name which is not in issue. Respondent’s website accessed by the disputed domain name does not show any products for sale and does not resemble Respondent’s other website <thinkinink.com>. The logo at the top of the resolving page reads <FarmersAgentPrinting.com> suggesting an affiliation with a competitor of Complainant.
The only reason that Respondent could have had in registering the disputed domain name was to trade off the goodwill of the “STATE FARM” mark. The disputed domain name suggests an affiliation with Complainant and thus could confuse Internet users. Respondent must have had actual knowledge of Complainant because he stated that he had supplied business cards to insurance agents including Complainant’s agents.
D. Respondent’s letter of February 7, 2017
Respondent stated that the website had been disabled/taken down: that Complainant does not have a trademark for the disputed domain name and therefore he has not infringed any property rights: “We never intended to use the domain without getting permission from State Farm Insurance. We intended to meet with them and build a website for the purpose of helping their company. There was no malicious intent.”
(a) The disputed domain name is confusingly similar to Complainant’s registered trademark.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
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 disputed domain name must be regarded as confusingly similar to Complainant’s registered mark “STATE FARM”. The whole wording of the trademark is incorporated in the disputed domain name. The additional words “agent” and “printing” are generic and do not distinguish the disputed domain name from the trademark sufficiently. See Microsoft Corporation v Thong Tran Thanh, FA1653187 (FORUM January 21, 2016).
The word “agent” has long been associated with insurance – much of which is procured through agents of an insurer. Most insurance agents would have business cards bearing the trademarked name of their principal. The use of the word “agent” exacerbates the confusing similarity.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Complainant gave Respondent no authority of any kind to reflect its trademark in a disputed domain name. Respondent does not contend otherwise. Consequently, the burden shifts to Respondent to show that he comes within one of the situations by paragraph 4(c) of the Policy.
The only one of those situations approximating to Respondent’s case is where a Respondent is making a bona fide offering of goods or services. See paragraph 4(c)(i) of the Policy.
It cannot be said that the offering of goods and services is bona fide in that Respondent is using a domain name which is confusingly similar to Complainant’s trademark, to sell business cards to agents of Complainant which cards must necessarily bear the trademarked name of Complainant.
Respondent cannot avail himself of paragraph 4(c)(iii) which refers to a “legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert customers or tarnish the trademark or service mark at issue”. Respondent’s use is clearly commercial in that he wishes to sell business cards to agents of Complainant.
Paragraph 4(a)(ii) of the Policy is satisfied.
The inference of bad faith registration is compelling. The very name of the disputed domain shows that Respondent must have known of Complainant and its trademark. He claims that he never intended to use the disputed domain name without Complainant’s written permission, which he did not obtain – let alone seek. He also has provided cards in the past for Complainant’s agents.
Contrary to Policy paragraph 4(b)(iv) Respondent’s website must have attracted Internet users for commercial gain. He must be taken to have registered and used the disputed domain name with knowledge of Complainant’s rights in its trademark (see Policy paragraph 4(a)(ii)).
Respondent’s failure to respond adequately to “cease and desist” letters is also a factor in pointing towards and finding of bad faith.
Paragraph 4(a)(iii) of the Policy is 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 <statefarmagentprinting.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Sir Ian Barker QC, Panelist
Dated: February 22, 2017
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