State Farm Mutual Automobile Insurance Company v. Leading Points Corporation
Claim Number: FA2108001958063
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Leading Points Corporation (“Respondent”), represented by David N. Schachter of SchachterLaw, PC, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmmilitary.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2021; the Forum received payment on August 4, 2021.
On August 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmmilitary.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 August 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2021 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@statefarmmilitary.com. Also on August 5, 2021, 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 August 30, 2021.
On August 30, 2021 Complainant filed Additional Submissions which have been admitted.
On September 8 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the STATE FARM trademark and service mark described below and submits that it has continuously used the mark in commerce since 1930 and has maintained an Internet presence since 1995 with its website to which its domain name <statefarm.com> resolves.
Complainant submits that the disputed domain name <statefarmmilitary.com> is confusingly similar to its distinctive STATE FARM mark arguing that the combination of the elements can only bring to mind Complainant’s mark.
Complainant argues that generally, the addition of a related term or a generic term to a domain name is not sufficient to distinguish the disputed domain from a complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent has no right or legitimate interest in the disputed domain name, arguing that Respondent is not associated with, affiliated to or sponsored by Complainant; that Complainant did not authorize Respondent to register the disputed domain name or to use the STATE FARM trademark for the Respondent’s business purposes; and that Complainant does not have a contractual arrangement with Respondent that would permit the offering of services under the STATE FARM name.
Complainant also contends that Respondent is not commonly known by the disputed domain name <statefarmmilitary.com>, adding that it is believed that Respondent has never been known by or performed business under the disputed domain name and does not possess independent intellectual property rights in the name.
Complainant further argues that Respondent is not using, nor are there any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content on the website associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming.
Complainant contends that even if Respondent did put information on its website, its content along with the proposed domain name, would be in direct conflict with information Complainant already provided on its own website and would cause confusion to potential customers.
Complainant asserts that failure to use the disputed domain name to resolve to a website with legitimate content indicates that Respondent has no legitimate reason for having registered the disputed domain name and demonstrates that it has been registered and is being used in bad faith. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)
Complainant further alleges that Respondent registered the disputed domain name in bad faith to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the STATE FARM name; and/or to create initial interest confusion for individuals looking for information about Complainant; and to generate business for Respondent in direct conflict with Complainant’s interest.
Complainant notes that the disputed domain name was recently registered on May 17, 2021, whereas Complainant registered its own domain name <statefarm.com> on May 24, 1995 and it is contended that therefore Respondent knew or should have known of Complainant’s long-term use of the STATE FARM mark and the <statefarm.com> domain name.
Complainant refers to a screen capture of the website to which the disputed domain name resolves which is a parked web page with click through links, which it argues is evidence that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the site or location.
Complainant states that it sent a cease-and-desist letter to Respondent but received no response. Complainant argues that Respondent’s failure to respond with legitimate information for use or intention to use the name and then failure to comply with Complainant’s cease and desist request demonstrates it has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent does not dispute Complainant’s rights in the STATE FARM mark.
Respondent submits that it was founded in 2008 by its president, a retired U.S. Army officer, to give back to those who have served their country in the military by offering them benefits on a wide variety of goods and services including discounts and rebates on purchases and making golf reservations, through negotiated partnerships with various vendors and providers. Respondent has established a website on which users can authenticate their military service to become members of the virtual communities created by Respondent.
Respondent states that it has registered a number of Internet domain names which include well-known trademarks but uses them only with the express consent and permission of the respective trademark owners.
In the present case Respondent registered the disputed domain name with the same intent, to hold it in preparation for a possible sponsored partnership with Complainant in the future. In the absence of such consent Respondent intended to simply leave the disputed domain name dormant.
Respondent states that it did not arrange for the Registrar’s parking page to which the disputed domain name resolves to be populated with re-direct links to third parties, and states that these were created without Respondent’s knowledge or consent. When Respondent became aware of these links it requested the Registrar to remove them but was informed that this could not be done because the disputed domain name was frozen because of the institution of these proceedings. Respondent has submitted in evidence copies of email correspondence commencing on August 19, 2021 to verify this assertion.
Respondent accepts that a respondent cannot disclaim responsibility for links appearing on a website associated with a domain name in issue, but adds that previous panels have found positive efforts by the respondent to avoid links which target the complainant’s mark to be a mitigating factor in assessing bad faith. See MD Od-online, Inc., v. Yenta Marketing, Inc., WIPO Case No. D22014-1468
Respondent denies that it intended to capitalize on Complainant’s trademark in bad faith and adds that a finding of bad faith use should not be found merely by the fact that the disputed domain name resolves to click-through links implemented by the Registrar. Respondent asserts that it cannot currently rectify this because of the hold placed on the disputed domain name upon Complainant’s initiation of this present proceeding and alleges that this “Catch-22” is the fault of Complainant bringing this proceeding, not Respondent.
Respondent submits that the most effective solution of this proceeding would be for this Panel to order the Registrar to remove the links or to close this proceeding so that Respondent could take up the matter directly with the Registrar.
C. Additional Submissions
In Additional Submissions, Complainant submits that previous arbitration panels have held that the holding of an inactive disputed domain name does not qualify as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA933276 (Forum April 25, 2007) (finding that the Respondent had no rights or legitimate interests in a domain name under either Policy 4(c)(i) or Policy 4(c)(iii) where it failed to make any active use of the domain name).
Complainant adds that Respondent’s use of the disputed domain name constitutes bad faith registration and use in that the disputed domain name resolves to an inactive website. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum February 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).
Complainant is a Federally Chartered Bank known as State Farm Bank and is the owner of the STATE FARM trademark and service mark for which it owns the following registrations:
· United States federal service mark, STATE FARM (design) registration number 4,211, 626, registered on the Principal Register on September 18, 2012 for services in international class 36;
· United States federal service mark, STATE FARM (design) registration number 4,227,731, registered on the Principal Register on October 16, 2012 for services in international class 36;
· United States federal service mark, STATE FARM, registration number 5,271,354, registered on the Principal Register on August 22, 2017 for services in international class 36.
Additionally, Complainant owns a number of service mark registrations for the marks that incorporate the element STATE FARM together with other descriptive elements such as
· United States federal service mark, STATE FARM NEIGHBORHOOD ASSIST, registration number 4,407,111, registered on the Principal Register on September 24, 2013 for services in international class 36.
Complainant has an established Internet presence since 1995, using the domain name <statefarm.com> as the address of its website.
The disputed domain name was registered on May 17, 2021 and resolves to the Registrar’s parked page with links to third party websites.
Respondent is a corporation established by its president, a retired U.S. Army officer, to provide service veterans with benefits and discounts on a wide variety of goods and services.
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.
Respondent accepts that Complainant has rights in the STATE FARM trademark.
The disputed domain name <statefarmmilitary.com> consists of Complainant’s trademark, the word “military” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s STATE FARM mark is the initial, dominant and only distinctive element of the disputed domain name. The word “military” is generic and the gTLD <.com> extension would be understood by Internet users to be a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the STATE FARM mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
It is well established that mere registration of a domain name does not in itself create rights or legitimate interests for the registrant.
In this case Respondent admits to holding the disputed domain name dormant, resolving to a parked web page.
It is not suggested that the links to third-parties on the Registrar’s parking page creates any rights or legitimate interests for Respondent and in fact Respondent dissociates itself from those links.
Respondent’s stated intended purpose for registering the disputed domain name was to passively hold it pending some future partnership with Complainant. Complainant has denied that any relationship exists between it and Respondent and it is not suggested anywhere in the record that there has been any communications with Complainant to discuss possible collaboration in the past or in the future.
Respondent is not known by the disputed domain name. Complainant has not given permission or license to Respondent to register or use its STATE FARM mark or the disputed domain name.
In these circumstances, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Respondent denies that the disputed domain name was registered and is being used in bad faith, while it admits that the disputed domain name was registered with actual knowledge of Complainant, its name, mark and reputation.
It is clear from the Response, that Respondent registered the disputed domain name, knowing and intending that Internet users would perceive that the STATE FARM element is a reference to Complainant, its mark and goodwill.
Respondent’s stated intention at the time of registration, was to use the disputed domain name at some future date in collaboration with Complainant, and asserts that in the meantime the intention is to passively hold the disputed domain name and not to put it to any active use without the prior consent of Complainant.
Notwithstanding Respondent’s denial of any harmful intent or bad faith registration and use of the disputed domain name, it appears that no effort was made to contact Complainant, either in advance of the registration of the disputed domain name, or since, proposing any collaboration. Such lack of communication, including Respondent’s failure to respond to Complainant’s cease-and-desist letter does not reflect the actions of an enterprise wishing to enter into a partnership or create a business collaboration.
Furthermore, Respondent failed to take care to ensure that the disputed domain name was not being used to attract and divert Internet traffic to third-party websites though links to on the parking page to which it resolves.
Regardless of Respondent’s intention, Respondent had no right to register the disputed domain name which intentionally incorporates Complainant’s trademark without permission or consent.
Respondent appears to have misunderstand its rights and entitlements and continues to mistakenly believe that it was entitled to register and passively hold a domain name in such circumstances.
Furthermore, while Respondent may well have intended no harm by parking the domain name on the Registrar’s parking page, the Response shows that Respondent has no appreciation of the harmful effect of its actions and omissions on Complainant, its business and reputation.
Additionally Respondent fails to appreciate that the suggestion that the disputed domain name be passively held into the future if Complainant does not collaborate with Respondent, is indicative of an attempt to pressurize Complainant.
Furthermore Respondent’s argument that Complainant bears responsibility for the consequences of the disputed domain name registration being frozen, shows a total lack of insight into Respondent’s actions and their consequences.
In these circumstances this Panel must find that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmmilitary.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 10, 2021
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