State Farm Mutual Automobile
This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (Rules). James A. Crary was selected to serve as the sole administrative panelist.
Domain Names: statefarmcatteam.com, statefarmhail.com, statefarmhailrepair.com, statefarmhailteam.com, statefarmsavings.com
Domain Name Registrar: Register.com, Inc.
Date of Domain Name Registration: (statefarmcatteam.com, statefarmhail.com, statefarmhailrepair.com and statefarmhailteam.com) January 31, 2000 (statefarmsavings.com) February 1, 2000
Date Administrative Proceeding Commenced: April 19, 2000
Date Response Due: May 9, 2000. (Response Filed.)
Relief Requested by Complainant: that the domain names be transferred to the Complainant.
Relief Requested by Respondent: that the complaint be dismissed.
The Complainant first began using the trademark “State Farm” in 1930. It was registered in the Unites States Patent and Trademark Office on June 11, 1996. Complainant has also registered various marks, which include the phrase STATE FARM, as well as various logos. It is also filed foreign trademark registrations in Canada, the European community and in Mexico.
The Complainant is a nationally known company that has been doing business under the name STATE FARM since 1930. It engages in business in both the insurance and financial services industries. As part of its insurance business, Complainant handles claims relating to automobile hail damage and hail repair. It established a national catastrophe team known as a “Cat Team” to handle hail and storm related claims in the United States and Canada. In 1999, the Claimant opened a federally chartered bank known as State Farm Bank, which offers savings and other deposit products to its customers.
For 70 years Complainant has spent substantial time, effort and funds to develop good will associated with the name STATE FARM.
Respondent is in the business of repairing damaged vehicles throughout the country, providing services to those who suffer vehicle damage as a result of catastrophic weather such as hail. Respondent markets its services to insurance customers including Complainant’s customers. Respondent has registered the disputed domain names as well as other domain names in connection with its marketing efforts.
The Complainant maintained that the disputed domain names all of which include STATE FARM are confusingly similar to the Complainant’s service mark that had been in use since 1930 and to Complainant’s other registered mark. It was further maintained that the Respondent had no right or legitimate interest in the disputed domain names. The Respondent was not associated with the Complainant, was not doing business under the domain names and was not commonly known under the domain name. According to the complaint, the Respondent had no right or legitimate interest in the disputed domain names.
Bad faith was alleged under the Anti-Cybersquatting Consumer Protection Act (15U.S.C §.1125(d). It was asserted that the registered domain names were a clear attempt to lead the public to believe that Respondent owned or was associated with State Farm Insurance Company and was therefore an attempt to confuse the public, and to trade off the goodwill of Complainant’s well-known name and trademarks. Respondent had failed to show legitimate use of the disputed domain names by not responding to the Complainant’s correspondence and E-mails.
Respondent was not using nor were there demonstratable preparations for use of the domain names in connection with the bona fide offering of goods or services. There was no legitimate content associated with the names and the failure to resolve the domain names into a legitimate website indicated Respondent lacked legitimate reason for having registered the names. The Respondent had registered not only the domain names in dispute but also other domain names without permission. Respondent was not known by the name “State Farm” nor had it traded under the name “State Farm”.
The complaint also maintained that there was bad faith in that Respondent had not registered any of the names in dispute with the Secretary of State in the states in which it did business.
With regard to statefarmsavings.com it was believed that the Respondent was not and had never been engaged in financial services or banking business. Registering a domain name for services Respondent didn’t offer showed bad faith. The registration of the name statefarmcatteam.com without permission of the Complainant constituted an inappropriate attempt to make association between Respondent and Complainant. Finally, the Complainant maintained that the Respondent knowing that the Complainant handled claims for hail damage and hail repair, registered domain names that incorporated the STATE FARM trademark. This was despite the fact that Respondent’s operations were known as “Bulldog, Inc.” and/or “Dent Dog”.
The Complainant sought transfer of the disputed domain names to Complainant.
The Respondent sought to have the complaint dismissed. It was in the business of repairing damaged vehicles and traveled throughout the country providing service to customers who suffer vehicle damage due to catastrophic weather such as hail. In connection with its business it attempted to market its services to Complainant’s customers as well as customers of other insurance companies.
The Respondent admitted acquiring the disputed domain names as well as the domain names of others as part of what it considered a legitimate business venture and not an act of bad faith. It denied acquisition of the disputed domain names was an attempt to tradeoff the good name of Respondent, but merely an attempt to advertise Respondent’s service of repairing hail-damaged vehicles. Respondent did not engage in the claims business and was not in competition with Complainant.
Respondent had developed a system that uses a special method of dent repair that allowed removal of the dent without damage to the paint. This process it was alleged resulted in a “50% savings”, which was passed on to customers.
Respondent maintained it was under no obligation to respond to cease and desist correspondence. Respondent admitted that it lacked an existing website but intended to resolve the domain names into a legitimate website “State Farm Savings”. The site would be launched “soon”.
It had acquired numerous domain names with the goal of making its services as marketable and easily accessible as possible. Respondent denied that it approached any company trying to sell the domain names. It was not in the business of domain name squatting.
The Respondent admitted that it did not register with every Secretary of State’s office since it would place an unreasonable financial burden on it. Respondent admitted that it was not in the banking business, however, since it had developed a process of dent repair, which reduced the cost sometimes as much as 50%, the domain name statefarmsavings.com reflected Respondent’s capacity to save the customer money. The Respondeat maintained this was legitimate advertising by promoting the idea of savings in an attempt to attract new customers.
Respondent admitted that it was aware of Complainant’s Cat Team. It was asserted, however, that since Respondent was not in the business of handling claims and Complainant was not in the business of repairing damage caused by severe weather conditions, therefore the domain name statefarmcatteam.com was an appropriate name with regard to Respondent’s legitimate business not an attempt to take business from the Complainant.
Respondent admitted that the Complainant handles claims for hail damage and hail repair. Complainant would “delegate” the duty of repair to independent repair shops. Respondent admitted it was not in the insurance claims business, but as part of its repair business it submitted claims for payment to insurance carriers. Its employees travel from area to area repairing hail damaged automobiles. The internet domain names were intended as another means for Respondent to advertise its repair business. Respondent denied bad faith and asked that the complaint be dismissed.
According to the Policy section 4(a), to be entitled to cancellation or transfer of a domain name, the Complainant must prove the disputed domain name:
(1) Is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(2) The 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 Policy at Section 4(b) set forth the circumstances, proof of which, support a finding of bad faith registration and use. These include circumstances indicating Respondent registered the domain name in order to prevent the owner of the mark or service mark from reflecting the mark in a corresponding domain name where Respondent engages in a pattern of such conduct. (Policy 4(b)(ii), and where Respondent by using the domain attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website…” (Policy 4(b)(iv).
Based upon a review of the compliant, supporting materials and the response, it was concluded that the Complainant had established the necessary elements to merit transfer of the disputed domain names to it by Respondent.
The Complainant is the holder of a registered trademark STATE FARM in the United States and other countries. The mark has been used in commerce for 70 years. The mark has become nationally known. The disputed domain names registered by Respondent all incorporate the STATE FARM mark. They are without doubt confusingly similar to the Complainant’s trademark STATE FARM. This established the first of the three elements necessary to the finding that the Respondent engaged in an abusive domain name registration.
There was no evidence on record that would indicate Respondent had any rights or legitimate interests in respect to the disputed domain names other than it registered the names. If mere registration of a domain name were sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests and no Complainant could succeed on a claim of abusive registration. The Policy was construed so as to avoid an illogical result. The Panel concluded that mere registration did not establish rights or legitimate interests in the disputed domain names.
Respondent asserts, that it intends to resolve the domain names into a website and that it recently finalized its development of the website “State Farm Savings” which it will launch “soon”. However, there was no supporting evidence to those assertions and these assertions were given very little weight. The Panel determined that the Respondent had no right or legitimate interest in the disputed domain names and thus Claimant established the second element necessary to prevail on its claim.
The Panel also concluded that Complainant proved registration and use in bad faith. Respondent’s registration of the disputed domain names all of which incorporated the “STATEFARM” mark as well as the marks associated with its CAT Team, and hail repair insurance claims business. The registration of the disputed names operated to prevent Complainant from reflecting its various marks into corresponding domain names.
Respondent admitted a pattern of domain name registrations, maintaining it was engaging in legitimate advertising. “Bulldog has acquired numerous domain names, including those in dispute.” “To reach as many customers as possible, Bulldog has marketed their services to State Farm customers, as well as other insurance customers.” (Attachment “A” Response) The Panel concluded that Respondent engaged in a pattern of abusive domain name registrations. (Poliy 4(b)(ii))
Clearly by registering the five disputed domain names, Respondent intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and of products and services offered on the website. The Respondent admitted in particular, being aware of Complainant’s Cat Team and of the fact that it handles claims for hail damage and hail repair. The disputed domain names clearly create the association, which was both, inappropriate and without permission that Respondent was legitimately connected with Complainant’s hail damage insurance and claims business. (Policy 4(b)(iv))
The Panel concluded that the evidence supported a finding that the Registration and use of the domain names was in bad faith within the meaning of 4(b)(ii) and 4(b)(iv) of the Policy. The Complainant proved bad faith registration and use, the final element necessary to establish an abusive domain name registration, and that Complainant was entitled to have the domain names transferred from Respondent.
DECISION AND ORDER
Based upon the above findings and conclusions, and pursuant to Rule 4(i) it is directed that the domain names, statefarmcatteam.com, statefarmhail.com, statefarmhailrepair.com, statefarmhailteam.com and statefarmsavings.com be transferred to the Complainant.
Dated: May 27, 2000 James Alan Crary, Arbitrator