State Fund Mutual Insurance Co. v. QTK
Internet/Name Proxy c/o Damian Macafee
Claim Number: FA0805001183176
PARTIES
Complainant is State Fund Mutual Insurance Co. (“Complainant”), represented by Peter G. Nikolai, of Nikolai &
Mersereau, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sfm.com>,
registered with Estdomains, Inc.
PANEL
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.
Diane Cabell, Esq., Terry F. Peppard, Esq., as Panelist, Prof. Darryl
C. Wilson as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 30, 2008; the National Arbitration Forum received a
hard copy of the Complaint on May 1, 2008.
On May 5, 2008, Estdomains, Inc. confirmed by e-mail to the National
Arbitration Forum that the <sfm.com>
domain name is registered with Estdomains, Inc. and that the Respondent is the
current registrant of the name.
Estdomains, Inc. has verified that Respondent is bound by the
Estdomains, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 27, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 16, 2008 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@sfm.com by e-mail.
On June 13, 2008, Respondent submitted a Request for Extension of Time
to Respond to the Complaint with the National
Arbitration Forum. Complainant submitted
its consent to the request on June 13, 2008.
The National Arbitration Forum granted Respondent’s request on June 16,
2008, setting a deadline of June 27, 2008 by which Respondent could file a
Response to the Complaint.
A timely Response was received and determined to be complete on June
27, 2008.
An Additional Submission was received from Complainant on July 3, 2008
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on July 8, 2008
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
On July 11, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Diane Cabell, Esq., Terry F. Peppard, Esq., and
Prof. Darryl C. Wilson (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that it has common law trademark rights in the
mark SFM based on use in commerce since at least 1997. Complainant further contends that Respondent’s
disputed registered domain name <sfm.com>
is identical to its mark and that Respondent has no rights or legitimate
interest in the domain name. Complainant
also asserts that Respondent registered and is using the disputed domain name in
bad faith.
B.
Respondent
Respondent contends that Complainant has no protectable trademark
rights of any type in the 3-letter combination SFM predating August 10, 2006,
which is more than 7 years after Respondent registered the disputed domain on
March 3, 1999. Respondent also contends
that it has a legitimate interest in the domain name and that there is no
evidence to support the assertion that the domain was registered or is being
used in bad faith. Respondent further
asserts that Complainant has engaged in reverse domain name hijacking since
Complainant knew of Respondent’s registration and use of the disputed domain
prior to establishing rights in the mark and filing the instant proceeding.
C. Additional Submissions
Complainant’s Additional Submission contended that Respondent’s answer
was “based on a single erroneous premise: that State Fund Mutual has no service
mark rights in the mark SFM for its worker’s compensation services.” Complainant also asserted that it referred to
itself by the SFM mark since 1996 on its own website and that the industry has
come to reference it by the SFM acronym. Complainant further contended that
Respondent’s use of the disputed domain’s website for advertising was bad faith
and that its registration was also in bad faith in light of the alleged
secondary meaning attributable to Complainant’s use of SFM at the time
Respondent registered the disputed domain. Complainant reiterated its contention that
Respondent had no legitimate interest in the disputed domain.
Respondent’s Additional Submission contended that Complainant’s use of
SFM as a short-hand reference for the company name did not establish trademark
rights and that the Complainant had not used SFM alone as trademark at any
time. Respondent further disputed
Complainant’s assertions regarding Respondent’s lack of legitimate interest in
the disputed domain. Respondent stated that it did not deny Complainant’s
rights in SFM as a service mark but only recognized those rights as arising via
Complainant’s registration in 2006 and only as part of the longer registered
mark SFM. THE WORK COMP EXPERTS.
FINDINGS
Complainant, State Fund Mutual Insurance
Company, began business in April 1984 and by 1991 had become
Respondent registered the disputed domain
name <sfm.com> on March 3,
1999 and has used it continuously since that time. Respondent currently uses the website for
advertising, but none of the advertising is for goods or services in
competition with Complainant. At the
time of Respondent’s registration Complainant was known as State Fund Mutual
Companies and had not used SFM as a common law or registered mark in
conjunction with its services. Complainant
states that it “has demonstrated that it has referred to itself in its
promotional literature as SFM since at least 1997” and that since 1996 it
referred to itself as SFM on its website, but Complainant’s use in these cases
has been in conjunction with or as a shorthand reference to its common law design
and word mark, State Fund Mutual Companies.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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.
In April 2006, Complainant filed an
application to register the mark SFM. THE WORK COMP EXPERTS claiming a date of
first use in commerce of August 10, 2006. When the registration issued Complainant
announced at that time that the company was changing its name from State Fund
Mutual Companies to SFM. Complainant had
previously referred to itself on a sporadic and limited basis as SFM in
conjunction with the company name since 1996. Complainant asserts common law rights to the
mark SFM based on this limited use but has offered no evidence of prior
registration, secondary meaning, or even trademark usage of the three-letter
combination.
Complainant lacks sufficient evidence to demonstrate
common law rights in SFM as a mark under Policy ¶ 4(a)(i). See Molecular Nutrition, Inc. v.
Network News & Publ’ns, FA 156715
(Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to
establish common law rights in its mark because mere assertions of such rights
are insufficient without accompanying evidence to demonstrate that the public
identifies the complainant’s mark exclusively or primarily with the
complainant’s products); see also Ming v. Evergreen Sports, Inc.,
FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer
knowledge are not an adequate form of evidence to establish secondary meaning
in a name.”).
Respondent’s registration of the disputed domain predates any verifiable usage of SFM as a mark. Although Complainant contends to have used SFM as early as 1996, claiming that SFM has “become a distinctive identifier” and that they only registered and changed the company name to reflect how they were known in the industry, no evidence in support of these contentions has been offered aside from Complainant’s own statements. Although Complainant chose to register <sfmic.com> as its domain name in 1996 as opposed to <sfm.com>, this registration certainly conferred no exclusive rights to SFM at the time. Respondent’s registration of <sfm.com> in 1999 clearly predates Complainant’s 2006 registration incorporating the SFM three-letter combination. This is further proof of Complainant’s lack of enforceable rights in the mark. See Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent's domain name registration predated the complainant’s rights in its mark by nearly two years); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).
Since Complainant has no
enforceable rights in the mark SFM, Complainant cannot show that Respondent’s disputed
domain is identical or confusingly similar to its mark as required under Policy
¶ 4(a)(i). Further,
because Complainant has failed to satisfy this element of the Policy the Panel
finds it unnecessary to analyze the other two elements of the Policy. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because the complainant must prove all three elements
under the Policy, the complainant’s failure to prove one of the elements makes
further inquiry into the remaining element unnecessary); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into
the respondent’s rights or legitimate interests or its registration and use in
bad faith where the complainant could not satisfy the requirements of Policy ¶
4(a)(i)).
See above.
See above.
Reverse
Domain Name Hijacking
Complainant has engaged in Reverse Domain
Name Hijacking. Complainant withheld
information in its Complaint regarding its registered service mark
incorporating SFM. Complainant failed to
provide any support for its assertions of protectable rights in the mark SFM
prior to its 2006 registration of the mark in conjunction with other terms for
service mark purposes. This registration
postdated Respondent’s 1999 domain name registration by several years and as
such should have indicated to Complainant that there was no legitimate basis
for filing the instant UDRP proceeding. See Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding
that when the complainant knows it has no rights in the mark but brings a
complaint despite this fact, the complainant has acted in bad faith and
attempted Reverse Domain Name Hijacking which constitutes an abuse of the
administrative proceeding); see also G.A. Modefine S.A. v. A.R. Mani,
D2001-0537 (WIPO July 20, 2001) (finding that the complainant, by omitting
several relevant facts that would have undermined its position, had brought the
complaint in bad faith, which constituted an abuse of the administrative
proceeding).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Panel also finds that Complainant has engaged in abuse of the UDRP
process by engaging in Reverse Domain Name Hijacking.
Diane Cabell, Esq., Terry F. Peppard, Esq.,
Panelist, Prof. Darryl C. Wilson, Chair,
Dated: July 25, 2008
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