State Farm Mutual Automobile Insurance Company v. David Robertson
Claim Number: FA1203001435410
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is David Robertson (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <callstatefarm.com> (“the Domain Name”), registered with GoDaddy Software, Inc..
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.
Clive Lincoln Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2012; the National Arbitration Forum received payment on March 20, 2012.
On March 21, 2012, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the name. GoDaddy Software, Inc. has verified that Respondent is bound by the GoDaddy Software, Inc. 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2012 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@callstatefarm.com. Also on March 22, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 April 10, 2012.
On April 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Lincoln Elliott as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 states that it is a nationally known company that has been carrying on business [in the USA] under the name “State Farm” since 1930. It asserts that it engages in business in both the insurance and the financial services industries and that in 1999 it opened a Federally Chartered Bank, known as State Farm Bank.
Complainant asserts that it first began using the “State Farm” trademark in 1930 and registered it with the US Patent and Trademark Office on June 11, 1996. It registered the “State Farm Insurance” trademark on September 11, 1979 and has also registered various marks that all include the phrase “State Farm” with the US Patent and Trademark Office.
Complainant advises that it has registered various State Farm logos (including State Farm, State Farm Insurance, and its State Farm 3 oval) in Canada, as well as the European Community and in Mexico.
Complainant asserts that for over 70 years it has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. As a result Complainant contends, it has established a nationally recognized presence [in the USA] on televised and other media.
Complainant advises that it developed its Internet web presence in 1995 using the domain name <statefarm.com>, and that its web site offers detailed information relating to a variety of topics including its insurance and financial service products, consumer information, and information about its independent contractor agents. Complainant submits that it has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.
Complainant asserts that it does not allow unauthorized parties to use its marks as part of their Internet domain names and points out that the Domain Name incorporates its registered trademark, “State Farm”, and is also confusingly similar to its registered marks.
Complainant asserts that in September of 2011 it was brought to its attention that its trademark "State Farm" had been registered as part of the Domain Name, and that the Domain Name sends an Internet user to a web page which states it is provided by GoDaddy.com and which contains numerous links for various products and companies, including insurance companies who are in direct competition with State Farm Insurance.
Complainant states that it has sent three cease and desist letters to Respondent, on September 13, 2011, October 24, 2011, and March 9, 2012. Complainant advises that no response was received from Respondent to any of these letters.
Complainant submits that as a result of its substantial efforts, the public associates the phrase “State Farm” with the owner of the service mark “State Farm”, and that the State Farm mark is distinctive and has acquired secondary meaning. Complainant contends that the Domain Name is confusingly similar to the service mark that it has been using since 1930 and to State Farm’s other registered marks. Moreover, the Domain Name is confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.
Complainant states that Respondent has no right or legitimate interest in the Domain Name and that it is not associated with, affiliated with or sponsored by State Farm, nor did Complainant authorize Respondent to register the Domain Name or to use the State Farm trademark for the its business purposes.
Complainant claims that Respondent is not commonly known by the Domain Name, <callstatefarm.com>, nor does it believe that Respondent has ever been known by or performed business under the Domain Name. Further, Complainant submits that Respondent does not possess independent intellectual property rights in the name, and nor does it have a contractual arrangement with Complainant that would allow it to offer services under the State Farm name.
Complainant suggests that Respondent has registered the Domain Name to create the impression of an 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 State Farm.
Complainant submits that Domain Name is confusingly similar to Complainant’s own trademarks and claims that the Domain Name is intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the site.
Complainant states that it has filed numerous complaints relating to its domain names under the ICANN Uniform Dispute Resolution Process and the arbitrators have consistently found that the use of State Farm’s trademarks in a domain name, whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm’s trademarks and that such registrations have been done in bad faith.
Complainant submits that Respondent has no legitimate claim in the Domain Name and claims that the facts in evidence demonstrate that Respondent has registered and is using the name in bad faith.
Complainant contends that it registered its domain name <statefarm.com> on May 24, 1995 and Respondent did not register the Domain Name until August 30, 2011. Therefore, Complainant submits, Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com”.
B. Respondent
Respondent advises that he received the Complaint in his spam folder.
Respondent asserts that he purchased the Domain Name for a project which he is working on to facilitate participating parties with local farms.
Respondent states that the name “CallStateFarm” has not been used to generate revenue by him as of today’s date.
Respondent states that he does not agree with the “ Notice of Complaint “ filed by State Farm Mutual Insurance Company as they have five words in their trademark and the Domain Name, <callstatefarm>, consists of one word.
Respondent contends that if Complainant were able to show a trademark of one word, then he would cancel the Domain Name as he claims that he would not intentionally infringe on a registered trademark.
Respondent submits that Complainant is attempting to have 100% control over any variation of words which may have the combination of letters which spell “StateFarm” and believes that Complainant is attempting to bully and harass a small business owner for their benefit.
For the reasons set out below the Panel finds that Complainant has satisfied the requirements of the Policy and that the Domain Name should be transferred from Respondent to Complainant.
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.
Complainant has presented this Panel with evidence that it owns a trademark registration with the USPTO for its STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996). The Panel finds that Complainant has produced sufficient evidence to establish its rights in the STATE FARM mark under Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends, under its Policy ¶ 4(a)(iii) section, that the Domain Name is confusingly similar to the STATE FARM mark. The Panel agrees and finds as such under Policy ¶ 4(a)(i) where the Domain Name uses Complainant’s entire mark, absent the space, while adding only the generic term “call” and the generic top-level domain (“gTLD”) “.com.
This element of the Policy is met.
It is well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent is not commonly known by the Domain Name and has never performed business under the Domain Name. Further, Complainant asserts that Respondent does not own intellectual property rights in the Domain Name or any variation thereof. The Panel observes that the WHOIS information identifies “David Robertson” as the domain name registrant. Based upon this information the Panel finds that Respondent is not commonly known by the Domain Name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the Domain Name to resolve to a website featuring third-party links to Complainant’s competitors in the automobile industry. The Panel notes that such links are contained under headings such as “Progressive Car Insurance,” “Farmers Insurance Group,” “Online Auto Insurance,” and many others. See Complainant’s Exhibit 3.
The Panel finds that Respondent’s use of the Domain Name as a links directory for Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
This element of the Policy is also met.
As noted above, Complainant asserts that the Domain Name is used to provide links to Complainant’s competitors in the automobile insurance industry. Complainant contends that this is evidence of bad faith. Respondent’s website contains many third-party links to competing companies. This use is in violation of Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Further, the Panel finds bad faith under Policy ¶ 4(b)(iv) on the basis that Respondent registered and used the Domain Name to attract Internet users for commercial gain. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Respondent asserts that the name “CallStateFarm” has not been used to generate revenue by him as of today’s date. That claim appears to be doubtful on the basis of the material before the Panel.
Complainant also contends that Respondent could not have registered and used the Domain Name without actual or constructive knowledge of Complainant and its rights in the STATE FARM mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, in the present situation it is difficult to conceive that Respondent was not aware of Complainant and the STATE FARM mark. Further, Respondent’s assertion that he purchased the Domain Name for a project which he is working on "to facilitate participating parties with local farms" lacks credibility. Respondent does not explain why the word combination STATE and FARM are used in the Domain Name and why this should have any relevance to parties with local farms.
For these reasons the Panel concludes that this element of the Policy is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <callstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Clive Lincoln Elliott, Panelist
Dated: May 11, 2012
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