State Farm Mutual Automobile Insurance Company v. Michael Swanson
Claim Number: FA1307001512271
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Michael Swanson (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmcenter.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2013; the National Arbitration Forum received payment on July 30, 2013.
On July 31, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmcenter.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 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2013 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@statefarmcenter.com. Also on August 1, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Complainant submitted an Additional Submission, which was found to be compliant on August 22, 2013.
Respondent submitted an Additional Submission, which was found to be compliant on August 22, 2013.
On August 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in STATE FARM and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent states that Complainant has no registered trademark rights in STATE FARM CENTER.
Respondent alleges that it did not act in bad faith because it did not seek to create an impression of association with Complainant, has not offered any information regarding Complainant’s business, and used the word ‘unofficial’ on its website so as to distance itself from any possible association with Complainant.
Respondent claims to be an alumnus of the University of Illinois, and registered the domain name with the intent to provide a forum to follow the Illinois Renaissance project of renovating the former Assembly Hall, now State Farm Center.
Respondent asserts that it has used the domain name in a purely non-commercial manner and registered the domain name without any financial motivation. Respondent has no history of domain disputes, does not host pay-per-click links or any advertising on the website and has not attempted to sell the domain name.
C. Additional submissions
As indicated, both parties made additional submissions. Complainant’s submissions were predictable responses to (i) the claim it lacked explicit trademark rights in STATE FARM CENTER and (ii) the efficacy of Respondent’s use of the word ‘unofficial’ on its website in terms of preventing confusion. Respondent’s submissions were largely a repetition of what had been argued in the Response with the exception of the added statement that the resolving website had remained inactive because work on the project does not begin until 2014.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a US national insurance provider which since 1930 has offered its services by reference to the trademark STATE FARM;
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,979,585 registered June 11, 1996 for the word mark STATE FARM;
3. On April 29, 2013 Complainant made a public statement that a new arena for the University of Illinois was to open under the name “State Farm Center”;
4. On that same day the disputed domain name was registered;
5. The domain name resolves to an inactive website;
6. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for STATE FARM, Panel is satisfied that Complainant has trademark rights in that expression (see State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The Policy does not require Complainant to have trademark rights in the exact terms of the domain name. As stated, confusing similarity is enough. Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark. The disputed domain name takes the trademark and adds non-distinctive elements – namely, the gTLD, “.com” and the descriptive word “center”, neither being added matter which distinguishes the domain name from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also
Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) finding <bodyshopdigital.com> to be confusingly similar to the complainant’s THE BODY SHOP trademark).
For the sake of completeness, Panel adds here that the “disclaimer” on the resolving website suggested by the word ‘unofficial’ has no impact on the assessment of confusing similarity under this aspect of the Policy which pays regard to the trademark and the domain name compared in isolation from any matter that may appear on the resolving website.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000). Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The publicly available WHOIS information identifies Respondent as “Michael Swanson” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. Paragraph 4(c)(ii) of the Policy has no application to the facts.
The resolving website is largely inactive and so there is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Paragraph 4(c)(i) of the Policy has no application to the facts.
In so far as Paragraph 4(c)(iii) of the Policy has any possible application, Panel notes in the evidence a screenshot of the resolving website. The site bears the title “State Farm Center” together with a message stating: “The new arena for University of Illinois basketball. This unofficial page will be updated with renovation information.”
The question is whether on a balance of the evidence it could be said that Respondent has shown a legitimate noncommercial or fair use of the disputed domain name. Since there is no use of the website to speak of, that determination hinges essentially on the explanation given by Respondent of its intentions for the website.
Respondent claims that it registered the domain name to host a blog about the renovation project of the college basketball arena. Respondent suggests that the disclaimer that the site is “unofficial” makes it obvious that the website is unrelated to Complainant or its business.
Panel notes that, by the time of the Complaint, Respondent only had three months in which to add something more purposeful to its website. Nevertheless, with only very casual effort, Panel can discover at Wikipedia and elsewhere online a host of information concerning the project. Indeed, not just about the renovation works but also about the events leading up to the planned restoration. So, for example, at http://en.wikipedia.org/wiki/State_Farm_Center, Panel discovered that:
“In the autumn of 2008, school officials, led by former Athletics Director Ron Guenther, conducted a study to decide whether to refurbish the then-named Assembly Hall or build a new basketball arena.[3] In 2010 a decision was made to renovate rather than replace the building. The architectural firm AECOM has been selected and awarded a contract to design the renovation. [4] Surveys were sent out to I-Fund and season ticket holders to gauge demand for various premium seating options. This information is being used to create schematic drawings and architectural renderings near the end of 2012, which will be used by current Athletics Directer Mike Thomas to aid in fundraising for the project. The anticipated renovation cost is between $150 and $160 million, and construction would not start before spring of 2014.[5] As part of the renovations, the naming rights to the arena were purchased by State Farm Insurance for $60 million over 30 years.[6]”
Panel notes that footnote [6] to that passage is attributed (indirectly) to a syndicated press release of the purchase of those name rights by Complainant dated April 29, 2013.
Panel therefore must question why, if Respondent is either an architectural or basketball enthusiast, or for that matter follows keenly the developments of its Alma Mater, Respondent should wait until the public announcement of a valuable commercial naming of the stadium before establishing a blog for those interested in the renaissance of the former Assembly Hall, especially given that the intended project was a matter of public knowledge in 2010, if not in 2008.
In its additional submissions, Respondent goes no further than to state that the website remains nascent because renovation work is only set to commence in 2014.
On balance, and given the opportunity for Respondent to better support its position through two rounds of submissions, Panel finds that Respondent has not brought itself under paragraph 4(c)(iii) of the Policy, nor has it otherwise shown a right or a legitimate interest in the domain name.
Complainant has established the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 the 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.’
On the preponderance of the evidence, Panel finds that Respondent’s actions fall under paragraph 4(b)(i) above. There is no explanation of the critical action taken by Respondent to choose a domain name incorporating Complainant’s trademark. Other descriptive domain names might have been chosen which better alluded to the restoration works. Whilst Complainant no doubt has every hope that the stadium will be referred to generally as the State Farm Center (and so, at one level, might desire its trademark be used descriptively), that is not to say that the value of the naming rights can be ignored. Panel finds that there is no good reason why Respondent should have thought that the name State Farm Center was public property and available to the first registrant. The fact that Complainant may not, at the time, have had independent trademark protection for the full expression is of no influence on that finding (see, by way of example, Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”)).
Panel finds bad faith use and registration for the purposes of the Policy by reason of circumstances indicating that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 8, 2013
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