State Farm Mutual Automobile Insurance Company v. Rebecca Kamran
Claim Number: FA1612001708034
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Rebecca Kamran (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmlosangeles.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 Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmlosangeles.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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@statefarmlosangeles.com. Also on December 21, 2016, 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 December 27, 2016.
On January 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 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 the disputed domain name in bad faith.
B. Respondent
Respondent makes no contention with regard to Complainant’s asserted trademark rights, nor on the matter of confusing similarity.
Respondent submits that the disputed domain name is a combination of generic terms over which Complainant does not have exclusivity.
Respondent has not made use of the domain name in a way that conflicts with Complainant’s use of the trademark.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a U.S. 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. The disputed domain name was registered on July 9, 2015;
4. The domain name resolves to a webpage that states: “website coming soon!”
5. 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 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, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami 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).”).
Panel is also 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 geographical place name, “Los Angeles”. Those additions do not distinguish the domain names 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 Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity; see finally, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), finding that the elimination of spaces between terms does not generally create a new distinctive term).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Response does not address the individual aspects of the Policy but Respondent argues that the individual terms “state”, “farm” and “Los Angeles” cannot be monopolized by one trader to the exclusion of others.
That argument might be interpreted as a claim that Complainant has no trademark rights. Nonetheless, panelists are in agreement that arguments of generic use are a matter for consideration under paragraph 4(a)(ii) and (iii) of the Policy. This point is addressed shortly.
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.
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).
The publicly available WHOIS information identifies Respondent as “Rebecca Kamran” 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.
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. The evidence provided with the Complaint is that the domain name resolves to a webpage stating “website coming soon!”, albeit that the domain name was registered in July 2015 (see Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that the respondent’s non-use of the disputed domain names demonstrated that the respondent was not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
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.
The Response states:
“We have legally purchased [the disputed domain name] which is a combination of three separate names of State, Farm and Los Angeles which cannot be trademarked and shall be used by the public. The words "State, Farm, and Los Angeles" are not and cannot be considered as an intellectual property of any person or company (sic).
We own the domain name … which we don't have a website for it to make any conflictions to Statefarm Insurance (sic). This name has nothing to do with State farm Mutual Auto Insurance company.
We are a marketing company and We have people who were interested in buying this domain name for their retail grocery and Farm products which have nothing to do with the insurance industry. There are other companies using name "State Farm" …”
In terms of the Policy, paragraph 4(c)(i) might have deserved attention had there been sworn, supporting evidence of imminent use of the domain name. There is no such evidence and, in any event, the matter may have been moot given Panel’s findings below.
The argument that the individual terms “state”, “farm” and “Los Angeles” cannot be monopolized by one trader is relevant to the “fair use” aspect of paragraph 4(c)(iiii) above. In support of that argument, Respondent has provided references to third-parties using the terms “state” and “farm”, being “State farm's Market,” “StateFarm - Ice Cream & Frozen Yogurt,” “State Farm: Ice Cream Truck,” “Fresno State Farm Market wine,” and “State Farm Center - Univ of IL | U.S. Green Building Council.”
Those references do not assist Respondent. Whilst Complainant has relied principally on its trademark registration for proof of rights in STATE FARM, its continuous use of that expression since 1930 means that the words also have so-called common law protection. Put another way, the trademark is well-known, certainly in respect of insurance services. The references provided by Respondent are to third parties who make it clear that they are market traders or wine, ice cream or yoghurt sellers, or provide tertiary educational services. By contrast, the disputed domain name merely adds the city name, “Los Angeles”, to Complainant’s trademark and by so doing only increases the likelihood of possible association with Complainant. Panel finds that it would be readily perceived by internet users as the online location for the LA services of Complainant. The fact that the disputed domain name may at some future time be used by a grocery retailer does not reduce that risk of “initial interest” confusion.
Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Here, the disputed domain name is not in use and there is no evidence it has been used previously. Nonetheless, further guidance on the requirement of registration and use in bad faith 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.’
Respondent has not itself developed a website since July 2015 in spite of the promise that one is coming soon. By its own admission, Respondent (an individual) describes itself as a marketing company. By its own admission, it intends to sell the domain name. It follows that it must intend to do so for commercial gain - in other words, for valuable consideration in excess of its out-of-pocket acquisition costs. There is no sworn or other compelling evidence before Panel as to how the domain name might be used and, given Respondent’s business, it is unlikely it could know that with certainty. Panel has already found that the likely perception of internet users is that of a domain name associated somehow with Complainant’s business. Panel finds that Respondent’s actions are caught by paragraph 4(b)(i) above.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmlosangeles.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page