State Farm Mutual Automobile Insurance Company v. Jill Rosenthal
Claim Number: FA1901001824256
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Jill Rosenthal (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlantastatefarmarena.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.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2019; the Forum received payment on January 8, 2019.
On January 9, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <atlantastatefarmarena.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 January 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2019 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@atlantastatefarmarena.com. Also, on January 9, 2019, 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 January 29, 2019.
On February 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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 makes the following contentions:
1. Complainant is a well-known company engaged in the insurance and financial services industries.
2. Complainant began using the STATE FARM mark in 1930 and has continuously used the trademark in commerce since that time.
3. Complainant has established trademark rights in the terms STATE FARM and to support its contention has submitted evidence that it has registered the terms STATE FARM as a mark with and without designs, in a number of countries, including within the United States Patent and Trademark Office (“USPTO”) where its registrations date back to 1978 and show use of these terms as early as 1956, as well as more recent registrations, including those for the terms used within its domain name, STATEFARM.COM (Reg. No. 2,444,342), registered as a mark on April 17, 2001, for providing on-line financial services; and providing on-line underwriting and servicing in the fields of auto, homeowners, life, health and fire insurance.in International Class 36. and providing a first use date of November 1, 1999
4. Complainant has also submitted registration evidence for these terms in the mark STATE FARM CENTER in both a words only mark (Reg. No. 4,492,572) and a words plus design mark featuring those terms beneath a stylized depiction of a domed stadium roof (Reg. No. 4,492,572) both of which registered on March 4, 2014, for arena services, namely, providing facilities for sporting events, entertainment events, conventions, and exhibitions and each providing a first use date of April 29, 2013.
5. Complainant has obtained similar trademark registrations in Canada, Mexico, and the European Community for the terms STATE FARM.
6. Complainant owns and uses the domain name <statefarm.com> which it registered on May 24, 1995, and on its website accessed through that domain name prominently displays the STATE FARM mark to offer detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents.
7. Respondent registered the disputed domain name <atlantastatefarmarena.com> on August 30, 2018, one day after the announcement by Complainant and the Atlanta Hawks basketball team in news reports online and in local Atlanta newspapers that Atlanta’s Philips Arena was to be renamed State Farm Arena in a 20-year naming rights deal.
8. Respondent’s disputed domain name first came to the attention of Complainant in September 2018.
9. Complainant sent to Respondent cease and desist letters in September 2018 and again in November 2018 after it received no response to its first attempt.
10. Respondent emailed her response on January 8, 2019 which included notice to Complainant that the disputed domain name was for sale and provided specific economic needs of Respondent upon which Complainant should calculate the amount Complainant should offer Respondent to purchase the disputed domain name, all of which appeared well in excess of Respondent’s expense to register the disputed domain name.
11. The disputed domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, omitting the space between the terms, merely adding the geographic term “Atlanta” before the mark, and a common descriptive term “arena” after the mark, as well as the generic top-level domain (“gTLD”) “.com.”
12. The addition of these common terms to Complainant’s mark are insufficient to negate the confusing similarity between the disputed domain name and Complainant’s STATE FARM marks, especially given the well-known status of Complainant’s marks and their widely-recognized use in connection with financial, insurance, and even arena-related services
13. By using the domain name, Respondent has intentionally attempted to attract, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with 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.
14. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark for business purposes and is not commonly known by the disputed domain name.
15. Respondent is neither using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use.
16. Complainant did not authorize Respondent to register the domain name or to use the State Farm trademark for the Respondent’s business purposes.
17. Complainant contends that Respondent registered the name to create the impression of a false association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the STATE FARM mark; and/or to create initial interest confusion for consumers seeking information about Complainant.
18. Respondent has registered and is using the <atlantastatefarmarena.com> domain name in bad faith.
19. Given the news of the arena naming deal one day prior to Respondent’s registration of the disputed domain name and that Respondent has admitted she lives in the Atlanta area near the arena, Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark prior to registering the disputed domain name.
B. Respondent makes the following contentions:
1. Respondent’s <atlantastatefarmarena.com> is not confusingly similar to Complainant’s mark because Atlanta State Farm Arena is not a specific trademark.
2. Respondent has rights and legitimate interests in the <atlantastatefarmarena.com> domain name because Respondent did not act unreasonably when registering the disputed domain name.
3. Respondent did not register the disputed domain with the intent to cause confusion as to the source or affiliation of the domain.
4. Respondent’s intended purpose of the domain name was personal consumer use.
5. Respondent has not offered any goods or services in connection with the disputed domain name.
6. Respondent requests the disputed domain name be cancelled.
7. Respondent did not register the <atlantastatefarmarena.com> domain name in bad faith.
8. Respondent operates a parked webpage, which it hopes to use one day as a personal website.
9. Respondent does not appear to be affiliated with Complainant in any way.
10. Respondent does not plan to advertise the <atlantastatefarmarena.com> domain name and did not intend to cause confusion with Complainant’s mark.
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 claims it has established trademark rights in the STATE FARM mark based upon its numerous trademark registrations with the USPTO. See Compl. Annex Ex. 1. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrated its rights in the mark under Policy ¶ 4(a)(i)).
Complainant provides copies of its USPTO registration for the STATE FARM marks, e.g., STATEFARM.COM (Reg. No. 2,444,342), registered as a mark on April 17, 2001, for providing on-line financial services; and providing on-line underwriting and servicing in the fields of auto, homeowners, life, health and fire insurance.in International Class 36. and providing a first use date of November 1, 1999; STATE FARM CENTER in both a words only mark (Reg. No. 4,492,572) and a words plus design mark featuring those terms beneath a stylized depiction of a domed stadium roof (Reg. No. 4,492,572) both of which registered on March 4, 2014, for arena services, namely, providing facilities for sporting events, entertainment events, conventions, and exhibitions and each providing a first use date of April 29, 2013. See Compl. Annex Ex. 1. The Panel finds, therefore, that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant asserts that the <atlantastatefarmarena.com> domain name is confusingly similar to the STATE FARM mark as it contains the mark in its entirety. Complainant also contends that panels in UDRP arbitration proceedings have consistently found that the use of Complainant’s STATE FARM mark in a domain name, whether or not additional language, characters or hyphens are added to the terms STATE FARM, is confusingly similar to the STATE FARM mark. See, e.g., State Farm Mutual Automobile Insurance Company v. Hildegard Gruener: FA1309001 (Forum Oct. 22, 2013) (finding <statefarm--com.com> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. Domain Master, FA 335440 (Forum Nov. 15, 2004) (finding <statefarmcom.com> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. PrivacyProtect.org / Domain Admin, FA 1461141 (Forum Oct. 15, 2012) (finding <comstatefarm.com> confusingly similar to STATE FARM). Incorporation of a complainant’s mark in its entirety generally does not withstand a confusingly similar analysis under Policy ¶ 4(a)(i). See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., D2001-0110 (WIPO, April 2, 2001) (finding that the incorporation of a Complainant's well-known trademark in disputed domain name is considered sufficient to find the domain name confusingly similar to the Complainant's trademark, citing Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO, April 19, 2000) (finding that because the domain name <quixter-sign-up.com> incorporates in its entirety the Complainant's distinctive mark, QUIXTER, the domain name is confusingly similar). Even the presence of additional generic or descriptive terns is insufficient to negate a finding of confusing similarity. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); TPI Holdings, Inc. v. Carmen Armengol, D2009-0361 (WIPO May 19, 2009) (inclusion of generic term “transactions” does not negate the confusing similarity of <autotradertransactions.com> domain name to Complainant's AUTO TRADER mark); BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, D2008-1338 (WIPO, November 24, 2008) (finding that “addition of the generic words “limited” and “innovation” to the Complainants' mark BHP does not change the overall impression of the designations as being domain names connected to the Complainants”)
The Panel notes that while Complainant makes no comment about the addition of a generic top-level domain (“gTLD”), such an addition is irrelevant in determining whether the disputed domain name is confusingly similar. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); Compagnie Gervais Danone v. Duxpoint and Alejandro Gomez, D2008-1799 (WIPO, January 30, 2009) (Panels disregard a gTLD suffix in determining whether disputed domain name is identical or similar to complainant's marks); Ticketmaster Corporation v. Dmitri Prem, D2000-1550 (WIPO January 16, 2001) (top level domain is to be ignored in assessing similarity to a mark). The Panel agrees and finds that the <atlantastatefarmarena.com> domain name does not contain changes that would sufficiently distinguish it from the STATE FARM mark and these facts are sufficient to meet the required showing under Policy Paragraph 4(a)(i).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Complainant argues that Respondent has no rights or legitimate interests in the <atlantastatefarmarena.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM mark in any way. WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record submitted by Complainant identifies Respondent as “Jill Rosenthal” and no information in the record indicates that Respondent is authorized to use Complainant’s mark. The Panel finds, therefore, under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name. See Compl. Annex Ex. 2
Complainant further argues Respondent’s lack of rights or legitimate interests in the <atlantastatefarmarena.com> domain name is indicated by its failure to use the name for a bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent is attempting to create a false association with Complainant to trade off the goodwill associated with Complainant. Attempting to create a false affiliation to divert Internet users seeking complainant’s website is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The disputed domain name is confusingly similar to Complainant’s mark, as discussed above, and the only apparent use of the domain name is in connection with a website seemingly calculated to create and exploit confusion among Internet users and infringe upon Complainant’s marks. Here, Complainant asserts that Respondent is intending to attract individuals looking for information about Complainant. The Panel agrees and concludes that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to provide any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name and has thereby satisfied Policy ¶ 4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith
Complainant contends that Respondent has registered and uses the <atlantastatefarmarena.com> domain name in bad faith because Respondent attempted to sell the disputed domain name in the January 8, 2019 email response to Complainant’s email of that same date, forwarding a copy of its proposed complaint in this domain name UDRP arbitration proceeding. Complainant provides a screenshot of an email conversation between Complainant and Respondent where Respondent offered to sell the <atlantastatefarmarena.com> domain name to Complainant. See Compl. Annex, Ex. 4. Offering a domain name for sale can be evidence of bad faith per Policy ¶ 4(b)(i), See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). This Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Complainant also contends that Respondent intends to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates the STATE FARM mark in its entirety. See Compl. Annex, Ex. 3. This Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Next, Complainant asserts that Respondent has failed to make an active use of the disputed domain name. Passive holding of a domain name can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Regions Bank v. Darla Atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel notes that Complainant provides as evidence to support Complainant’s contention a web page printout of the website accessed at the disputed domain name which states “This Web page is parked FREE, courtesy of GoDaddy”, the involved registrar for the disputed domain name. See Compl. Annex, Ex. 3. the The Panel finds, therefore, that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s conduct suggests opportunistic bad faith because the disputed domain name was registered by Respondent shortly after a public announcement by Complainant relating to Complainant’s STATE FARM mark applied to the Atlanta arena referenced in the disputed domain name. In support, Complainant submitted WHOIS information showing the disputed domain was registered on August 30, 2018 as well as citation to decisions finding bad faith where respondents registered domain names after a tournament or other public event sponsored by a famous mark owner was announced. A brief search to verify the content of such an announcement to confirm whether Complainant’s contention was consistent with the cases cited confirmed that on August 29, 2018 an announcement was published in numerous online and Atlanta newspaper sources that a deal between the Atlanta Hawks and Complainant had been reached to rename the Philips Arena in the name of Complainant as stated by Complainant. A respondent who registers a disputed domain name after complainant makes a public announcement regarding its mark may be found in bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that Respondent’s registration of the “seveballesterostrophy.com” domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament strongly indicates an opportunistic registration). Based on this brief review of information provided online relating to the Complainant’s naming of the Atlanta arena using its STATE FARM mark one day before Respondent’s registration of the disputed domain name, the Panel agrees with Complainant and finds that Respondent acted in opportunistic bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s mark. First, this Panel agrees with other panels that arguments of bad faith based on constructive notice are unavailing, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). In contrast, however, actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts, given the global reach of the Internet, the fact that Complainant is widely known indicates Respondent must have been aware of Complainant when it registered the domain name. See Compl. Annex Ex. 5. The Panel agrees with Complainant, that given the decades of use by Complainant of the STATE FARM marks online and in many countries prior to Respondent’s registration of the disputed domain name, especially in the US where Respondent resides, the widespread fame of Complainant’s business and its marks, the Panel infers that Respondent had actual knowledge of Complainant's rights in the STATE FARM mark when it registered the <atlantastatefarmarena.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atlantastatefarmarena.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: February 17, 2019
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