State Farm Mutual Automobile Insurance Company v HPR

The above-entitled matter came on regularly for an administrative hearing on June 21, 2000, before the undersigned, on the Complaint of State Farm Mutual Automobile Insurance Company, hereinafter “Complainant”, against HPR, hereinafter “Respondent”.

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter “The Forum,” forwarded the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

On December 22, 1999, Respondent had registered the domain name in issue with Internet Domain Registrars, the entity that is the Registrar of the domain name. It is assumed, by lack of objection, that Internet Domain Registrars is chartered by ICANN, and that by registering its domain names with Internet Domain Registrars, Respondent agreed to resolve any dispute regarding its domain name through ICANNs Uniform Domain Name Dispute Resolution Policy.

Respondent did not submit a Response to The Forum within twenty [20] days as required by Rule 5(a), or at all.

1. Complainant, State Farm Mutual Automobile Insurance Company, is the owner of the service mark, “Like a good neighbor, State Farm is there,” which it has used since 1971, and it registered this service mark with the United States Patent and Trademark Office on December 17, 1991. The mark has become famous and distinctive.

2. Complainant has used its famous and distinctive mark continuously and extensively in interstate and international commerce since 1971.

3. Complainant has invested substantial sums of money over the years in marketing its insurance products utilizing the phrase “Like a good neighbor, State Farm is there.”

4. The public associates the phrase “Like a good neighbor, State Farm is there” with Complainant and with the goodwill from the phrase so developed by Complainant.

5. Respondent, HPR, registered the domain names “likeagoodneighborstatefarmisthere.com” and “andlikeagoodneighborstatefarmisthere.com” on December 22, 1999, long after Complainant’s adoption and first use and registration of its mark. The business and/or function of Respondent is unknown. It is not associated with Complainant, nor is it known to be in the insurance business.

6. It appears, as of this date, that Respondent has not as yet established a web site utilizing the domain names in issue.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as an Arbitrator in this proceeding. Having been duly selected, and being impartial, the Arbitrator has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1. In order for Complainant to prevail in this proceeding, Complainant must prove that each of the following elements is present:

[i] Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

[ii] Respondent has no rights or legitimate interests in respect of the domain names; and

[iii] Respondent’s domain names have been registered and are being used in bad faith.

2. It is concluded that Complainant’s registered service mark and the second level component of Respondent’s domain names are substantially identical, and, thus confusingly similar.

3. It is concluded that Respondent has no rights or legitimate interests in the domain names. This is because there is no evidence that Respondent: [a] has tried to use the domain names in connection with legitimate commerce, on or off the Web; [b] was generally known by the domain names, even if the names were not used in commerce as service marks; and [c] is using the domain name in any legitimate way other than commercial. Respondent registered those names as corresponding domain names, obviously to prevent Complainant from reflecting its famous and distinctive mark as a corresponding domain name, and, thus Respondent is a cybersquatter. [See, 15 U.S.C. §1125(c).]

4. As above set forth, however, ICANN policy requires that a Complainant must prove that the domain names in issue were registered and used in bad faith.

5. The Arbitrator has concluded that the record demonstrates that the registration of the domain names by Respondent clearly was in bad faith. He is troubled, however, by the ultimate question as to whether the domain names under the circumstances here presented are being “used in bad faith.”

6. In Paragraphs 4 and 5a of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, relating to abusive registration, submitted for the Board Meeting of October 24, 1999, it is stated:

“These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrators-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.” [Emphasis in original.]

7. Nevertheless, §4(b) of the Uniform Domain Name Dispute Resolution Policy states that evidence of registration and use in bad faith will be established by the following:

. . . you have 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 you have engaged in a pattern of such conduct . . .

8. It heretofore has been found that the complainant is the owner of its service mark, at least at common law, from 1971 or before, and it has become famous and distinctive. Respondent registered the names in issue on December 22, 1999, obviously to prevent Complainant from reflecting its mark as a corresponding domain name.

9. Because Complainant’s mark has become famous, it clearly can state a cause of action and it would be afforded the heightened protection provided by 15 U.S.C. §§1125(c) and 1127. Moreover, there can be no benign reason for Respondent’s registration of the domain names. [See, Panovision Intern. L.P. v. Toeppler (9^th Cir. 1998) 141 F.3d 1316, 1324-1325.] Further, the Arbitrator has concluded that the registration of two or more domain names, as here, exhibit a pattern of such conduct as required by §4b(ii).

10. It is concluded, accordingly, that Respondent has registered and used the domain names in issue in bad faith.

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

IT IS DIRECTED THAT THE DOMAIN NAMES “likeagoodneighborstatefarmisthere.com” and “andlikeagoodneighborstatefarmisthere.com” REGISTERED BY RESPONDENT HPR, BE TRANSFERRED TO COMPLAINANT STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY.

^[1]Any reference to Rule or Rules are to the Internet Corporation for Assigned Names and Numbers [ICANNs] Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.