Complainant, State Farm Mutual Automobile Insurance Company, asserts that it is a nationally known company that has been doing business under the name "State Farm" since 1930. In its Complaint, Complainant asserts that in 1999 it opened a Federally Chartered Bank known as State Farm Bank. Complainant states that it engages in business in both the insurance and the financial services industry; and that it also has established a nationally recognized presence on televised and other media.

According to the Complaint, a large part of Complainant’s insurance operations involves assisting policy holders and other claimants with claims filed pursuant to a State Farm auto, property, life or other insurance policy. Complainant’s associates can be found at its Corporate Headquarters in Bloomington, Ill.; 27 regional offices; more than 1,000 claim offices throughout the country; and nearly 16,000 agents' offices. Complainant’s representatives may perform claims related functions in nearly all of these locations.

Complainant first began using the State Farm trademark in 1930 and registered it with the U.S. Patent and Trademark Office on June 11, 1996. State Farm also has registered with the U.S. Patent and Trademark Office the following marks that all include the phrase "State Farm":

In Canada, Complainant has registered State Farm 3 oval logo; State Farm Insurance Companies; State Farm Insurance and the State Farm Fire and Casualty Co. logo. Pending registration are the marks "State Farm" and "statefarm.com." In the European Community the State Farm 3 oval logo is registered, and currently pending are: State Farm; State Farm Insurance and State Farm Insurance Companies. In Mexico the State Farm 3 oval logo is registered and currently pending are: State Farm and State Farm Insurance.

Copies of numerous U.S. and Canadian registrations issued to Complainant using the phrase "State Farm" are provided as Attachment 1 to the Complaint.

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. Complainant states that it does not allow unauthorized third parties to use its marks as part of Internet domain names.

Complainant says that it developed its Internet web presence in 1995 using the domain name STATEFARM.COM. At its web site, State Farm offers 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. Complainant contends that it has expended 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 a large portion of its web site relates to its claims operations. From State Farm's Internet site, users can receive information about regional claims offices, report a claim online, and obtain other information relating to the claims process. While this matter was pending, the undersigned visited Complainant’s web site, located at the URL http://www.statefarm.com. On the home page of Complainant’s site is a link to further web pages through which State Farm policy holders can submit claims for insurance payment on line.

In June, 2000, Complainant discovered that Douglas LaFaive of West Hartford, CT obtained a domain name registration for the domain name STATEFARM-CLAIMSHELP.COM. A copy of verifying WhoIs information is provided as Attachment 2 to the Complaint. Complainant also found that a web site had been developed, located at the URL http://www.statefarm-claimshelp.com, offering independent adjuster services. Printed hard copies of pages from this web site are provided as Attachment 3 to the Complaint. The Panel visited this site while this matter was under consideration, and it is largely unchanged from the date of the Complainant’s submission to the Forum.

Complainant states that it is clear from Respondent’s web site that Respondent offers commercial claims handling services. Respondent, however, is not associated or affiliated with Complainant and is not authorized to provide services on behalf of State Farm.

On June 13, 2000, Complainant’s in-house counsel sent a cease and desist letter via certified mail to Respondent. On July 6, 2000 Complainant sent a cease and desist letter via e-mail to Respondent at the e-mail address found from the WhoIs inquiry registration for the domain name STATEFARM-CLAIMSHELP.COM. Copies of these letters are provided as Attachment 4 to the Complaint. As of the date Complainant filed its Complaint with the Forum, it had not received a response to these letters from Respondent. Complainant asserts that Respondent has acted in bad faith by his continued refusal or failure to respond.

Complainant asserts that because of its substantial efforts, the public associates the phrase "State Farm" with the owner of the service mark "State Farm." Complainant contends that Respondent’s domain name is confusingly similar to Complainant’s service mark that it has been using since 1930, and to Complainant’s other registered marks. Moreover, Complainant believes, Respondent’s uses the contested domain name in a manner that is confusingly similar to the products, services, or information that Complainant offers to the public.

Complainant asserts that Respondent has no right or legitimate interest in the disputed domain name. On its site, the Respondent advertises for the services of "Douglas Lafaive and Associates, licensed public adjusters." Complainant believes that Respondent is a commercial enterprise offering insurance consulting or public adjuster services to insurance claimants. Respondent is not associated with, affiliated with or in any way authorized by Complainant to engage in these activities under the service mark "State Farm."

Complainant further asserts that Respondent is not doing business under the contested domain name, nor is he commonly known under the domain name. Complainant believes that Respondent has never been known by or performed business under the domain name STATEFARM-CLAIMSHELP.COM, and that Respondent does not possess independent intellectual property rights in the domain name. According to Respondent’s web site, says Complainant, Respondent appears to primarily perform business under the name "claimshelp.com."

Complainant believes that Respondent registered the name to create the impression of association with State Farm, its agents, products 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 Complainant and its claims handling process. Complainant further believes that Respondent has or will reap a commercial benefit by using this unauthorized association and through the creation of this confusion to consumers. Complainant also believes that Respondent has registered famous names of other insurance companies for the same purpose.

Complainant contends it is clear that the domain name STATEFARM-CLAIMSHELP.COM registered by Respondent is confusingly similar to State Farm’s trademark(s). The domain name is believed to be virtually identical to State Farm's registered marks in that the domain name merely incorporates Complainant’s mark with "-claimshelp." The use of "claimshelp", says Complainant, is clearly intended to attract individuals seeking assistance on their claims with Complainant, and that it creates customer confusion as to the source or sponsorship of the materials contained on, and the services offered through, Respondent’s web site.

Complainant asserts that Respondent’s registration of the disputed domain name was in bad faith, in that:

1. Respondent is not known by and has never been known by the name "State Farm." Respondent does not and has never traded under the name "State Farm." Respondent does not have any trademark or other intellectual property rights in the name in question. Respondent has not registered the name in question with the Secretary of State in the state in which he does business or filed incorporation papers with respect to the same.
2. Despite having registered the name "statefarm-claimshelp.com" Respondent is not authorized to sell products or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor/agent of State Farm.
3. If Respondent engages in selling competing insurance products or services, Respondent is a competitor of Complainant. Respondent’s use of a domain name that incorporates the State Farm name is, therefore, a clear attempt to trade off the good will of the State Farm name or to divert State Farm customers to the Respondent’s goods or services. It appears to Complainant that Respondent is using the State Farm name to divert policyholders and claimants to an independent adjuster site to increase his own business.
4. Not only has Respondent registered a domain containing the complainant's trademark without authorization from Complainant, but he also has registered several other domain names that incorporate the marks of well-known insurance companies. In particular, Respondent has registered allstate-claimshelp.com; amica-claimshelp.com; chubb-claimshelp.com; metlife-claimshelp.com; nationwide-claimshelp.com; safeco-claimshelp.com; and travelers-claimshelp.com. All of these names resolve to the same web site containing content identical to that shown at the claimshelp.com web site. WhoIs inquiry results and printed web pages showing this information are provided as Attachments 5 and 6 to the Complaint.

In his Response, Respondent acknowledges that the letters "statefarm" are incorporated within the disputed domain name Statefarm-Claimshelp.com. Respondent acknowledges the similarity by this construction of letters. Respondent acknowledges that both Complainant and Respondent are in the business of insurance and that "this may be confusing at the onset".

Respondent claims that he provides Public Adjusting Services to policy holders for a fee charged to the policyholders of many Property Casualty Insurance Companies. Respondent’s use of the domain name Statefarm-Claimshelp.COM serves to offer claims processing information and services to the policy holders of State Farm insurance Company as well as many other insurance company policy holders. Respondent is under the belief that once the web site of claimshelp.com is accessed by the Internet user, the confusion ends. Respondent asserts that there in no mention of State Farm other than to offer claims help and information to the general public.

According to Respondent’s web site, public adjusting services are defined as follows:

Further web pages on Respondent’s web site located under the disputed domain name provide insurance loss submission forms, and toll-free telephone numbers that insurance claimants may use to contact numerous insurance casualty companies, including Complainant.

Respondent denies that Complainant has provided ample evidence that Respondent has no rights or legitimate interest in the disputed domain name. Respondent intends to do business and/or provide informational services or traded under the domain name statefarm-claimshelp.com by using the domain name to direct individuals to his main web site address of http://www.claimshelp.com. Respondent claims that it is not uncommon to use multiple domain names direct Internet traffic to a particular Internet location.

On Respondent’s web site, he provides the reader with recommendations regarding complaints that can be made to State agencies, if an insurance company is not handling an insurance claim properly. Respondent’s web site states:

Respondent asserts that he has applied for trademark property or intellectual property rights in the domain name claimshelp.com. Respondent has been known by the domain claimshelp.com, a segment of the domain name in dispute. The segment claimshelp.com is used by Respondent in most of his business activities, as is demonstrated in the company letterhead of the Respondent, on which the Response was submitted.

Respondent asserts that he does have a bona fide offering of goods and services. Respondent asserts that Complainant’s own submissions of Respondent’s web site pages presents reliable evidence that Respondent has intellectual property rights and/or has made a legitimate use of the disputed domain name. Respondent asserts that his conduct in no way diverts consumers from the Complainant, as the Complainant and the Respondent do not operate the same type of business. The information contained on the website claimshelp.com to which statefarm-claimshelp.com is directed is informational in nature and, according to Respondent, serves to enhance the consumers knowledge of the insurance claims handling process. The good name of State farm, contends Respondent, is not being tarnished.

Respondent further asserts that the contested domain name was not registered for the purpose of resale to the trademark owner or competitor for profit; and that Respondent has not engaged in a pattern of conduct to prevent Complainant from obtaining domain names corresponding to its trademarks. Respondent contends that Complainant has had an Internet presence for many years, and has had ample opportunity to secure the domain name.

Respondent contends that he did not register the disputed domain name for the purpose of disrupting the business of Complainant as a competitor. Respondent asserts that he does not provide any of the services provided by Complainant in any way manner or form.

Respondent states that he is not using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark. The Respondent’s use of the domain name, he asserts, is to provide informational services and the opportunity to seek professional assistance in the submission of claims to State Farm policy holders. Complainant does provide informational services, says Respondent, but State Farm does not advise its policy holders that the professional services of a Public Adjuster are available to them.

Respondent argues that Complainant has not proven the necessary conditions to prevail in this matter. Respondent urges that the domain name Statefarm.claimshelp.com should remain the property of the Respondent or should not be allowed to be used at all due to the involvement of two intellectual property rights being involved, State Farm and Claimshelp.com, to form the domain name Statefarm-claimshelp.coM.

1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the domain name; and

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

Policy, Para. 4(b).

On the other hand, 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 the registrant’s rights or legitimate interests to the domain name:

Policy, Para. 4(c ).

By its submissions, and by reference to the information contained on its web site located at the URL http://www.statefarm.com, Complainant has demonstrated that it has trademark and service mark rights in numerous trademarks using the phrase "State Farm". Respondent has conceded that the disputed domain name wholly incorporates the State Farm name and mark.

As has been held by a previous Forum panel, Respondent’s domain name, which incorporates Complainant’s STATE FARM mark, but which adds an additional term that is commonly used in the insurance industry (here, "claims help"), is nearly identical to and confusingly similar with Complainant's service mark that it has been using since 1930, and to Complainant’s other registered marks containing the phrase STATE FARM. State Farm Mutual Automobile Insurance Company v. Life en Theos, NAF File No.  FA94663 (June 1, 2000) (domain names <statefarm-insurance.com> and <statefarmcustomerservice.com>).

Further, the Panel finds that the parties’ services are competitive, or if not competitive at the very least complimentary. Complainant provides insurance underwriting services, and handles claims made by its casualty policy holders. Respondent assists policy holders in making casualty loss claims to numerous insurance companies. From these observations, the panel also concludes that the potential customers for the parties’ services overlap to a great extent. The parties also promote their services within the same, if not largely overlapping, channels of trade.

Respondent’s continued use of the disputed domain name in the fashion shown from Complainant’s submissions, and based upon the Panel’s own observations, will likely result in consumer confusion. By the very nature of Respondent’s contested domain name and the use he presently is making of it on his web site, contrary to Respondent’s assertions, Internet users are likely to experience initial interest confusion.  That is, users will think that Respondent’s services provided in connection with the STATEFARM-CLAIMSHELP.COM domain name are somehow associated with Complainant, which confusion will be exacerbated when users arrive at Respondent’s site and see information about and links to insurance claims services. See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1063-64 (9^th Cir. 1999) and Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

Respondent is not generally known by "the mark" that constitutes the disputed domain name. Respondent primarily conducts business under the domain name claimshelp.com. Respondent is not associated with, affiliated with, or in any way authorized by the Complainant to use its service mark STATE FARM. See, The Caravan Club v. Mrgsale, NAF File No. FA 95314 (August 30, 2000) (finding that the Respondent had no rights or legitimate interests in the domain name).

The Panel also finds that, before any notice to the Respondent of the dispute, he did not use, nor did he make demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.

The Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. However, the Panel does not find that Respondent has tarnished Complainants’ trademarks or service marks at issue.

The Panel finds that Respondent is using the disputed domain name to divert customers to his web site(s), which promote the use of Respondent’s goods and services. Diverting Internet users, for commercial gain, to another web site by creating a likelihood of confusion with the Complainant’s mark is evidence of registration and use in bad faith. Policy ¶ 4(b)(iv). See EthnicGrocer.com, Inc. v. Latingrocer.com, NAF File No. FA 94384 (July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business).

The Panel also finds that Respondent has engaged in a pattern of conduct by registering domain names that infringe upon other well known insurance companies, preventing these companies from using their marks in the corresponding domain names. Policy ¶ 4(b)(ii). See Hitachi, Ltd. v. Fortune Int’l Dev. Ent, WIPO Case No. D2000-0412 (July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.).

For the foregoing reasons, the Panel finds that Complainant has met its burden of proof with respect to each of the three elements required under Paragraph 4(a) of the Policy. Therefore, the Panel directs that the disputed domain name, STATEFARM-CLAIMSHELP.COM be transferred to Complainant.

Jonathan Hudis, Sole Panelist

Dated: September 27, 2000

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