DECISION

State Farm Mutual Automobile Insurance Company v.
Insurance Consumer Advocate Network

Claim Number: FA0008000095413

PARTIES

The Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL, USA ("Complainant"). The Respondent is Insurance Consumer Advocate Network, Tempe, AZ, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are "STATE-FARM-INSURANCE-CLAIMS.COM" and "STATE-FARM-INSURANCE-COMPANY.COM", registered with Internet Domain Registrars.

PANELIST

The Panelist, Nelson A. Diaz, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/15/2000; The Forum received a hard copy of the Complaint on 08/15/2000.

On 08/15/2000, Internet Domain Registrars confirmed by e-mail to The Forum that the domain names, "STATE-FARM-INSURANCE-CLAIMS.COM" and "STATE-FARM-INSURANCE-COMPANY.COM", are registered with Internet Domain Registrars and that the Respondent is the current registrant of the name.

On 08/17/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/06/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@state-farm-insurance-claims.com and postmaster@state-farm-insurance-company.com by e-mail. The Forum received a timely response from Respondent on 9/5/00.

On 9/8/00, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Nelson A. Diaz, as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

  1. Complainant contends that the domain names in question are substantially similar to Complainant’s STATE FARM marks.
  2. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain names.
  3. Complainant contends that Respondent registered and is using the domain names in bad faith.
  4. Respondent admits substantial similarity but otherwise contests these contentions and asserts that it has violated neither the Rules nor the Policy.

FINDINGS

Since 1930, Complainant has being doing business under the name "State Farm". Complainant has expended time, effort and resources to develop the goodwill associated with its numerous registered and unregistered trademarks and service marks, including the mark, STATE FARM. The marks are widely used and recognized throughout the United States.

On January 11, 2000, Respondent registered the domain names "STATE-FARM-INSURANCE-CLAIMS.COM" and "STATE-FARM-INSURANCE-COMPANY.COM".

Currently, the domain names resolve to an active web sites soliciting information in order to provided "news information and reporting."

In registering the domain names with the Registrar, Respondent agreed to resolve any dispute regarding its domain names pursuant to the Rules and the Policy.

DISCUSSION

To obtain the requested relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:
  1. That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. That the Respondent has no rights or legitimate interest in the domain name; and
  3. That the domain name has been registered and used in bad faith.

As discussed below, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.
  1. Similarity Between Respondent’s Domain Names and Complainant’s Trademarks.
    2.

    Under paragraph 4(a) of the Policy, it is facially evident that the domain names registered by Respondent, <state-farm-insurance-claims.com> and <state-farm-insurance-company.com>, are confusingly similar to Complainant’s famous STATE FARM mark. Indeed, Respondent admits the names are confusingly similar to the Mark. The panel concludes that Complainant has met its burden of proof with respect to the first element of its cause of action.

  2. Respondent’s Rights or Legitimate Interest in the Domain Names.

Complainant has provided evidence that Respondent has no rights or legitimate interest in the domain names: Respondent has never done business or traded under the domain names; Respondent does not have any trademark or intellectual property rights in the domain names; Respondent has never been known by the domain names in question.

Under Paragraph 4(c) of the Policy, Respondent may rebut Complainant’s allegations by demonstrating its rights or legitimate interest in the domain name. If proven, the following non-exclusive circumstances may serve as evidence of Respondent’s rights or legitimate interest in the domain name:

  1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
  2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
  3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

To establish it rights or legitimate interest in the domain names, Respondent has relied on its alleged use of the domain names for legitimate noncommercial or fair use purposes, namely the gathering, sharing and dissemination of "news" and other information.

While the Panel agrees that Respondent has a right to freely disseminate news and commentary about State Farm, it cannot agree that Respondent’s First Amendment rights may be used in a manner that unfairly takes advantage of State Farm’s commercial interests in the Mark. In balancing the rights of the parties, the Panel specifically finds that while Respondent is free to publish its views about State Farm it may not identify itself as State Farm in order to do so. By registering the domain names in question and linking them to his web site, Respondent will undoubtedly divert consumers searching for Complainant. Accordingly, the Panel finds that the Complainant has met its burden of proof with regard to the second prong under paragraph 4(a).

  1. Respondent’s Bad Faith Registration and Use of the Domain Name.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:
  1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
  2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
  3. Registration of the domain name for the purpose of disrupting the business of a competitor; or
  4. Using the 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.

Complainant has established that Respondent has registered other domain names that incorporate the famous marks of others. The panel finds that this pattern of conduct was intended to prevent others, including Complainant, from obtaining domain names corresponding to their trademarks. While Respondent may not be a serial "domain squatter" in the ordinary sense of the term, its conduct is nonetheless a plain violation of paragraph 4(b)(ii) of the Policy. Moreover, as discussed above, its conduct is not protected by the rights of fair use. See Planned Parenthood Fed’n of America v. Bucci, 1997 U.S. Dist. Lexis 3338 (S.D.N.Y. 1997. In determining that Respondent is not entitled to identify itself as Complainant, the Panel recognizes that there exist other, more appropriate fora, that will allow Respondent to freely express its views in a manner that does not exploit a trademark holder’s rights.

The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain names in bad faith.

DECISION

Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented. The Panel concludes: (a) that the domain names <state-farm-insurance-claims.com> and <state-farm-insurance-company.com> are confusingly similar to Complainant’s marks; (b) that Respondent has no rights or legitimate interest in the domain names; and (c) that Respondent registered and used the domain names in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain names be transferred to Complainant.

 

Nelson A. Diaz

Presiding Panelist

Date: September 19, 2000

 

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