State Farm Mutual Automobile Insurance Company v. Robert Bartosiewicz
Claim Number: FA1606001681624
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Robert Bartosiewicz (“Respondent”), represented by Peter C. Peterson, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmstevewest.com>, registered with Domain.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically June 28, 2016; the Forum received payment June 28, 2016.
On June 28, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <statefarmstevewest.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC verified that Respondent is bound by the Domain.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2016, 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@statefarmstevewest.com. Also on June 29, 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 July 19, 2016.
On July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996), which establishes its rights in the mark. Respondent’s <statefarmstevewest.com> domain name incorporates the mark fully, less the space, and adds the name “Steve West” and the generic top-level domain (“gTLD”) “.com,” and is therefore confusingly similar to the mark.
Respondent has no rights or legitimate interests in the <statefarmstevewest.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register the domain name or otherwise utilize the STATE FARM mark for Respondent’s business purposes. In addition, Respondent arranged for the disputed domain to resolve to <dsnextgen.com>, which contains generic hyperlinks (see Compl., at Attached Ex. 4), and which fails to demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used the <statefarmstevewest.com> domain name in bad faith. Respondent’s redirection to <dsnextgen.com> indicates an attempt to confuse Internet users to generate business in a fashion that is unrelated to Complainant, and is in fact not legitimate content. Respondent also knew or should have known of Complainant’s use of STATE FARM and therefore its registration and use was done in bad faith.
B. Respondent
The Panel notes correspondence attached to the case file, which states: “Although I am not certain, I believe that one of our website producers was working in behalf of Steve West (www.stewestinsurance.com), a state farm insurance agent, to build a website and may have used the subject domain to do so.” Correspondence—Respondent (email dated July 15, 2015, signed “Pete Peterson,” Respondent’s representative). This communication has been accepted by the Panel as part of Respondent’s Response.
The Panel also notes correspondence attached to the case file, which states: “I'm happy to transfer the domain name.” Correspondence—Respondent (email dated July 18, signed “Pete Peterson”). This communication also has been accepted as part of the Response. However, while Respondent also submitted a Response asking the Panel to deny the transfer requested by Complainant (see Resp., at p. 5 § 6), along with an argument challenging jurisdiction, the Panel declines to give credibility to these extra communications, one of which notes its own uncertainty and the other of which cannot occur once a domain has been frozen for this proceeding. The Panel finds that the dispute arises under the UDRP and proceeds to a determination of the matter on the merits pursuant to a Policy analysis.
Respondent concedes that it purchased the disputed domain name for the purpose of building a website for its client, Steve West. See Resp., at p. 6 (Contract between Respondent and Steve West). Respondent urges that Steve West was an agent of Complainant at the time of the contract and that, therefore, Respondent’s use of the domain was in furtherance of this contract and executed with a bona fide offering of goods or services.
As such, Respondent urges that since Respondent was an agent of Complainant in the context of a contractual agreement, there could not be any registration in bad faith and that no bad faith use occurred as to any of the enumerated Policy ¶ 4(b) elements.
The Panel notes that Respondent registered the disputed domain April 27, 2015.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent argues that it contracted with an agent of Complainant in registering and subsequently using the disputed domain name. This contract with Steve West (provided in the Response, at p. 6) is alleged to create a prima facie case for rights in the domain.
Complainant denies in its Complaint any association with Respondent, stating, “State Farm does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name.” Compl., at p. 4. However, at the time of this writing, Complainant does not seem to have addressed any connection with “Steve West,” who is purported by Respondent to have contracted with Respondent, and who may have been an agent of Complainant at the time of the execution of the contract proffered by Respondent. See Resp., at p. 6.
This Panel finds that although these parties may have a business and/or contractual dispute that is beyond the scope of the UDRP proceedings, they also have a dispute here about issues that are firmly a part of the UDRP and that, in fact, persuade the Panel that the UDRP issues should be decided by the UDRP Panel. The Panel notes Love v. Barnett, FA 944826 (Forum May 14, 2007), which is distinguishable because both parties there were said to have “at least a prima facie case for rights”. The Panel also notes Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) in which the panel noted: [The Policy’s purpose is to] “combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes.” The Panel notes that central to this dispute is the UDRP issue. See also Bracemart, LLC v. Drew Lima, the distinction that neither of these parties claims earlier official capacity. The Panel finds that the UDRP has jurisdiction over the issues here. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it….”).
Identical or Confusingly Similar:
Complainant alleges it registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996), and argues that its trademark registrations demonstrate rights in the mark. USPTO registrations do confer rights in a Policy ¶ 4(a)(i) analysis. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Complainant satisfied the first requirement of Policy ¶ 4(a)(i); namely, the demonstration of rights in the STATE FARM mark.
Next, Complainant argues that Respondent’s <statefarmstevewest.com> domain name is confusingly similar to the STATE FARM mark. While Complainant does not argue specifically why it is confusingly similar, the Panel notes that the domain incorporates the mark fully, less the space, and adds the name “Steve West” and the gTLD “.com.” The disputed domain name is therefore confusingly similar to the mark. Addition of names to a mark has not been seen as distinguishing a domain from a mark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). In addition, the elimination of spacing and addition of TLDs has been deemed irrelevant. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, this Panel finds that Respondent’s <statefarmstevewest.com> domain name is confusingly similar to the STATE FARM mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that contains Complainant’s protected mark in its entirety and that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights to or legitimate interests in the <statefarmstevewest.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized Respondent to register a domain name or otherwise use the STATE FARM mark for Respondent’s business purposes. While Respondent does not argue this point in its Response, the Panel agrees that Respondent has not overcome Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
In addition, Complainant argues that Respondent arranged for the disputed domain to resolve to <dsnextgen.com>, which contains generic hyperlinks (see Compl., at Attached Ex. 4), and that such conduct does not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use. Complainant does not argue that this use competes with Complainant, however, panels have agreed that even such noncompeting use in Complainant’s own name may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, this Panel finds that Respondent’s use of the disputed domain does not create rights or legitimate interests under a Policy ¶¶ 4(c)(i) and (iii) analysis.
Respondent argues that it purchased the at-issue domain for the purpose of building a website for its client, Steve West. See Resp., at p. 6 (Contract between Respondent and Steve West). Steve West is alleged to have been an agent of Complainant at the time of the contract. Therefore, Respondent argues its use of the domain was in furtherance of this contract and executed with a bona fide offering of goods or services. The Panel notes the following cases: Vanguard Group Inc. v. Investors FastTrack, FA 863257 (Forum Jan. 18, 2007) (“Respondent makes a bona fide offering of goods and services in providing investment products and services to people wishing to consider investment in Complainant’s financial products and services.”); International Special Events Society v. Pierce Events, FA 1420422 (Forum Jan. 24, 2012) (“Respondent argues that there was a website developed for Complainant at Complainant’s request and, after two years of approved use, Complainant told Respondent that it no longer wanted to use the <isespittsburgh.com> domain name as the Pittsburgh chapter website. Respondent argues that it then made the <isespittsburgh.com> domain name inactive. The Panel finds that Respondent is using the <isespittsburgh.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).”). These cases also are distinguishable because Complainant asserts that it never approved registration by Respondent of a domain name containing its protected mark and while such approval may be given, Respondent does not show it was given in this case and the Panel declines to presume that it was. Respondent has NOT demonstrated a bona fide offering of goods or services.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent registered and used the <statefarmstevewest.com> domain name in bad faith. Complainant again notes Respondent’s redirection to <dsnextgen.com> and claims that this redirection indicates an attempt to confuse Internet users to generate business in a fashion that is unrelated to Complainant, and is in fact not legitimate content. Panels have found unrelated/noncompeting use to be an indication of Policy ¶ 4(b)(iv) bad faith. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The evidence Complainant provided of Respondent’s redirection of the disputed domain seems to indicate the inclusion of pay-per-click hyperlinks, from which Respondent presumably makes a commercial gain, and the Panel agrees that Policy ¶ 4(b)(iv) bad faith exists.
Complainant also argues that Respondent also knew or should have known of Complainant’s rights in and use of the STATE FARM mark and that therefore Respondent’s registration and use was done in bad faith. The Panel agrees that Respondent’s actual knowledge is shown on the face of the facts here, including the disputed domain name, the lack of any showing of consent, the alleged agency of West, the opportunistic registration if the agency relationship existed, and together, under the totality of the circumstances, these facts support findings of Respondent’s bad faith registration and use. See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the respondent was well aware that the domain names incorporated marks in which the complainant had rights). To the extent that Respondent also seems to argue that West was an agent of Complainant and that the domain name was registered during such agency, this contention gives rise to a suggestion of bad faith with the opportunistic registration and use of the principal’s intellectual property without consent or agreement and such opportunistic conduct further supports findings of bad faith.
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmstevewest.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 8, 2016.
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