State Farm Mutual Automobile Insurance Company v. Geoff Jacobs / Effin Computers, LLC
Claim Number: FA2303002034609
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois. Respondent is Geoff Jacobs / Effin Computers, LLC (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmbarkley.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.
Gerald M. Levine as Panelist.
Complainant submitted a Complaint to Forum electronically on March 6, 2023; Forum received payment on March 6, 2023.
On March 9, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <statefarmbarkley.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 March 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2023 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@statefarmbarkley.com. Also on March 9, 2023, 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 March 31, 2023.
On April 7, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
The Registrant registered the disputed domain name <statefarmbarkley.com> on October 23, 2022 (the “Disputed Domain Name”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant first began using the “State Farm” trademark in 1930 and has continuously used the trademark in commerce since that time. State Farm has also registered with the Patent and Trademark Office the following marks all of which include the phrase “State Farm” including, but not limited to: the State Farm logos; State Farm, statefarm.com, State Farm Catastrophe Services, State Farm Center, State Farm Arena, State Farm Mutual Funds, State Farm Stadium, State Farm Ventures, State Farm Education Assist, and State Farm Neighborhood Assist.
For over 70 years State Farm has expended substantial time, effort and funds to developing the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names. Complainant has not authorized Respondent to register or use the its mark in the Disputed Domain Name.
B. Respondent
The Respondent does not deny that the disputed domain name is confusingly similar to Complainant’s mark. Indeed, there is a purpose to his incorporating the mark in the disputed domain name and asserts that he has a right and legitimate interest in doing so. He states as follows: “Last year, I came across an idea. I realized the similarity of the name ‘Saquon’ with ‘State Farm’. And I thought, ‘Hey, that would be a great marketing campaign for State Farm. And a great opportunity for Saquon Barkley in terms of endorsements.’".
Continuing: “The marketing idea would involve a campaign involving Saquon Barkely, if he's interested. And audineces(sic) around the world, I believe(sic) would think of State Farm, every time Saquon is spoken. I believe there is a strong value in that idea. For State Farm Insurance.”
Continuing still: “So, it was for this reason that I registered this domain name www.StateFarm Barkley.com. That reason was this idea, and protecting this idea. It was not to sell a product, a service, or anything else but this idea.”
“From there, I looked into how to present this idea to the marketing department of State Farm Insurance. I searched all over the internet. There was no publicly available information of how to contact them through email. So, I mailed the marketing department a letter (to Kristyn Cook), introducing myself and generally explaining my idea. I received no response. So I emailed that document to a general State Farm email address. And i received an inaccurate reply. I have attached both. Given the lack of a resonse(sic), I forwarded this domain to my business website, www.effincomputers.com. This was not done to sell anything. Not to provide any service. It was only done to provide the best way for State Farm to contact me. If State Farm is interested in my marketing idea.”
The disputed domain name is currently forwarding to www.effincomputers.com. The Respondent alleges that since the website is locked he cannot cancel the redirection but he has expressed a willingness to remove the disputed domain name from the Internet, after this matter is resolved in his favor: He states further: “This domain was registered to protect my marketing idea. It holds and serves no other purpose than that. If I am restored control of this domain I will remove the forwarding of this domain and it will be connected with no website, no email address.” He points out that there are numerous websites that are live that incorporate Complainant’s trademark: “I have attached trademarks that are live, which are just as similar as mine.”
1. Complainant has a registered trademark in the term STATE FARM and the disputed domain name is confusingly similar to said mark.
2. Respondent lacks rights or legitimate interests in the disputed domain name; and
3. Respondent registered and is using the disputed domain name in bad faith.
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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
There is a two-step process in proving that it has standing to maintain a dispute under the Policy. It must first establish that it has rights in a trade or service mark incorporated in a disputed domain name; and if it does, that the domain name is either identical or confusingly similar to that mark. Here, the Complainant has adduced evidence that it owns numerous registered marks in the name of STATE FARM. The Respondent does not argue otherwise for in its own words it has intentionally incorporated the Complainant’s trademark for a purpose.
A side by side comparison confirms that the Disputed Domain Name is not identical, but it is confusingly similar to the Complainant’s mark. The Respondent has added the word “Barkley,” presumably in reference to a football player who has been in the news and who would welcome the chance to gain endorsements. The Complainant conjectures that name “Barkley” is “a generic term, most likely meant to infer the surname of someone associated with the Complainant.”
Whatever the word signifies it does not act to distinguish the Disputed Domain Name from the Complainant’s mark. The Disputed Domain Name is simply the Complainant’s mark with a generic affix and for this reason it is confusingly similar to the mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Accordingly, the Complainant has satisfied Paragraph 4(a)(i) of the Policy
The Complainant contends that it has not authorized Respondent to register the Disputed Domain Name, the Respondent is not commonly known by that name, and it is not using it for any noncommercial or fair use purpose. Indeed, the Respondent does not argue otherwise, but rather insists that its registration of the Disputed Domain Name fulfills the purpose for which it was registered. The Panel finds that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The burden now shifts to the Respondent to produce evidence that it does have rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c) of the Policy sets out a list of four nonexclusive circumstances that may support a respondent’s defense:
(i) "[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services."
(ii) "[Y]ou (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights."
(iii) "[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has provided a full explanation of its purpose in registering the Disputed Domain Name, and that purpose it contends supports its right or legitimate interest in the Disputed Domain Name. It assures the Panel that its intention “was not to sell a product, a service, or anything else but this idea.” The Respondent’s theory is that it owns intellectual property rights to this “idea” which is bound up with the Disputed Domain Name. The Respondent states: “My right to the domain is due to my idea of a marketing campaign that State Farm Insurance may want to take advantage of. This idea is my itellectual(sic) property. I believe it can benefit State Farm Insurance if they are interested in pursuing it.”
However, as the Disputed Domain Name incorporates an idea that could only be realized by the Complainant’s accepting it (that is, buying into the idea), the Respondent by its own admission did not register it “in connection with a bona fide offering of [any] goods and services” that it was then or demonstrably intended to market. See State Farm Mutual Automobile Insurance Company v. LaFaive, FA95407 (Forum September 27, 2000) (finding the unauthorized providing of information and services under the mark owned by a third party cannot be said to be the “bona fide” offering of goods or services); See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy. Further, the Respondent is not commonly known by the Disputed Domain Name. And, lastly, by its own admission, the Disputed Domain Name was not registered for any legitimate noncommercial or fair use.
The Panel is of the view that the Respondent’s purpose is not of a kind that can support a right or legitimate interest in a disputed domain name. Whether the Respondent has any intellectual property rights in an “idea” which he was presenting to the Complainant is an issue outside the Panel’s jurisdiction to determine, and if this theory has any legitimacy it would be an issue for determination by a court of competent jurisdiction. Similarly, the Complainant’s reference to the Anticybersquatting Consumer Protection Act (“ACPA”) has no application to disputes brought for resolution under the UDRP.
For these reasons, the Registrant lacks rights or legitimate interests. Accordingly, the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
The third element of the Policy requires the Complainant to prove that the Respondent both registered and is using the Disputed Domain Name in bad faith. Here, again, the Respondent’s stated purpose in registering the Disputed Domain Name is a factor in determining this issue, and so too is the Respondent’s separate decision to redirect the Disputed Domain Name to a website that advertises his own services.
Paragraph 4(b) lists four nonexclusive circumstances of bad faith registration and use. The Panel finds Paragraphs 4(b)(i) and 4(b)(iv) are applicable in determining this dispute. These subsections read as follows:
i.
“[C]ircumstances indicating that
you have registered or you have
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to complainant who is the
owner of the trademark or service mark or to a competitor of that Complainant,
for valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name.”
[. . .]
iv. [B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Respondent, by its own account, registered the Disputed Domain Name for a purpose that could only be realized if the Complainant agreed to buy into the Respondent’s premise. Thus, the only logical inference to be drawn from Respondent’s registration and use of the Disputed Domain Name (which in fact the Respondent implicitly admits) was to sell its so-called “idea” to the Complainant. That conduct supports violation of subparagraph 4(b)(i) of the Policy in that the “primary purpose” of the registration was seeking benefits from the Complainant in exchange for an agreement to negotiate the purchase of the Respondent’s “idea” and for transfer of the Disputed Domain Name.
Upon failing to obtain the Complainant’s attention for its “idea” the Respondent redirected the Disputed Domain Name to its own website. This was a successful stratagem because it caught the Complainant’s attention to the registration and use of the Disputed Domain Name. But, as the Respondent reassures the Panel, this was “only done to provide the best way for State Farm to contact me. If State Farm is interested in my marketing idea.”
The Panel takes it that the Complainant is not interested in the Respondent’s “idea.” There can be no dispute that the Respondent clearly had actual knowledge of the Complainant and its rights in the mark. Actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Paragraph 4(a)(iii) of the Policy. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely redirect to its own website); also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").The Panel in Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) found that redirecting the disputed domain name to respondent’s own website for commercial gain supports a conclusion of bad faith registration and use.”
The redirected website advertises the Respondent’s services. By this stratagem, the Respondent was “intentionally attempt[ing] to attract, for commercial gain, Internet users to [its] website” in violation of subparagraph 4(b)(iv) of the Policy. Given the notoriety of the Complainant and its mark (and its fame as other panelists have recognized in many cases) it “creat[es] a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As the Panel understands it, the Respondent (who is not an attorney) believed that it had a legal right to register the Disputed Domain Name because (although not solely because) there are many other domain names on the Internet that allegedly incorporate the Complainant’s mark. If this were an accepted legal basis for good faith conduct by alleged cybersquatters, it would be a novel theory to escape liability. All well-known and famous brands such as State Farm are regular targets of infringement as demonstrated by the daily statistics. At any one time there are multiple claims of infringing domain names. Wac-a-moling, it can truthfully be said, is the central experience of the UDRP, and for which it was implemented. If respondents’ could affirmatively defend their registrations by listing domain names that they have found on the Internet (as this Respondent does—"I have attached trademarks that are live, which are just as similar as mine”)—it would be a heyday for cybersquatters. However, this affirmative defense theory has not found favor with Panels and justifying registering infringing domain names on that ground has no legal merit under UDRP jurisprudence.
The incorporation of the State Farm mark in the Disputed Domain Name for the purpose for which it was created is prima facie bad faith. “[B]y knowingly choosing a domain name which solely consists of Complainant’s trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties,” William Hill Organization Limited v. Fulfillment Management Services Limited, Case No. D2000- 0826. This conduct is not excused or justified by the Respondent’s ignorance of the law. That there may be other infringers of this Complainant’s mark is for another day and not a license to infringe.
Accordingly, the Complainant has satisfied Paragraph 4(a)(iii) of the Policy
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <statefarmbarkley.com> domain name be TRANSFERRED from Respondent to Complainant.
Gerald M. Levine Panelist
Dated: April 18, 2023
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