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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
State Farm Mutual Insurance Company v. Tom Reger
Claim Number: FA0009000095651
PARTIES
The Complainant is State Farm Automobile Insurance Company , Bloomington, IL, USA ("Complainant") represented by Janice Forrest, State Farm Mutual Automible Insurance Company. The Respondent is Tom Reger, Seattle, WA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is statefarmclaims.com, registered with Register.com.
PANELIST
The undersigned 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.
Judge Karl V. Fink (Ret.) is Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 22, 2000; The Forum received a hard copy of the Complaint on September 22, 2000.
On October 5, 2000, Register.com confirmed by e-mail to The Forum that the domain name statefarmclaims.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On October 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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@statefarmclaims.com by e-mail. Respondent timely submitted a Response and thereafter, pursuant to The Forum’s Supplemental Rule #7, an additional submission was received from Complainant. All submissions by the parties were considered by the panel.
On November 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
State Farm is a nationally known company that has been doing business under the name "State Farm" since 1930. State Farm engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
State Farm first began using the State Farm trademark in 1930 and registered it with the Patent and Trademark office on June 11, 1996. State Farm has also registered with the Patent and Trademark Office a number of other marks that all include the phrase "State Farm". State Farm has also registered or applied for registration for a number of marks in Canada, the European community and Mexico.
For over 70 years State Farm 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. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
State Farm employees are not permitted to use State Farm intellectual property without permission and unauthorized employees are not permitted to register Internet domain names or establish Internet websites using the State Farm name.
State Farm 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 as well as substantial content relating to claims handling. A large portion of State Farm’s website relates to its claims operation. From State Farm’s Internet site users can receive information about regional claims offices, report a claim on line, and obtain other information relating to the claims process. State Farm has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided about or by State Farm.
In December 1999, State Farm learned, that Respondent had registered the trademark "State Farm" as part of an Internet domain name on November 19, 1999. An actual website has not been developed. Respondent had no authority or direction from State Farm to establish the website and he did not voluntarily contact State Farm to indicate that he had registered the domain name for State Farm and he did not attempt to transfer the name to State Farm.
On March 10, 2000 State Farm sent a cease and desist letter to Respondent for which Respondent signed a receipt.
After being contacted by State Farm, Respondent agreed to transfer the name to State Farm in exchange for reimbursement of the $70.00 registration fee. Respondent signed ownership transfer forms that he received from Complainant for Network Solutions although the domain name was registered with Register.com.
Respondent has also registered several domain names that incorporate the trademarks of other well known insurance companies. A number of these were registered on the same date that Respondent registered the domain name at issue.
Respondent’s domain name is confusingly similar to Complainant’s service mark that it has been using since 1930 and the Complainant’s other registered marks.
Respondent has no legitimate interest in the domain name.
Respondent has acted in bad faith. The use of the domain name is clearly intended to attract individuals seeking information on State Farm and creates consumer confusion as to the source or sponsorship of the materials contained on the site.
Respondent has not used and does not intend to use the name for a legitimate purpose. He does not have any intellectual property rights or other valid interests in the domain name. Respondent registered the domain name for his own purposes.
After the filing of the arbitration the parties continued settlement negotiations. Respondent has agreed to transfer the name but the terms still could not be agreed upon.
B. Respondent
Respondent was an employee of the Complainant at the time the domain name was registered. His intention was to use the domain name for a union for State Farm claim workers or to convey the domain directly to the company.
The Respondent has not developed the domain and the name has never resolved to a website other than any page the registrar assigned.
When requested, Respondent executed transfer documents that were provided by Complainant. These were for the wrong registrar.
Respondent has been agreeable to transferring the domain name if an agreement can be reached concerning language for a hold-harmless agreement which has not been done.
FINDINGS
State Farm is a nationally known company that has been doing business under the name "State Farm" since 1930. State Farm engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
State Farm first began using the State Farm trademark in 1930 and registered it with the Patent and Trademark office on June 11, 1996. State Farm has also registered with the Patent and Trademark Office a number of other marks that all include the phrase "State Farm". State Farm has also registered or applied for registration for a number of marks in Canada, the European community and Mexico.
For over 70 years State Farm 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. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
State Farm employees are not permitted to use State Farm intellectual property without permission and unauthorized employees are not permitted to register internet domain names or establish internet websites using the State Farm name.
Respondent had no authority or direction from State Farm to establish the website and he did not voluntarily contact State Farm to indicate that he had registered the domain name for State Farm and he did not attempt to transfer the name to State Farm.
Respondent has also registered several domain names that incorporate the trademarks of other well known insurance companies. A number of these were registered on the same date that Respondent registered the domain name at issue.
Respondent’s domain name is confusingly similar to Complainant’s service mark that it has been using since 1930 and the Complainant’s other registered marks.
Respondent has acted in bad faith. The use of the domain name is clearly intended to attract individuals seeking information on State Farm and creates consumer confusion as to the source or sponsorship of the materials contained on the site.
Respondent has not used and does not intend to use the name for a legitimate purpose. He does not have any intellectual property rights or other valid interests in the domain name. Respondent registered the domain name for his own purposes.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Respondent’s domain name is confusingly similar to the Complainant’s mark STATE FARM. See General Electric Co. v. Forddirect.com, Inc. D2000-0394 (WIPO June 22, 2000)(finding that adding the generic term "direct" to the Complainant’s mark (GE CAPITAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept 14, 2000)(finding that combining the generic term "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusingly similarity aspect of the ICANN Policy).
This ruling is consistent with other cases involving State Farm’s trademarks in a domain name. The use of State Farm’s trademarks in a domain name whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm’s trademarks. See State Farm Mutual Automobile Insurance Company v. Advisory Services, Inc., FA94662 (June 8, 2000); State Farm v. Bulldog, Inc., FA94427 (May 27, 2000); State Farm v. I & B, FA94719 (June 8, 2000); State Farm v. JIT Consulting, FA94335 (April 24, 2000); State Farm v. Life en Theos, FA94663 (June 1, 2000); State Farm v. J & B, Inc., FA94804 (June 13, 2000); State Farm v. Richard Pierce, FA94808 (June 6, 2000). The public could mistakenly be drawn to Respondent’s site by the confusingly similar domain name. Any non-affiliation information would not be received until after the public had gone to this site. See State Farm v. Kyle Northway, FA 95464 (Nat. Arb. Forum October 11, 2000).
Complainant has proven this element.
Rights or Legitimate Interests
The following circumstances, if shown, would be evidence of rights and legitimate interests in the domain name:
See Melbourne IT Limited v. Grant Matthew Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before the domain name dispute arose, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name);
Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name);
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1)Respondent is not a licensee of Complainant; (2) Complainant’s rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question);
Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the Respondents have not established any rights or legitimate interests in the said domain name).
Respondent may accomplish his stated purpose to have a site for State Farm’s claim workers without the use of State Farm’s trademark.
See Chi-Chi’s, Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000)(finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for "public comment" on the Internet).The Respondent has not shown any possible rights or legitimate interests in the domain name.
Complainant has proven this element.
Registration and Use in Bad Faith
Evidence of bad faith registration and use has been shown by Respondent registering numerous domain names combining marks of others with the word "claims". See Hitachi, Ltd v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding evidence of bad faith where the Respondent registered numerous domain names combining marks of others with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, <citreon2000.com>).
Registering a domain name in order to prevent the owner of the mark from using its mark in a domain name is evidence of bad faith, provided that there is a pattern of conduct. Policy ¶ 4.b.(ii). The Complainant has shown that the Respondent is the owner of several domain names that infringe upon other’s trademarks. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names); BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question do not link to any on-line presence or website).
Respondent has registered and used the name in bad faith.
The panel finds that Complainant has proven this element.
DECISION
The panel directs that the domain name statefarmclaims.com be transferred to Complainant, State Farm Mutual Automobile Insurance Company.
Judge Karl V. Fink
Retired Judge
Arbitrator
Dated: November 14, 2000
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