Generic Top Level Domain Name (gTLD) Decisions

State Farm Mutual Automobile Insurance Company
COMPLAINANT,

vs.

Frank Zazza
RESPONDENT.

DECISION
Claim Number: FA0005000094865

PARTIES

The Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL, USA (“Complainant”). The Respondent is Frank Zazza, New Rochelle, NY, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “LIKEAGOODNEIGHTBOR.COM”, registered with Register.com, Inc. (“Register.com”) on December 26, 1999.

PANELIST(s)

The parties have chosen resolution of this proceeding by a single Panelist.  The Panelist is Jonathan Hudis.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”) electronically on May 19, 2000; The Forum received a hard copy of the Complaint on May 22, 2000. 

On May 19, 2000, the Registrar, Register.com, confirmed by e-mail to The Forum that the domain name “LIKEAGOODNEIGHBOR.COM” is registered with Register.com, Inc. and that the Respondent is the current registrant of the name.

On May 23, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of  June 12, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

After clearing potential conflicts of interest, on June 15, 2000, pursuant to the parties’ request to have the dispute decided by a single member Panel, The Forum appointed Jonathan Hudis as the Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

            As used herein, references to the Complaint shall be designated by the abbreviation “Cpl.” , and exhibits (or  “Exh.”) thereto.  References to the Response shall be designated by the abbreviation “Rsp.”, and attachments (or “Attch.”) thereto.

A. Complainant

            In April, 2000, Complainant became aware that Respondent registered the contested domain name LIKEAGOODNEIGHBOR.COM with the Registrar Register.com. (Cpl., p. 2, Exh. 1 - WhoIs information).  This domain name was registered in Respondent’s name on December 26, 1999 (Id.)  As of May 4, 2000, an operational web site had not been developed at the web site that would resolve to the URL http://www.likeagoodneighbor.com.  (Cpl., p. 2., Exh. 2).

            Complainant first began using the mark “Like a Good Neighbor, State Farm is There” in 1971 and registered it with the U.S. Patent and Trademark Office on December 17, 1991 (Cpl., p. 2, Exh. 3).  Complainant states that the contested domain name LIKEAGOODNEIGHBOR.COM incorporates a portion of Complainant’s registered trademark “Like a Good Neighbor, State Farm is There.”

            On April 14, 2000, Complainant sent to Respondent a cease and desist letter via certified mail.  The certified card reflecting Respondent’s receipt was returned on April 20, 2000.  On May 8, 2000, Complainant sent a second cease and desist letter via e-mail to Respondent. As of the date that Complainant filed its UDRP Complaint with The Forum, Respondent did not answer either of Complainant’s letters (Cpl., p. 3, collective Exh. 4).

            Complainant contends that for over 30 years it has expended substantial time, effort and funds to develop the good will associated with the trademark “Like a Good Neighbor, State Farm is There.”  Complainant says that it does not allow unauthorized parties to use its marks as part of their Internet domain names (Cpl., p. 3).

            Complainant asserts that because of its efforts, the public associates the phrase “Like a good neighbor” with the owner of the service mark “Like a Good Neighbor, State Farm is There.”  Complainant further asserts that the Respondent’s domain name incorporates a portion of Complainant’s mark, and that the domain name is confusingly similar to Complainant’s service mark which Complainant has been using since 1971 (Cpl., p. 3).

            Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name; that Respondent is not associated with the Complainant that owns the service mark “Like a Good Neighbor, State Farm is There”; and that Respondent is not doing business using this service mark, nor is he commonly known under the contested domain name (Cpl., p. 3).

Complainant urges that the Respondent’s registration of the disputed domain name was in bad faith in that: (a) Respondent refused to reply to Complainant’s cease and desist letters; (b) Respondent has not expressed any legitimate use of the disputed name to the Complainant; (c) Respondent has refused to explain its actions; (d) Respondent is not using, nor has he demonstrated preparations to use, the contested domain name in connection with a bona fide offering of goods or services; (e) as of the date Complainant filed its UDRP Complaint, there was no legitimate web site content associated with the contested domain name; (f) Respondent has no legitimate reason for having registered the domain name; (g) Respondent is not known by and has never been known by the slogan “Like a Good Neighbor, State Farm is There”; (h) Respondent does not and has never traded using the slogan “Like a Good Neighbor, State Farm is There” ; (i) Respondent does not have any trademark or other intellectual property rights in the contested domain name;  (j) the slogan “Like a Good Neighbor, State Farm is There” has long been associated with Complainant;  (k) Registration of a portion of the slogan by an unauthorized party constitutes an obvious attempt to trade off the good will inherent in that association; and (l) that unauthorized attempts to trade off Complainant’s service mark shows bad faith on the part of the Respondent (Cpl., p. 3).

B. Respondent

Respondent registered the LIKEAGOODNEIGHBOR.COM domain name in December of 1999,  and thereafter created a web site dedicated to the dissemination of prostate cancer research and development.  Respondent chose the contested domain name as a catchy but simple domain name to give prostate cancer victims a comfortable and easy way to remember his planned web site.  Because his friends and neighbors often provided an ear to listen to and helpful advice, Respondent thought that he, like a good neighbor, could do the same on-line (Resp., p. 1).

Respondent tested a number of different names to see which was the most appropriate.  Respondent also conducted various Internet searches using the words in the Domain Name.  At no time was State Farm’s web site retrieved or reference made to State Farm (Rsp., p. 1).

Respondent concedes receiving Complainant’s cease and desist letters, alleging that Respondent’s unauthorized use of Complainant’s mark would cause the public to believe that Respondent’s web site is “sponsored or approved in some way by [Complainant]” and that Respondent “misrepresents the nature, characteristics, qualities and origin” of Respondent’s activities. (Rsp., p. 1, Attch.  A).

By letter dated May 22, 2000, Respondent’s attorney advised Complainant that the allegations are false and that Respondent was not using the name for any insurance related purposes (Rsp., p. 2, Attch.  B).

Respondent submits that the contested domain name is not confusingly similar to Complainant’s mark.  While Respondent concedes that the phrase “like a good neighbor” may generally be associated with Complainant, Internet users are not likely to use this phrase when searching for Complainant’s web-site. Conversely, if an Internet user did enter the phrase “like a good neighbor” or a portion of this phrase on a search engine, Complainant’s web-site would not be retrieved, particularly as of the time when Respondent registered the contested domain name (Rsp., pp. 2-3).

Respondent contends that he has a legitimate interest to the contested domain name, because Respondent disseminates prostate cancer information and has the interest of leading prostate cancer research institutions in doing so, particularly the Cancer Research Institute (“CRI”) (Rsp., p. 3, Attch. C).

Respondent also asserts that he did not register the contested domain name in bad faith, because he had no intention to sell, rent or dispose of the domain name to Complainant or any other party.  Instead, Respondent has developed a web site using the domain name for a completely different purpose: to provide information on new research and treatment (Rsp., p. 4).

Respondent additionally states that he did not register the contested domain name to prevent Complainant  from utilizing its trademark in a corresponding domain name.  Respondent makes this assertion because Complainant previously had made no effort to register its mark as a domain name, despite having the opportunity to do so; and because Complainant abandoned an earlier application to register the mark “like a good neighbor” in April of 1990 (Rsp., p. 4, Attch. E).

Respondent’s concedes the availability of Complainant’s web site at the URL http://www.statefarm.com, and again asserts that Complainant could have, but specifically chose not to register the domain name “likeagoodneighbor.com”. Respondent registered the contested domain name well after the advent of the Internet prompted large corporations to register domain names so as to protect their trademark interests (Rsp., p. 5).

Respondent also mentions that he recently registered “likeagoodneighbor.org and .net”, and wonders why Complainant had not bothered to register its mark as a .org or .net domain name at least to protect its interests.   Respondent further asserts that he did not register the contested domain Name to disrupt any of Complainant’s business and that there has been no indication  that Complainant’s Internet traffic has been affected (Rsp. 5).

Respondent annexes to his Response as Attachment F a printout of his web site as of June 12, 2000.  The page opens with a bold statement that it is “A Prostate Cancer Awareness Site” helping towards “The Road to Recovery”.  Hyperlinks are available to two cancer research institutions.  Nowhere on the web-site is there any mention of Complainant, insurance activities, or profit goals (Rsp., p. 5).   Respondent asserts that Complainant does not point to any specific evidence of end user confusion,  and does not allege that Internet users remotely think Respondent’s web site as somehow sponsored, associated or endorsed by Complainant (Rsp., p. 6).

FINDINGS

            The panel finds as follows:

1. Respondent registered the contested LIKEAGOODNEIGHBOR.COM domain name on December 26, 1999.  From at least that time until May, 2000, Respondent did not prepare to make use or use the contested domain name as an operational web site.  The earliest the Panel finds that Respondent used the contested domain name at all is some time in June, 2000, after commencement of this UDRP proceeding.

2. “Like a Good Neighbor, State Farm Is There” has been registered with the U.S. Patent and Trademark Office as a service mark in the name of Complainant since December, 1991 – in connection with “providing insurance agency services”.  The mark has been used by Complainant since 1971.

3. At the invitation of Respondent, the Panel visited Complainant’s operational web site, located at the URL http://www.statefarm.com. Complainant’s well-developed web site provides a wealth of information regarding Complainant’s automobile, life, health, home, business, and marine insurance services, and Complainant’s financial, consultancy, and banking services.  Complainant’s business includes nearly 16,000 agents, over 76,000 employees, 27 regional offices, and over 1,000 claims offices throughout the United States.  Since 1922, Complainant has written over 64 million insurance policies.  Throughout the pages of Complainant’s web site, it makes several references to its promotional  slogans “Like a Good Neighbor” and “Like a Good Neighbor, State Farm is There.”  Complainant’s rights in the service marks “Like a Good Neighbor” and “Like a Good Neighbor, State Farm is There” has been demonstrated to the satisfaction of the Panel.

4. In contrast, Respondent’s web site located at the URL http://www.likeagoodneighbor.com

is a single page of four short paragraphs, with two operational links – one to the Cancer Research Institute, the other to the American Cancer Society.  The Panel is impressed with the haste in which Respondent appears to have created his web page, after commencement of this UDRP proceeding.

5. Prior to its commencement of this UDRP proceeding, Complainant sent to Respondent two cease-and-desist letters, which Respondent concedes to have received.  Respondent did not respond to either of Complainant’s letters until after commencement of this UDRP proceeding.

6. On June 8, 2000, Respondent also registered with the Register.com domain name Registrar the domain names  LIKEAGOODNEIGHBOR.ORG and LIKEAGOODNEIGHER.NET.  While this matter was pending, the Panel tried to access both of these domain names on the World Wide Web.  Neither domain name was operational as a web site.  From  this, the Panel concludes that Respondent registered these .net and .org domain names either (i)  to ensure that Complainant could not register the phrase “Like a Good Neighbor” in any presently available gTLD, or (ii) to “hedge his bets” in the event that Respondent was unsuccessful in this UDRP proceeding.  The Panel makes no other factual finding regarding, nor does it explicitly or implicitly render a decision upon, Respondents’ registration of the LIKEAGOODNEIGHBOR.ORG and LIKEAGOODNEIGHER.NET domain names.  These .org and .net domain names are not within the present jurisdiction of this Panel.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate 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; and

(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 panel finds that the domain name LIKEAGOODNEIGHBOR.COM is identical in appearance, sound, and commercial impression to Complainant’s common law mark “Like a Good Neighbor”, and confusingly similar in appearance, sound, and commercial impression to Complainant’s registered service mark “Like a Good Neighbor, State Farm is There.”  Both are marks in which Complainant has service mark rights.

            Respondent cites the Panel to Sandy Frank Entertainment, Inc. v. Law Street, Inc. a/k/a Wall Street, Inc. (File FA0002000093669, April 1, 2000), wherein the Panel refused to Order the transfer of the domain name YOUASKEDFORIT.COM.  Sandy Frank is inapposite. In Sandy Frank, the Complainant was the owner of the registered service “You Asked For It” in connection with television entertainment  Respondent alleges that the domain name was registered as a name for a legal question and answer service in connection with the web site www.lawstreet.com which was in the process of development.

The Sandy Frank panel found that there was no evidence that the Respondent was confusing the name of the domain site to the detriment of the Complainant or that the Complainant’s service mark “You Asked For It” for a television series is diminished or tarnished by the proposed use of the phrase for a legal question and answer service.

Here, by contrast, the alleged “services” Respondent offers on his LIKEAGOODNEIGHBOR.COM is the promulgation of information about prostate cancer.  Complainant, part of whose business is the advertising and sale of life and health insurance, would be expected to provide this type of information.  In fact, at Complainant’s web site is a section devoted to providing information on prostate cancer through a click-type questionnaire.  By the very nature of Respondent’s contested domain name and the use he presently is making of it on his web site, Internet users are likely to experience initial interest confusion.  That is, users will think that Respondent’s LIKEAGOODNEIGHBOR.COM is somehow associated with Complainant, which confusion will be exacerbated when users arrive at Respondent’s site and see information about and links to cancer and cancer research organizations. See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 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).

Rights or Legitimate Interests

Paragraph 4(c) of the ICANN Policy specifies how Respondent can prove that he has rights or legitimate interests in the domain name:

(i) before 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; or

(ii) you (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; or

(iii) you 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 panel finds that before notice to Respondent of this dispute, he did not use, nor make demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services.

            The panel also finds that Respondent has not shown to have been commonly known by the contested domain name.

            The panel further finds that Respondent is making use of the contested domain name with the intent to misleadingly divert Internet users to his web site, when users will be thinking that the site is somehow associated with  Complainant’s services associated with its service marks “Like a Good Neighbor” and “Like a Good Neighbor, State Farm is There.”

            Respondent makes much of the fact that Complainant has not provided evidence that there has been diversion of Internet user traffic as a result of Respondent’s use of the contested domain name.  This is of no significance, where Respondent has only been using the domain name for nearly one month.  See, Data Concepts Inc. v. Digital Consulting Inc., [1998] USCA6 240; 150 F.3d 620, 626 (6^th Cir. 1988) (lack of actual confusion of no merit, where there is little opportunity for it to have occurred).

Bad Faith

Paragraph 4(b) of the ICANN Policy provides that 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:

(i) circumstances 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 the 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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by 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 the 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 panel finds that factor (ii) immediately above applies here.  With its registration of the domain names LIKEAGOODNEIGHBOR.COM, LIKEAGOODNEIGHBOR.NET, and LIKEAGOODNEIGHBOR.ORG, Respondent has ensured that Complainant cannot register the service mark “Like a Good Neighbor” in any presently available gTLD.  Moreover, Respondent’s registration of  “Like a Good Neighbor” in three different top level domains shows a pattern of bad faith conduct.

The panel also finds, as additional circumstances of bad faith, that Respondent neither answered Complainant’s cease-and-desist letters nor established an operational web site under the URL http://www.likeagoodneighbor.com until after Complainant instituted this UDRP proceeding.

DECISION

The panel directs that the domain name Registrar, Register.com, transfer the LIKEAGOODNEIGHBOR.COM domain name to Complainant.

Dated:  June 22, 2000                                                          Jonathan Hudis, Esq., Arbitrator