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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
State Farm Mutual Automobile Insurance Company v. Go2 Systems, Inc.
Claim Number: FA0105000097182
PARTIES
The Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL, USA ("Complainant") represented by Janice K. Forrest of State Farm Mutual Automobile Insurance Company. The Respondent is Go2 Systems, Inc., Irvine, CA, USA ("Respondent") represented by Mark A. Finkelstein of Latham & Watkins.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "gotostatefarm.com" and "go2statefarm.com", registered with Domain Bank, Inc.
PANEL
The undersigned certifies that each has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a Panelist in this proceeding.
The panelists for this proceeding are the Hon. Nelson A. Diaz, G. Gervaise Davis, Esq., and Hon. R. Glen Ayers, Presiding Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on May 8, 2001; the Forum received a hard copy of the Complaint on May 9, 2001.
On May 10, 2001, Domain Bank, Inc. confirmed by e-mail to the Forum that the domain names "gotostatefarm.com" and "go2statefarm.com" are registered with Domain Bank, Inc. and that the Respondent is the current registrant of the name. Domain Bank, Inc. has verified that Respondent is bound by the Domain Bank, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2001 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@gotostatefarm.com and postmaster@go2statefarm.com by e-mail.
A timely response was received and determined to be complete on June 5, 2001.
On June 12, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Nelson A. Diaz, G. Gervaise Davis, Esq., and Hon. R. Glen Ayers as Panelists. R. Glen Ayers served as chair.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, State Farm Mutual Automobile Insurance Company, contends that "gotostatefarm.com" and "go2statefarm.com" are confusingly similar to its "STATE FARM" trademark or marks. These marks have been in use since 1930 and have been registered since 1996. Complainant has also registered domain names incorporating the "STATE FARM" marks.
Complainant asserts that the Respondent registered the two domain names in May 2000 but that the domain names lead to a site with Respondent’s logo but no content. State Farm immediately sent a cease and desist letter and an email. Respondent replied by admitting that the domain names were registered to provide a commercial benefit to Respondent but Respondent asserted that this was "fair use." Respondent asserted in response that its GO 2 system was designed to help customers find local offices of the Complainant.
Complainant assets that it has not authorized Respondent to use the "STATE FARM" mark or name.
Respondent ultimately unilaterally agreed to leave the names inactive unless it received express permission to use the domain names as a part of the "GO 2" system.
Complainant assets that the Respondent has no rights in the name or mark "STATE FARM."
Complaint asserts bad faith. Respondent has no rights in the name and knew of Complainant’s trademark rights. Complainant asserts that Respondent admits that it intended to divert customers looking for its business or services to Respondent’s site for commercial gain.
Complainant assets that Respondent is not authorized to sell Complainant’s products or services and is not an agent of the Complainant.
Complainant asserts that Respondent is using its trademarks and name to build its own business and that somehow the domain names are being used to compete with Complainant.
Complainant also asserts that the registration has been used to force the Complainant into a business relationship. The idea seems to be that Complainant will be forced to become a GO 2 customer; registration somehow means that if Complainant wishes to be on the GO 2 system, it will be forced to pay a fee to Respondent.
Respondent has engaged in a pattern of registering famous marks as domain names preceded by the "go2" prefix.
B. Respondent
Respondent timely filed its Response asserting that it was not a cybersquatter but rather was a legitimate business engaged in the development of a "global addressing and locator system designed for physical and electronic navigation with the Internet and Internet-enabled portable devices ...."
Use of the "go2" format allegedly allows the user to "go to" a web site with information about a particular business -- location, address, telephone number, or directions to the nearest office. The business name follows the "go2" prefix.
Respondent denies that the domain names in question are identical or "confusingly similar. Respondent asserts that addition of the prefix changes the sound and meaning and does not create any confusion between the domain name and the goods and services offered by the Complainant.
Respondent asserts that it has a legitimate interest in the name in that it provides location services, much like the telephone directory "Yellow Pages."
Respondent denies any bad faith. First, Respondent notes that Complainant has offered no "proof" of bad faith. Further, it argues that it has not registered the names for purpose of resale, nor has it registered them to prevent Complainant from using the domains. It also notes that Complainant could not use the "GO 2" prefix, since that is a registered trademark.
Respondent denies that it is trying to disrupt Complainant’s business; Respondent offers no insurance products or services for sale.
Respondent also denies that it has used the domain name to attract Internet users for gain.
Finally, Respondent asserts that it has met the requirements of Policy Paragraph 4(c): preparation for use before notice "in connection with a bona fide offering of goods or services"; Respondent is known by the domain name; or, Respondent is making fair use of the name. Respondent asserts that its conduct falls within these defenses or within what it refers to as a "safe harbor."
FINDINGS
The existence and validity of the Complainant’s marks are not at issue. The Panel finds that the domain names in question are so similar to Complainant’s marks that the domain names may be said to be confusingly similar to the marks held by the Complainant.
The Panel also finds that the Respondent has no "rights" in the marks; it is not a licensee nor is it commonly known as "STATE FARM."
However, the Panel finds no evidence of bad faith and finds that the intended use by the Respondent is "fair use."
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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
As indicated above, the names are confusingly similar to the marks. To Panelists R. Glen Ayers and G. Gervaise Davis, this is a close question. As Respondent points out, Gorstew Ltd. & Unique Vacations, Inc. v. Sunset Leisure Group, FA 94943 (Nat. Arb. Forum July 12, 2000) ("Gorstew") held that "go-to-sandals.com" when used by a travel agency did not violate the trademark rights of the resort known as "Sandals" (a registered mark). Panelist Nelson A. Diaz does not believe the question is close, and distinguishes ("Gorstew") because the Respondent had posted a disclaimer.
Rights or Legitimate Interests
Again, the panel finds that the Respondent has no rights in or legitimate interests in the phrase "State Farm." Again, a close question, as pointed out in the Gorstew decision.
Panelist Nelson A. Diaz would hold for Respondent on this point, because "go2statefarm.com" and "gotostatefarm.com" incorporate Respondent’s own mark, giving Respondent rights in the domain name itself.
Registration and Use in Bad Faith
However, the Panel finds absolutely no evidence of bad faith and ample evidence of "fair use" [See Policy paragraph 4(c)].
As Panelist Nelson A. Diaz points out, Respondent has successfully shown evidence that, "before any notice to [Respondent] of the dispute, [Respondent has made] use of, or domonstrable 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." Complainant was one of many "national concerns" which Respondent had targeted as potential venture partners.
Respondent is in the business of providing locator services. It is not attempting to sell insurance. It is attempting to create a business which will be valuable to Internet users seeking to locate the providers of goods and services. It has had some success with this business plan and has "signed up" a number of other national concerns.
The Panel finds that there is no likelihood that an Internet user would be confused by this set of facts into believing that the locator function ("go to") and the sale of insurance products by the Complainant were somehow linked. See, e. g., Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000).
DECISION
The domain names shall not be transferred.
Hon. Nelson A. Diaz, G. Gervaise Davis, Esq., and Hon. R. Glen Ayers, Panelists
Dated: June 27, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/1242.html