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Generic Top Level Domain Name (gTLD) Decisions |
State Farm Mutual Automobile Insurance
Company v. Domain For Sale Latonya Thompson a/k/a Domain For Sale Thompson
a/k/a Latonya Thompson
a/k/a www.YouEnvyMe.com, Inc.
Claim Number: FA0411000366229
PARTIES
Complainant
is State Farm Mutual Automobile
Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington,
IL 61710. Respondent is Domain For Sale Latonya Thompson a/k/a Domain For Sale Thompson a/k/a Latonya Thompson a/k/a www.YouEnvyMe.com, Inc. (“Respondent”), 617 The Heights Dr. #C,
Fort Worth, TX 76112.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarms.info>, <statesfarm.com>, <statesfarm.info>, <statesfarm.net>, <statesfarm.org> and <statefarms.biz>, registered with Schlund+Partner Ag, Aaaq.com, Inc.
PANEL
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.
Judge
Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
18, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 18, 2004.
On
November 18, 2004, Schlund+Partner Ag, Aaaq.com, Inc. confirmed by e-mail to
the National Arbitration Forum that the domain names
<statefarms.info>, <statesfarm.com>, <statesfarm.info>, <statesfarm.net>, <statesfarm.org> and <statefarms.biz> are registered with Schlund+Partner Ag,
Aaaq.com, Inc. and that the Respondent is the current registrant of the
name. Schlund+Partner Ag, Aaaq.com,
Inc. has verified that Respondent is bound by the Schlund+Partner Ag, Aaaq.com,
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
November 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 13, 2004 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@statefarms.info,
postmaster@statesfarm.com, postmaster@statesfarm.info,
postmaster@statesfarm.net, postmaster@statesfarm.org
and
postmaster@statefarms.biz by e-mail.
An
untimely Response was received on December 17, 2004. It was considered by the Panel.
On January 3, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Judge Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant’s Contentions
State Farm is a nationally known
company that has been doing business under the name "State Farm"
since 1930. In 1999 State
Farm opened a Federally Chartered Bank known as
State Farm Bank. 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 many other marks that all include the phrase "State Farm.”
In Canada and Mexico, State Farm has
registered marks that include “State Farm.” The domain names registered
by Respondent incorporate
State Farm's registered STATE FARM trademark and are
confusingly similar to State Farm's registered marks.
For over 70 years State Farm has
expended substantial time, effort and funds to develop the good will associated
with the STATE FARM
mark 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 developed its Internet web presence in 1995 using
the domain name <statefarm.com>. At its website, 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. State Farm has expanded substantial time,
effort and funds to develop its
website as a primary source of Internet
information for the products, services and information provided by State Farm.
In September 2004, it was brought to State Farm's attention
that Domain For Sale Latonya Thompson a/k/a Domain For Sale Thompson a/k/a
Latonya Thompson a/k/a www.YouEnvyMe.com, Inc. of Forth Worth, Texas registered
Complainant's STATE FARM trademark as part of the
<statefarms.info> domain
name. In November 2004, it was brought
to State Farm's attention that Respondent registered Complainant's STATE FARM
trademark as part of
five more domain names, <statesfarm.com>, <statesfarm.info>,
<statesfarm.net>, <statesfarm.org> and <statefarms.biz>.
The first domain name, <statefarms.info>, sends
a person to the link <http://s98612679.onlinehome.us/index2.html> which
is the home page for www.YouEnvyMe.com, Inc.
Within the website, each page says
it is currently updating content. There is a link for
"Insurance" on the website, which
would be in direct competition with
Complainant. The <statesfarm.com>, <statesfarm.info>,
<statesfarm.net> and <statesfarm.org> domain names
send a person to a website for 1&1 Internet, Inc., which claims the
"domain has just been registered for
one of our customers!" No
legitimate content is shown for each of those domain names. The last domain
name, <statefarms.biz>, sends a person to a web page that is also
currently under construction for a hosting company, Hostway. No legitimate
content is
shown.
On November 1, 2004, a cease and desist letter was sent by
Complainant's Intellectual Property Administrator via certified mail to
Respondent with regard to the <statefarms.info> domain name.
A certified mail receipt has been received back to Complainant, signed by
Respondent on November 5, 2004. No response
was received from Respondent.
Because of State Farm's substantial efforts, the public
associates the phrase "State Farm" and "State Farm
Insurance"
with the owner of the STATE FARM and STATE FARM INSURANCE
service marks. The STATE FARM marks are
distinctive and have acquired secondary meanings. The domain names at
issue are confusingly similar to State
Farm's service marks that it has been
using since 1930 and to State Farm's other registered marks. Moreover,
the domain names are
confusingly similar to products, services or information
that State Farm offers generally to the public as well as on its websites.
Consumers who discover these domain names are likely to be confused as to
Respondent's affiliation with, sponsorship by or connection
to State Farm.
Respondent has no right or legitimate
interest in the disputed domain names.
Respondent is not associated with, affiliated with or sponsored by State
Farm, the owner of the STATE FARM and STATE FARM INSURANCE
service marks. State Farm did not authorize Respondent to
register the domain names or to use STATE FARM trademarks for Respondent's
business purposes.
Respondent is not commonly known under the disputed domain
names.
State Farm believes that Respondent registered the names to
create the impression of association with State Farm, its agents, products,
sponsorships, and services; to trade off the good will associated with the
State Farm name; and/or to create initial interest confusion
for individuals
looking for information about State Farm.
It is clear that the names registered by Respondent are
confusingly similar to State Farm's trademarks. Indeed, the names are
virtually
identical to State Farm's registered STATE FARM mark. These
domain names are clearly intended to attract individuals seeking information
on
State Farm and create customer confusion as to the source or sponsorship of the
site.
State Farm has filed numerous
complaints relating to its domain names under the ICANN Uniform Domain Name
Dispute Resolution Policy.
The arbitrators have consistently found that
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 and that such registrations
have
been done in bad faith.
As in the cases above, Respondent has
no legitimate claim to the domain names at issue. In addition, the facts
in evidence demonstrate
that Respondent has registered and is using the names
in bad faith.
While Respondent registered the <statesfarm.com>,
<statesfarm.info>, <statesfarm.net>, <statesfarm.org>
and <statefarms.biz> domain names giving the impression that
interested individuals will receive information regarding State Farm, the fact
is individuals
are either sent to a site that is an undeveloped page for
1&1 Internet, Inc. or a hosting company, Hostway and the <statefarms.info>
domain name provides information for www.YouEnvyMe.com, Inc. which includes an
insurance link that is in direct competition with
Complainant. The use of a
trademark to generate business in other fashions reflects that Respondent has
acted in bad faith.
Respondent is not using, nor are there
any demonstrable preparations to use the <statesfarm.com>, <statesfarm.info>,
<statesfarm.net>, <statesfarm.org> or <statefarms.biz> domain
names in connection with a bona fide offering of goods or services. As of
the date of this Complaint, there was no legitimate
content associated with the
name and no demonstrable indications that legitimate content would be
forthcoming. Failure to resolve
the domain name to legitimate website
content indicates that Respondent has no legitimate reason for having
registered the name and
demonstrates that it has registered and is using the
name in bad faith.
Respondent's use of the <statefarms.info>,
<statesfarm.com>, <statesfarm.info>, <statesfarm.net>,
<statesfarm.org> and <statefarms.biz> domain names
constitutes typosquatting and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).
Respondent knew or should have known of
Complainant's long-term use of the STATE FARM and STATE FARM INSURANCE
trademarks and the
long-term use of the <statefarm.com> domain name. Respondent's registration of the domain
names by the Respondent was intended to be in bad faith.
B.
Respondent’s Contentions
The
domains in question are just geographical areas on the Internet, serving to
identify locations wherein our company can be located.
The
Complaint and exhibits has proven that there is nothing on www.YouEnvyMe.com or
any of the domains in question that display trademarks
or products of State
Farm.
Of
all exhibits submitted, not one was a registered
domain trademark of
State Farm.
Complainant
has not displayed any exhibits
that prove that the domains in question are actually registered domain
trademarks of State Farm.
FINDINGS
For the reasons set forth below, the Panel finds
Complainant has proved that the domain names should be transferred.
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.
Complainant
has rights in the STATE FARM mark through registration of the mark with the
United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1.979,585, issued
June 11, 1996). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”).
Respondent’s
domain names are confusingly similar to Complainant’s mark because the domain
names incorporate the mark in its entirety
and merely add the letter “s” and a
generic top-level domain, such as “.com” or “.info.” The Panel finds that such minor changes are insufficient to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(“the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does
not prevent
the likelihood of confusion caused by the use of the remaining
identical mark. The domain name <creampies.com> is similar in
sound,
appearance, and connotation”); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to
Complainant’s
“National Geographic” mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal
significance since use of a gTLD is required of domain
name registrants.").
The
omission of the space between the words in Complainant’s STATE FARM mark is
insufficient to distinguish the domain names from
the mark. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible
in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO
Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is
identical to the WEMBLEY STADIUM mark).
Complainant has proved this element.
The
Panel finds that Respondent is not commonly known by the domain names and
concludes that Respondent lacks rights and legitimate
interests in the domain
names pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also
RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known
by the domain name prior to
registration of the domain name to prevail").
Complainant
asserts that the disputed domain names, with the exception of <statefarms.biz>,
resolve to websites that link to competing companies. Competing commercial use of a domain name that is confusingly
similar to another’s mark does not constitute a bona fide offering of
goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a Respondent’s operation
of a web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”); see also N.
Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no rights or legitimate interests in a domain name that diverted
Internet users
to Respondent’s competing website through the use of
Complainant’s mark).
Complainant
asserts and the Panel finds that Respondent has registered and used the
disputed domain names, with the exception of <statefarms.biz>, in
bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain names
confusingly similar to Complainant’s mark and using them
to market competing
insurance services. See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered
the names primarily for the purpose of disrupting Complainant's
business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business).
The
Panel finds that Respondent engaged in typosquatting by registering and using
domain names that are slight variations of Complainant’s
STATE FARM mark. Thus, the Panel may conclude that such
typosquatting is evidence of bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off
traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201
(Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii).").
Complainant claims that Respondent has passively held the <statefarms.biz>
domain name. This is evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶
4(a)(iii). See DCI
S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in
bad
faith).
Complainant
has proven this element.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarms.info>,
<statesfarm.com>, <statesfarm.info>, <statesfarm.net>,
<statesfarm.org> and <statefarms.biz> domain names be
TRANSFERRED from Respondent to Complainant.
Judge Karl V. Fink (Ret.), Panelist
Dated: January 17, 2005
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