Generic Top Level Domain Name (gTLD) Decisions

Since 1930, Complainant has being doing business under the name "State Farm". Complainant has expended time, effort and resources to develop the goodwill associated with its numerous registered and unregistered trademarks and service marks, including the mark, STATE FARM. The marks are widely used and recognized throughout the United States.

On January 11, 2000, Respondent registered the domain names "STATE-FARM-INSURANCE-CLAIMS.COM" and "STATE-FARM-INSURANCE-COMPANY.COM".

Currently, the domain names resolve to an active web sites soliciting information in order to provided "news information and reporting."

In registering the domain names with the Registrar, Respondent agreed to resolve any dispute regarding its domain names pursuant to the Rules and the Policy.

To obtain the requested relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

As discussed below, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.

Complainant has provided evidence that Respondent has no rights or legitimate interest in the domain names: Respondent has never done business or traded under the domain names; Respondent does not have any trademark or intellectual property rights in the domain names; Respondent has never been known by the domain names in question.

Under Paragraph 4(c) of the Policy, Respondent may rebut Complainant’s allegations by demonstrating its rights or legitimate interest in the domain name. If proven, the following non-exclusive circumstances may serve as evidence of Respondent’s rights or legitimate interest in the domain name:

To establish it rights or legitimate interest in the domain names, Respondent has relied on its alleged use of the domain names for legitimate noncommercial or fair use purposes, namely the gathering, sharing and dissemination of "news" and other information.

While the Panel agrees that Respondent has a right to freely disseminate news and commentary about State Farm, it cannot agree that Respondent’s First Amendment rights may be used in a manner that unfairly takes advantage of State Farm’s commercial interests in the Mark. In balancing the rights of the parties, the Panel specifically finds that while Respondent is free to publish its views about State Farm it may not identify itself as State Farm in order to do so. By registering the domain names in question and linking them to his web site, Respondent will undoubtedly divert consumers searching for Complainant. Accordingly, the Panel finds that the Complainant has met its burden of proof with regard to the second prong under paragraph 4(a).

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

Complainant has established that Respondent has registered other domain names that incorporate the famous marks of others. The panel finds that this pattern of conduct was intended to prevent others, including Complainant, from obtaining domain names corresponding to their trademarks. While Respondent may not be a serial "domain squatter" in the ordinary sense of the term, its conduct is nonetheless a plain violation of paragraph 4(b)(ii) of the Policy. Moreover, as discussed above, its conduct is not protected by the rights of fair use. See Planned Parenthood Fed’n of America v. Bucci, 1997 U.S. Dist. Lexis 3338 (S.D.N.Y. 1997. In determining that Respondent is not entitled to identify itself as Complainant, the Panel recognizes that there exist other, more appropriate fora, that will allow Respondent to freely express its views in a manner that does not exploit a trademark holder’s rights.

The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain names in bad faith.

Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented. The Panel concludes: (a) that the domain names <state-farm-insurance-claims.com> and <state-farm-insurance-company.com> are confusingly similar to Complainant’s marks; (b) that Respondent has no rights or legitimate interest in the domain names; and (c) that Respondent registered and used the domain names in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain names be transferred to Complainant.