DECISION

State Farm Mutual Automobile Insurance Company v. Ellen Lee

Claim Number: FA0409000335445

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forest, One State Farm Plaza A-3, Bloomington, IL 61710.  Respondent is Ellen Lee (“Respondent”), 1143 Otis Drive, Alameda, CA 94501.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmtrafficschool.com>, registered with Register.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Michael Albert as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2004; the Forum received a hard copy of the Complaint on September 28, 2004.

On September 28, 2004, Register.com confirmed by e-mail to the Forum that the domain name <statefarmtrafficschool.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 Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 18, 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@statefarmtrafficschool.com by e-mail.

A timely Response was received and determined to be complete on October 12, 2004.

On October 20, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant State Farm alleges that it is a nationally known company that has been doing business under the name STATE FARM since 1930; that it opened a federally chartered Bank under the name State Farm Bank in 1999; that it engages in business in both the insurance and financial services sectors; and that it advertises its STATE FARM mark extensively nationwide and otherwise invests heavily in promoting the goodwill associated with that mark.

State Farm further avers that it owns a federal registration for the mark STATE FARM that dates back to 1996, as well as analogous registrations in other countries.

State Farm developed its Internet web presence in 1995 using the domain name <statefarm.com>.  At that site, State Farm offers information relating to insurance and financial service products (among other things).

In February 2004, State Farm learned that Respondent had registered the domain name <statefarmtrafficschool.com> (the “Domain Name”).  It sent Respondent several cease-and-desist letters but received no response.

State Farm alleges that Respondent has no legitimate right or interest in the Domain Name; that the Domain Name is confusingly similar to State Farm’s mark, and is likely to suggest an association between Respondent’s services and Complainant or its services.  Respondent is not authorized to sell products or services or engage in sponsorships on behalf of State Farm. 

Finally State Farm alleges that Respondent engages in no bona fide business at or through the Domain Name and instead redirects Internet traffic to a site that offers Internet services.

B. Respondent

Respondent admits that STATE FARM is Complainant’s well-established mark.

Respondent further admits that she has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services, and that Respondent is not commonly known by the Domain Name.

Respondent avers that she registered the Domain Name with the intent to start a traffic school, but has yet to complete the curriculum.  Respondent denies any intent to confuse the public.

Respondent denies that she acted in bad faith.  She specifically denies that she acquired the Domain Name with intent to sell it, or to prevent State Farm from reflecting its mark in a corresponding domain name, nor for any other purpose prohibited by the Policy.

Respondent alleges that she “is not in the business of selling insurance” and therefore “is not categorized as a [sic] Complainant’s competitor.”  Finally, Respondent denies that she intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship or affiliation.

FINDINGS

The Panel finds that:

- Complainant has established that it owns a distinctive, protected, federally-registered, and quite possibly famous service mark STATE FARM;

- that the Domain Name, <statefarmtrafficschool.com> is confusingly similar to Complainant’s mark.

- Respondent has no legitimate right or interest in the Domain Name; and

- Respondent has registered and used the Domain Name in bad faith as defined in the Policy.

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

It is undisputed that State Farm owns federal registrations for the mark STATE FARM, and has used it since 1930.  Complainant’s registrations of its mark on the Principal Register of the USPTO establishes a presumption of validity of the marks under United States law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, [1999] USCA9 436; 189 F.3d 868 (9th Cir. 1999).  Respondent concedes Complainant’s ownership of such rights.

The Domain Name incorporates Complainant’s mark in full, and adds to it two additional words, “traffic” and “school.”  It is well established that likelihood of confusion between a mark and a domain name is not eliminated, or even necessarily reduced, by the addition of generic terms.  See MasterCard Int’l Inc. v. John Henry Enters., D2001-0632 (WIPO June 28, 2001) (adding word “international” to the trademark “MasterCard” does not eliminate confusion”); AT&T Corp. v. Rice, D2000-1276 (WIPO Nov. 25, 2000) (adding word “global” to an AT&T trademark was insufficient to distinguish the domain name from the trademark).  Indeed, not only does the addition of the descriptor “trafficschool” to Complainant’s well-known mark not prevent confusion, it may actually increase the likelihood of confusion, as consumers may mistakenly believe that the traffic school services Respondent intends to offer through the Domain Name are affiliated with or endorsed by State Farm. 

Respondent’s assertion that she is not Complainant’s “competitor” is immaterial.  Parties need not be direct competitors in order for a likelihood of confusion to exist when one uses the other’s trademark.  Inasmuch as State Farm is known to sell automobile insurance, it is plausible that consumers might believe that it either operates or endorses a traffic school.  But in fact, Respondent’s proposed traffic school is not authorized or endorsed by State Farm.  Accordingly, confusion as to source, origin, or affiliation is likely.

Rights or Legitimate Interests

Respondent concedes that she is not known by the Domain Name and has made no use of it.  Accordingly she has no legitimate rights or interest in the Domain Name.  Her intent to create a traffic school in the future at the Domain Name is not a legitimate right or interest inasmuch as it would be likely to create confusion with Complainant’s mark as discussed above.

Registration and Use in Bad Faith

Respondent claims that “only when Complainant highlighted the potential for confusion did Respondent understand the implications of the use of the registered domain name.”  While it is impossible to be certain as to precisely what was in the mind of a registrant when it registered or used a domain name, absolute proof of such intent is not required to make the determination that bad faith has been shown by a preponderance of the evidence.  In this case, the Panel finds it implausible that Respondent could have been unaware of the risk that consumers might associate “statefarmtrafficschool” with State Farm, the provider of automobile insurance.  Indeed, it is difficult to imagine a reason why Respondent chose that name for a proposed traffic school if not to suggest such an association, and Respondent offers no explanation for her choice of domain name.  While the burden, of course, is on Complainant to show bad faith, the circumstances of this case so compellingly suggest it, that some explanation of a good-faith reason for the choice of name would have been the minimum necessary to undermine such a finding, if indeed it could be undermined at all.

Prior panels have found bad faith from the circumstance of a registrant’s selecting a domain name confusingly similar to a complainant’s mark and that would likely be associated with complainant’s well-known products or services.  See, e.g. Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding bad faith where respondent used the disputed domain name to “redirect the Complainant’s consumers and potential consumers to commercial web sites which are not affiliated with Complainant.”).  Moreover, “[w]hen a domain name comprised of a genuinely famous mark is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting.”  Gen. Motors Corp. v. Vette Owners, D2000-0595 (WIPO, Oct. 20, 2000).  For both these reasons, the Panel finds that Respondent acted in bad faith.

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 <statefarmtrafficschool.com> domain name be TRANSFERRED from Respondent to Complainant.

Michael Albert, Panelist
Dated: November 3, 2004

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