State Farm Loses BigStateFarmAgent.com UDRP

State Farm, the very large insurance company, filed a UDRP against BigStateFarmAgent.com. The UDRP was filed at the National Arbitration Forum (NAF), and the respondent did not file a response to the UDRP. Surprisingly to me, the panelist ruled against State Farm and the domain name will be retained by the registrant.

The panelist did not find the domain name to be confusingly similar to State Farm’s trademark, and as a result, the UDRP failed. Because a UDRP requires a complainant to prove all aspects of the UDRP, the panelist did not discuss the issues of the domain name being registered and used in bad faith, nor did he discuss whether or not the domain registrant had legitimate rights and interests in the domain name.

Here’s an excerpt from the decision discussing why the panelist ruled that the domain name was not confusingly similar to State Farm trademarks:

“Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant provides evidence of its USPTO trademark registration the Panel is satisfied that it has rights in STATE FARM.

The Panel notes that the Complaint carries no submissions with respect to the identity or confusing similarity of the terms. Another panel may have refused the Complaint for this reason alone. However, this Panel has made its evaluation and in so doing has followed the agreed principle that in most cases (including this case) the non-distinctive gTLD, “.com”, can be disregarded[iii]. The comparison then resolves to STATE FARM with the individually recognizable words, “big state farm agent”, of the disputed domain name. Clearly, the terms are not identical. As a broad principle, UDRP panelists are in agreement that the test of confusing similarity involves a side-by-side comparison of the domain name and the (textual) components of the relevant trademark to assess whether the trademark is recognizable within the disputed domain name[iv]. It is understood by UDRP panelists that, in general, where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive, geographical, pejorative, meaningless, or otherwise non-distinctive terms would not prevent a finding of confusing similarity[v]. That said, assessment is made on a case-by-case basis and here, in spite of the presence of the trademark with two ordinary words “big” and “agent”, the syntax of the domain name makes another reading more obvious to an Internet user, namely, “‘Big State’ farm agent”. The Panel finds that reading of the domain name intuitive and so finds that the primary perception of the domain name would not be that of trademark mixed with other terms.

The Panel finds that the disputed domain name is not confusingly similar to Complainant’s trademark. The Panel therefore finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.”

Interestingly, the bottom of the landing page for BigStateFarmAgent.com indicates that the domain name is in expired status: “This domain is pending renewal or has expired. Please contact the domain provider with questions.” Perhaps State Farm will be able to get the domain name if it completes the expiry cycle.

I am often critical of poor UDRP decisions involving descriptive domain names, and I found this decision to be surprising.