25th Jul 2008

 NATIONAL ARBITRATION FORUM

 DECISION

 State Fund Mutual Insurance Co. v. QTK Internet/Name Proxy c/o Damian Macafee

Claim Number: FA0805001183176

 

PARTIES

Complainant is State Fund Mutual Insurance Co. (“Complainant”), represented by Peter G. Nikolai, of Nikolai & Mersereau, P.A., Minnesota, USA. Respondent is QTK Internet/Name Proxy c/o Damian Macafree (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sfm.com>, registered with Estdomains, Inc.

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.

Diane Cabell, Esq., Terry F. Peppard, Esq., as Panelist, Prof. Darryl C. Wilson as Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2008.

On May 5, 2008, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <sfm.com> domain name is registered with Estdomains, Inc. and that the Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 2008 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@sfm.com by e-mail.

On June 13, 2008, Respondent submitted a Request for Extension of Time to Respond to the Complaint with the National Arbitration Forum. Complainant submitted its consent to the request on June 13, 2008. The National Arbitration Forum granted Respondent’s request on June 16, 2008, setting a deadline of June 27, 2008 by which Respondent could file a Response to the Complaint.

A timely Response was received and determined to be complete on June 27, 2008.

An Additional Submission was received from Complainant on July 3, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

An Additional Submission was received from Respondent on July 8, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

On July 11, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, Esq., Terry F. Peppard, Esq., and Prof. Darryl C. Wilson (Chair) as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

  1. Complainant

Complainant contends that it has common law trademark rights in the mark SFM based on use in commerce since at least 1997.  Complainant further contends that Respondent’s disputed registered domain name <sfm.com> is identical to its mark and that Respondent has no rights or legitimate interest in the domain name.  Complainant also asserts that Respondent registered and is using the disputed domain name in bad faith.

  1. Respondent

Respondent contends that Complainant has no protectable trademark rights of any type in the 3-letter combination SFM predating August 10, 2006, which is more than 7 years after Respondent registered the disputed domain on March 3, 1999.  Respondent also contends that it has a legitimate interest in the domain name and that there is no evidence to support the assertion that the domain was registered or is being used in bad faith.  Respondent further asserts that Complainant has engaged in reverse domain name hijacking since Complainant knew of Respondent’s registration and use of the disputed domain prior to establishing rights in the mark and filing the instant proceeding.

  1. Additional Submissions

Complainant’s Additional Submission contended that Respondent’s answer was “based on a single erroneous premise: that State Fund Mutual has no service mark rights in the mark SFM for its worker’s compensation services.”  Complainant also asserted that it referred to itself by the SFM mark since 1996 on its own website and that the industry has come to reference it by the SFM acronym.  Complainant further contended that Respondent’s use of the disputed domain’s website for advertising was bad faith and that its registration was also in bad faith in light of the alleged secondary meaning attributable to Complainant’s use of SFM at the time Respondent registered the disputed domain.  Complainant reiterated its contention that Respondent had no legitimate interest in the disputed domain.

Respondent’s Additional Submission contended that Complainant’s use of SFM as a short-hand reference for the company name did not establish trademark rights and that the Complainant had not used SFM alone as trademark at any time.  Respondent further disputed Complainant’s assertions regarding Respondent’s lack of legitimate interest in the disputed domain. Respondent stated that it did not deny Complainant’s rights in SFM as a service mark but only recognized those rights as arising via Complainant’s registration in 2006 and only as part of the longer registered mark SFM. THE WORK COMP EXPERTS. 

FINDINGS

Complainant, State Fund Mutual Insurance Company, began business in April 1984 and by 1991 had become Minnesota’s largest worker’s compensation insurer.  From its inception until at least 2006, Complainant identified itself as State Fund Mutual Companies or some variation thereof.  Complainant registered its website <sfmic.com> on January 11, 1996.  In August 2006 Complainant announced that it had renamed itself SFM to reflect its presence in multiple states and because the new name was simpler.  The phrase, “SFM. The Work Comp Experts”, was to be incorporated into the company’s logo from that time forward.  Complainant’s registration for the mark (US Trademark Reg. No. 3,330,186) is for a service mark incorporating the whole phrase and indicating a date of first use in commerce of August 10, 2006.

Respondent registered the disputed domain name <sfm.com> on March 3, 1999 and has used it continuously since that time.  Respondent currently uses the website for advertising, but none of the advertising is for goods or services in competition with Complainant.  At the time of Respondent’s registration Complainant was known as State Fund Mutual Companies and had not used SFM as a common law or registered mark in conjunction with its services.  Complainant states that it “has demonstrated that it has referred to itself in its promotional literature as SFM since at least 1997” and that since 1996 it referred to itself as SFM on its website, but Complainant’s use in these cases has been in conjunction with or as a shorthand reference to its common law design and word mark, State Fund Mutual Companies.

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

In April 2006, Complainant filed an application to register the mark SFM. THE WORK COMP EXPERTS claiming a date of first use in commerce of August 10, 2006.  When the registration issued Complainant announced at that time that the company was changing its name from State Fund Mutual Companies to SFM.  Complainant had previously referred to itself on a sporadic and limited basis as SFM in conjunction with the company name since 1996.  Complainant asserts common law rights to the mark SFM based on this limited use but has offered no evidence of prior registration, secondary meaning, or even trademark usage of the three-letter combination.

Complainant lacks sufficient evidence to demonstrate common law rights in SFM as a  mark under Policy ¶ 4(a)(i).  See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”).

Respondent’s registration of the disputed domain predates any verifiable usage of SFM as a mark.  Although Complainant contends to have used SFM as early as 1996, claiming that SFM has “become a distinctive identifier” and that they only registered and changed the company name to reflect how they were known in the industry, no evidence in support of these contentions has been offered aside from Complainant’s own statements.  Although Complainant chose to register <sfmic.com> as its domain name in 1996 as opposed to <sfm.com>, this registration certainly conferred no exclusive rights to SFM at the time.  Respondent’s registration of <sfm.com> in 1999 clearly predates Complainant’s 2006 registration incorporating the SFM three-letter combination.  This is further proof of Complainant’s lack of enforceable rights in the mark.  See Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent’s domain name registration predated the complainant’s rights in its mark by nearly two years); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

Since Complainant has no enforceable rights in the mark SFM, Complainant cannot show that Respondent’s disputed domain is identical or confusingly similar to its mark as required under Policy ¶ 4(a)(i).  Further, because Complainant has failed to satisfy this element of the Policy the Panel finds it unnecessary to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

Rights or Legitimate Interests

See above.

Registration and Use in Bad Faith

See above.

Reverse Domain Name Hijacking

 

Complainant has engaged in Reverse Domain Name Hijacking.  Complainant withheld information in its Complaint regarding its registered service mark incorporating SFM.  Complainant failed to provide any support for its assertions of protectable rights in the mark SFM prior to its 2006 registration of the mark in conjunction with other terms for service mark purposes.  This registration postdated Respondent’s 1999 domain name registration by several years and as such should have indicated to Complainant that there was no legitimate basis for filing the instant UDRP proceeding.  See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that when the complainant knows it has no rights in the mark but brings a complaint despite this fact, the complainant has acted in bad faith and attempted Reverse Domain Name Hijacking which constitutes an abuse of the administrative proceeding); see also G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001) (finding that the complainant, by omitting several relevant facts that would have undermined its position, had brought the complaint in bad faith, which constituted an abuse of the administrative proceeding).

 

 

 

 

 

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

The Panel also finds that Complainant has engaged in abuse of the UDRP process by engaging in Reverse Domain Name Hijacking.

Diane Cabell, Esq., Terry F. Peppard, Esq., Panelist, Prof. Darryl C. Wilson, Chair, 
Dated: July 25, 2008

NATIONAL ARBITRATION FORUM