Workers compensation company fails at attempt to steal SFM.com domain name.
[Please note that there is more than one company that goes by the name “State Fund Insurance”. This article refers to the company that provides workers’ compensation insurance in Minnesota, Wisconsin, and South Dakota.]
State Fund Mutual Insurance, a company providing workers’ compensation insurance in Minnesota, Wisconsin, and South Dakota, has been found guilty of reverse domain name hijacking in its attempt to snag SFM.com.
The company filed for arbitration over the generic three character domain back in April. It was represented by Peter G. Nikolai, of Nikolai & Mersereau, P.A. Domain name lawyer Ari Goldberger successfully defended the domain name and got the panel to find that State Fund had attempted 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.
One of the interesting aspects in this case is that State Fund Mutual didn’t even have a filed trademark for “SFM”. Rather, it was part of its trademark “SFM. The Work Comp Experts” filed with a first use in commerce date of August 2006. It claimed common law trademark for SFM dating back to 1996.