DECISION

 

State Farm Mutual Automobile Insurance Company v. Tulip Trading Company

Claim Number: FA1904001840614

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company

(“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, United States.  Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmrpx.com>, registered with Key-Systems GmbH.

 

PANEL

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

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 25, 2019; the Forum received payment on April 25, 2019.

 

On April 26, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <statefarmrpx.com> domain name is registered with Key-Systems GmbH and

that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@statefarmrpx.com.  Also on April 26, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930 and engages in business in both the insurance and financial services industry. Complainant has rights in the STATE FARM through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered September 18, 2012). See Compl. Attachment 1. Complainant states that the disputed domain name is confusingly similar to Complainant’s STATE FARM mark.

 

2.    Respondent has no legitimate interest in the <statefarmrpx.com> domain name because Respondent is not commonly known by the disputed domain nor do Complainant and Respondent have a contractual arrangement that would allow Respondent to offer services under the STATE FARM mark. Respondent is not providing a bona fide offering of goods and services and instead resolves to an inactive webpage. Respondent created the domain name in an attempt create the impression of an association with Complainant.

 

3.    Respondent has acted in bad faith by registering the <statefarmrpx.com> domain name. Respondent attracts Internet users, likely for commercial gain, because the disputed domain name gives the impression that a relationship exists with Complainant. Additionally, the disputed domain name fails to resolve to an active webpage. Respondent has also failed to respond to multiple cease and desist letters from Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration due to Complainant’s longstanding use of the mark.

 

B.   Respondent

1.    Respondent failed to submit a response to this Panel.

 

FINDINGS

1.    Respondent’s <statefarmrpx.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <statefarmrpx.com> domain name.

 

3.    Respondent registered and used the <statefarmrpx.com> domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the STATE FARM mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the STATE FARM mark (e.g. Reg. No. 4,211,626, registered September 18, 2012). See Compl. Attachment 1. Therefore, the Panel finds Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).

 

Complainant further argues that Respondent’s <statefarmrpx.com> domain name is confusingly similar to Complainant’s STATE FARM mark. Panels have previously held that the inclusion of a registered trademark with the addition of added letters does not distinguish the domain from the mark. See L.F.P., Inc. v. Yarbrough, FA 114420 (Forum July 9, 2002) (finding that <xxxbarelylegal.com> domain name to be confusingly similar to the complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition). Here, Respondent’s sole change is the addition of the letters “rpx” to the end of Complainant’s mark. Therefore, the Panel finds that Respondent has not done enough to distinguish their domain from the confusingly similar nature of Complainant mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant asserts that Respondent has no rights or legitimate interests in the <statefarmrpx.com> domain name because Respondent is not commonly known by the disputed domain name nor was Respondent authorized to use Complainant’s STATE FARM mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Furthermore, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information identifies Respondent as “Tulip Trading Company” and there is nothing in the record to suggest that Respondent is authorized to use the STATE FARM mark. Thus, the Panel finds Respondent is not commonly known by the <statefarmrpx.com> domain name per Policy ¶ 4(c)(ii).

 

Complainant further argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <statefarmrpx.com> domain name as the disputed domain name fails to resolve to an active webpage, and instead displays click-through links. Panels have previously held that a domain name that resolves to an inactive webpage is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name. Additionally, displaying hyperlinks to products or services that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair

use.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s webpage that displays a parked webpage with links related to Complainant services. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent uses the <statefarmrpx.com> domain name to attempt to attract Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the website and displays click-through links related to Complainant’s business on the resolving webpage. Using a disputed domain name to display links to a complainant’s competitors can support a finding of bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant has provided this panel with screenshots of the resolving webpage of the disputed domain name which displays links to competitors of Complainant’s business. See Compl. Attachment 3. Therefore, this Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Lastly, Complainant argues Respondent was well-aware of Complainant’s rights in the STATE FARM mark at the time Respondent registered the <statefarmrpx.com> domain name and this indicates bad faith registration and use. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant contends that its extensive, global use, and fame of the STATE FARM mark indicates Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the ­STATE FARM mark, thus constituting bad faith per Policy ¶ 4(a)(iii).

 

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

 

 

John J. Upchurch, Panelist

June 5, 2019