State Farm Mutual Automobile Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1911001870143
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmbenifits.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2019; the Forum received payment on November 7, 2019.
On November 8, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmbenifits.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@statefarmbenifits.com. Also on November 8, 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 December 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industries. Complainant has rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626 registered Sep. 18, 2012).
2. Respondent’s <statefarmbenifits.com>[i] domain name is confusingly similar to Complainant’s STATE FARM mark. Respondent includes the mark in its entirety and adds the descriptive or generic term “benefits” along with the “.com” top-level domain name (“gTLD”).
3. Respondent has no rights or legitimate interests in the <statefarmbenifits.com> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to create the impression that Respondent is affiliated with Complainant by redirecting to Complainant’s own website.
5. Respondent registered and uses the <statefarmbenifits.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location.
6. In addition, Respondent fails to make an active use of the <statefarmbenifits.com> domain name. Respondent engages in the practice of typosquatting.
7. Respondent failed to response to a cease and desist letter.
8. Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark prior to the registration of the <statefarmbenifits.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <statefarmbenifits.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant has have rights in the STATE FARM mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the STATE FARM mark (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012). Therefore, Complainant has adequately shown rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefarmbenifits.com> domain name is confusingly similar to Complainant’s STATE FARM mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive term and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Respondent includes the STATE FARM mark in its entirety and adds the term “benefits” along with the “.com” gTLD. Accordingly, the <statefarmbenifits.com> domain name does not contain changes that would sufficiently distinguish it from the STATE FARM mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <statefarmbenifits.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <statefarmbenifits.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the STATE FARM mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <statefarmbenifits.com> domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and there is no other evidence to suggest that Respondent was authorized to use the STATE FARM mark or was commonly known by the <statefarmbenifits.com> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <statefarmbenifits.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to create the impression that Respondent is affiliated with Complainant by redirecting Internet users to Complainant’s own website. Use of a domain name incorporating the mark of another to resolve to that other party’s own webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . . .”). Complainant has provided evidence that Respondent’s domain name redirects Internet users to Complainant’s own website. Therefore, Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(a)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <statefarmbenifits.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The evidence shows that Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s STATE FARM mark, giving the impression that interested individuals will receive information regarding State Farm. For this reason, the Panel holds that Respondent registered and uses the <statefarmbenifits.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Next, Complainant asserts that Respondent has failed to make an active use of the <statefarmbenifits.com> domain name. Failure to actively use a domain name which incorporates the mark of another is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots of Respondent’s inactive website. This is a further reason that Respondent registered and uses the <statefarmbenifits.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark due to Complainant’s use of the mark in its own domain name since 1995. Actual knowledge of a complainant’s rights in a mark prior to registering a domain name incorporating that mark 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.”). Use of a domain name that contains a well-known and famous mark may be evidence of actual knowledge. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). The evidence shows that Complainant has used its STATE FARM mark extensively in commerce for decades prior to Respondent’s registration of the <statefarmbenifits.com> domain name. Therefore, it is apparent that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark prior to registration of the <statefarmbenifits.com> domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmbenifits.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 9, 2019
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