State Farm Mutual Automobile Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1912001873480
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmsteerclear.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 December 2, 2019; the Forum received payment on December 2, 2019.
On December 3, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmsteerclear.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 December 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@statefarmsteerclear.com. Also on December 3, 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 27, 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 Co., engages in business in the insurance and financial services industry. Complainant has rights in the STATE FARM and STEER CLEAR marks based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., STATE FARM - Reg. No. 4,211,626, registered Sep. 18, 2012; STEER CLEAR - Reg. No. 2,498,341, registered Oct. 16, 2001). Respondent’s <statefarmsteerclear.com>[i] domain name is identical and/or confusingly similar to Complainant’s marks because it wholly incorporates both of Complainant’s STATE FARM and STEER CLEAR marks and adds the “.com” generic top-level domain (“gTLD”).
2. Respondent does not have rights or legitimate interests in the <statefarmsteerclear.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted Respondent permission or license to use the STATE FARM or STEER CLEAR marks for any purpose.
3. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent fails to make an active use of the domain name. In addition, Respondent uses the <statefarmsteerclear.com> domain name to divert Internet users away from Complainant.
4. Respondent registered and uses the <statefarmsteerclear.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 marks 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.
5. In addition, Respondent fails to make an active use of the <statefarmsteerclear.com> domain name. Respondent failed to respond to Complainant’s cease and desist letter.
6. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the STATE FARM and STEER CLEAR marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STATE FARM and STEER CLEAR marks. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM and STEER CLEAR marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <statefarmsteerclear.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 rights in the STATE FARM and STEER CLEAR marks based on registration with the USPTO (e.g., STATE FARM - Reg. No. 4,211,626, registered Sep. 18, 2012; STEER CLEAR - Reg. No. 2,498,341, registered Oct. 16, 2001). Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Because Complainant provides evidence of its registration of the marks with the USPTO, the Panel holds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefarmsteerclear.com> domain name is identical and/or confusingly similar to Complainant’s marks because it wholly incorporates both of Complainant’s marks. The combination of multiple marks into a domain name and the addition of a gTLD establishes confusing similarity between a domain name and the registered marks under Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Here, the <statefarmsteerclear.com> domain name is made up entirely of both the STATE FARM and STEER CLEAR marks with the addition of the “.com” gTLD. Therefore, the <statefarmsteerclear.com> domain name is identical or confusingly similar to Complainant’s marks under 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 <statefarmsteerclear.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 that Respondent has no rights or legitimate interests in the <statefarmsteerclear.com> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the STATE FARM or STEER CLEAR marks in any way. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the 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). Here, the WHOIS information of record lists the registrant of the <statefarmsteerclear.com> domain name as “Carolina Rodriguez,” and no information indicates that Respondent was associated with or authorized by Complainant to use the STATE FARM or STEER CLEAR marks. Thus, Respondent is not commonly known by the <statefarmsteerclear.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent has failed to make an active use of the <statefarmsteerclear.com> domain name and therefore does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Inactive holding of a domain name incorporating the mark of another does not qualify as a bona fide offering of goods or services or legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage showing a lack of legitimate content associated with the <statefarmsteerclear.com> domain name. Therefore, the Panel holds that Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Next, Complainant contends that Respondent is attempting to create the impression of association with Complainant to trade off the good will associated with Complainant. Attempting to create a false affiliation to divert Internet users seeking a complainant’s website is not a bona fide offering or legitimate use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel accepts Complainant’s assertion that Respondent is intending to attract individuals looking for information about Complainant. Therefore, the Panel agrees with Complainant and finds that Respondent has does not have rights or legitimate interests in the <statefarmsteerclear.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <statefarmsteerclear.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own 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)). Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety Complainant’s STATE FARM and STEER CLEAR marks, and giving the impression that interested individuals will receive information regarding Complainant, although individuals are sent to a blank web page. The Panel agrees with Complainant and finds that Respondent registered and uses the <statefarmsteerclear.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered and uses the <statefarmsteerclear.com> domain name in bad faith based upon the inactive holding of the domain name. Failure to have a domain name resolve to an active webpage is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Thus, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <statefarmsteerclear.com> domain name with actual knowledge of Complainant’s marks. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of a domain name incorporating that mark. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). The Panel agrees with Complainant that given the global reach of the Internet and the fact that Complainant is widely known indicates Respondent must have been aware of Complainant and its marks when it registered the <statefarmsteerclear.com> domain name. Thus, the Panel holds that Respondent engaged in bad faith when it registered the <statefarmsteerclear.com> domain name.
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 <statefarmsteerclear.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 10, 2020
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