State Farm Mutual Automobile Insurance Company v. Padraic Sheerin Padraic Sheerin
Claim Number: FA2004001891829
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Padraic Sheerin Padraic Sheerin (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm.dev>, registered with Porkbun 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2020; the Forum received payment on April 13, 2020.
On April 13, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <statefarm.dev> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 April 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2020 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@statefarm.dev. Also on April 14, 2020, 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 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant, State Farm Mutual Automobile Insurance Company is a famous business that engages in both the insurance and financial services industry. Complainant claims rights in the trademark STATE FARM based upon its use in commerce since 1930 and its multiple registrations with various trademark offices such as the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUIPO”), and others, dating back to 1998. Respondent’s <statefarm.dev> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, less the space, and merely adding the generic top-level domain (“gTLD”) “.dev.”
Respondent has no rights or legitimate interests in the <statefarm.dev> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <statefarm.dev> domain name to divert Internet users away from Complainant by resolving to a website that only displays a “Network Error” message.
Respondent has registered and uses the <statefarm.dev> 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. In addition, Respondent fails to make an active use of the disputed domain name as it only resolves to a pay displaying an error message. Also, Complainant sent a cease and desist letter and two follow-up letters to Respondent, to which Respondent has failed to respond or comply. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 claims rights in the STATE FARM mark based upon its registration with the USPTO, the EUIPO, and other trademark offices. Registration with such offices is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <statefarm.dev> domain name is confusingly similar to Complainant’s STATE FARM mark as Respondent merely omits the space between two words and adds a gTLD to the mark. Such changes do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Guggenheim Capital, LLC v. Young Group, FA 1695163 (Forum Oct. 31, 2016) (“the lack of a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces.”) Also see Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues that Respondent merely removes the space between the words “State” and “Farm” and adds the “.dev” gTLD to Complainant’s mark. The Panel agrees with Complainant and finds that the <statefarm.dev> domain name does not contain changes that would sufficiently distinguish it from the STATE FARM mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 argues that Respondent has no rights or legitimate interests in the <statefarm.dev> domain name. Specifically, Complainant argues that Respondent is not licensed or authorized to use the STATE FARM mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate 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 WHOIS information of record identifies Respondent as “Padraic Sheerin Padraic Sheerin,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the STATE FARM mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <statefarm.dev> domain name is evinced by its failure to use the name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, it is asserted that Respondent is attempting to create the impression of association with Complainant to trade off the good will associated with the STATE FARM mark. Attempting to create a false affiliation to divert Internet users seeking a complainant’s website is not a bona fide offering or a 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).”) Further, resolving a disputed domain name to an error page or to no content at all is not a bona fide use thereof. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (where the disputed domain name resolves to an inactive webpage displaying the message “website coming soon!” the Panel held that ”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.”) Complainant asserts that Respondent is intending to attract individuals looking for information about Complainant but these searchers are instead redirected to a website that displays the message “Network Error”. The Respondent has not filed a response or made any other submission in this case to explain its actions or defend against Complainant’s assertions. Therefore, the Panel finds that Respondent has not used the name for a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the name and, thus, does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (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.”) Complainant asserts, given the global reach of the Internet and the fact that Complainant’s STATE FARM mark is rather unique and so widely known, that Respondent must have been aware of Complainant when it registered the disputed domain name. Further, from the submitted screenshot of the web page that resolves from the <statefarm.dev> domain name, the Panel notes that, in addition to above-mentioned error message, the page also displays the text “Your requested host ‘www.statefarmcu.org’ could not be resolved by DNS. For assistance: Agents and staff, please contact your Insurance Support Center (ISC), Zone employees, please contact your Insurance Support Center, (ISC).” The appearance of another STATE FARM related domain name and insurance related language on the <statefarm.dev> website indicates that the words “state” and “farm” are not used by Respondent for a random or generic purpose. Rather, this content indicate that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when it registered the <statefarm.dev> domain name.
Next, Complainant argues that Respondent has registered and uses the <statefarm.dev> 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)). Here, Complainant claims that Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain name that incorporates, in its entirety, Complainant’s STATE FARM mark. This gives the impression that interested individuals will receive information regarding Complainant despite the fact that such individuals are sent to an inactive web page. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent has failed to make an active use of the disputed domain name. Failure to actively use a disputed domain name can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA 1522801 (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 a screenshot of Respondent’s inactive website and the Respondent has not participated in this case to refute the Complainant’s assertions. Therefore, upon a preponderance of the evidence before it, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under 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 <statefarm.dev> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 6, 2020
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