State Farm Mutual Automobile Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2004001892344
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 Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmvisacard.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmvisacard.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 April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@statefarmvisacard.com. Also on April 17, 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 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant, State Farm, is a company that engages in both insurance and the financial services industry. Complainant asserts rights in the STATE FARM trademark through its registration of the trademark with multiple trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered September 18, 2012). Respondent’s <statefarmvisacard.com> domain name is identical or confusingly similar to Complainant’s trademark, as it incorporates the trademark in its entirety and merely adds a third party trademark.
Respondent lacks rights and legitimate interests in the <statefarmvisacard.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the trademark. Additionally, Respondent uses the disputed domain name to confuse Internet users and pass off as Complainant.
Respondent registered and uses the <statefarmvisacard.com> domain name in bad faith. Respondent uses the disputed domain name to cause confusion and attract. The disputed domain name currently redirects to Complainant’s webpage, and Respondent had actual knowledge of Complainant’s rights in the STATE FARM trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,211,626 StateFarm (logo), registered September 18, 2012 for services in class 36;
No. 4,227,731 StateFarm (logo), registered October 16, 2012 for services in class 36;
No. 5,271,354 STATE FARM (word), registered August 22, 2017 for services in class 36;
No. 2,319,867 STATE FARM BANK (word), registered February 15, 2000 for services in class 36;
No. 4,211,628 StateFarmBank (logo), registered September 18, 2012 for services in class 36;
No. 4,211,629 StateFarmBank (logo), registered September 18, 2012 for services in class 36;
No. 2,444,342 STATEFARM.COM (word), registered April 17, 2001 for services in class 36;
No. 2,444,341 STATEFARM.COM (word), registered April 17, 2001 for services in class 38;
No. 2,450,890 STATEFARM.COM (word), registered May 15, 2001 for services in class 42;
No. 2,198,246 STATE FARM BAYOU CLASSIC (word), registered October 20, 1998 for services in class 35;
No. 2,617,951 STATE FARM CATASTROPHE SERVICES (word), registered September 10, 2002 for services in class 36;
No. 2,617,950 STATE FARM CATASTROPHE TEAM (word), registered September 10, 2002 for services in class 36;
No. 4,492,572 STATE FARM CENTER (word), registered March 4, 2014 for services in class 43;
No. 4,492,573 StateFarm CENTER (fig), registered March 4, 2014 for services in class 43;
No. 4,335,809 State Farm Companies Foundation (logo), registered May 14, 2013 for services in class 36;
No. 4,273,289 State Farm Companies Foundation (logo), registered January 8, 2013 for services in class 36;
No. 2,544,840 STATE FARM DOLLARS (word), registered March 5, 2002 for services in class 35;
No. 4,590,399 STATE FARM FEDERAL CREDITUNION (fig), registered August 19, 2014 for services in class 36;
No. 4,441,297 STATE FARM HOMEINDEX (word), registered November 26, 2013 for services in class 42;
No. 3,368,928 STATE FARM LEARNING AND TEACHING EXCHANGE (word), registered January 15, 2008 for services in class 41;
No. 2,591,039 STATE FARM MUTUAL FUNDS (word), registered July 9, 2002 for services in class 36;
No. 4,407,111 State Farm Neighborhood Assist (word), registered September 24, 2013 for services in class 36;
No. 4,641,334 State Farm Neighborhood Sessions (word), registered November 18, 2014 for services in class 36;
No. 4,641,336 State Farm Neighborhood Sessions (fig), registered November 18, 2014 for services in class 36;
No. 4,641,349 State Farm Neighborhood Sessions (fig), registered November 18, 2014 for services in class 41; and
No. 2,381,383 STATE FARM PREMIER SERVICE (word), registered August 29, 2000 for services in class 36.
The Complainant is also the owner of STATE FARM trademark registrations in Canada and the European Union.
The disputed domain name <statefarmvisacard.com> was registered on October 21, 2019.
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”).
The Complainant claims rights in the STATE FARM trademark based upon its registration with the USPTO, as well as in Canada (CIPO) and the European Union (EUIPO). Registration with the USPTO, as well as other national trademark registrations, 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)), see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Here, Complainant provides copies of its STATE FARM registrations with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012), as well as CIPO and EUIPO. Therefore, the Panel find that Complainant has rights in the STATE FARM trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefarmvisacard.com> domain name is confusingly similar to Complainant’s trademark because the disputed domain name incorporates the STATE FARM trademark in its entirety and merely adds the “VISA Card” trademark. Use of a disputed domain name that fully contains a trademark owned by the complainant and adds a third party trademark does not prevent confusing similarity between the domain name from that first trademark. See Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (finding confusing similarity where the domain name included the complainant’s trademark, plus the addition of the third-party trademark WORKDAY, which belonged to a provider of salary and other services used by Complainant). Also, in this case, the disputed domain name starts with the Complainant’s trademark, which gives automatically an instant focus on the STATE FARM part of the domain name. While not argued by Complainant, the Panel also notes that the disputed domain name features the “.com” generic top-level domain (“gTLD”). The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).
Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 does not have rights or legitimate interests in the <statefarmvisacard.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM trademark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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). The WHOIS information for the disputed domain name shows that the registrant’s name is “CAROLINA RODRIGUES / FUNDACION COMMERCIO ELECTRONICO” and nothing in the record indicates that Respondent is licensed to use Complainant’s trademark or is known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <statefarmvisacard.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent merely uses the domain name to confuse Internet users, but makes no active use of the disputed domain name. A respondent lacks rights or legitimate interests in a confusingly similar domain name that it does not make active use of. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant claims that there was no legitimate content associated with the name and no demonstratble indication that legitimate content was to come. The Panel agree that Respondent’s lack of use of the domain name indicates that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues Respondent registered and uses the <statefarmvisacard.com> domain name in bad faith. Respondent’s use of Complainant’s well known trademark signals an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant argues that Respondent intended to attract individuals seeking information on the Complainant and intentionally creates confusion. The Panel agrees, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant claims that although the disputed domain name resolves to Complainant’s website, this is evidence that Respondent has no legitimate use for the disputed domain name and thus registered it in bad faith. Use of a disputed domain name to redirect to Complainant’s website is bad faith use that impacts Complainant’s use of their trademark. See Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”). Here, Complainant points to past use of the disputed domain name to host click through links, and claims that even if Respondent did make an active use of the disputed domain name it would directly conflict with Complainant’s website and would cause confusion to potential customers. The Panel fully agree that this is bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent did not reply to their cease and desist letter to stop using the <statefarmvisacard.com> domain name. Failure to respond to a cease-and-desist letter is evidence of bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant provides copies of the correspondence with Respondent. The Panel agree that this is bad faith use and registration under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent could not have registered the <statefarmvisacard.com> domain name without actual knowledge of Complainant’s rights in the trademark. The Panel here find that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel however agree with Complainant that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of 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.”). Here, Complainant asserts that due to Complainant’s long use of the STATE FARM trademark and “statefarm.com” domain name, Respondent’s registration of the disputed domain name was done intentionally in bad faith. As said, the Panel agrees and find that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmvisacard.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 17, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page