State Farm Mutual Automobile Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2004001893160
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”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lasvegasstatefarmagents.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2020; the Forum received payment on April 22, 2020.
On April 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lasvegasstatefarmagents.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 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@lasvegasstatefarmagents.com. Also on April 27, 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 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 cancelled
A. Complainant
Complainant contends as follows:
Complainant, State Farm Mutual Automobile Insurance Company, is a business that operates in both the insurance and financial services industry.
Complainant has rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <lasvegasstatefarmagents.com> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, less the space, merely adding the generic or related terms “Las Vegas” and “Agents.”
Respondent does not have rights or legitimate interests in the <lasvegasstatefarmagents.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. Additionally, Respondent doesn’t use the at-issue domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to attract internet users by trading off Complainant’s goodwill.
Respondent has registered and uses the <lasvegasstatefarmagents.com> domain name in bad faith. Respondent attempts to attract 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 website when it is not authorized to do so. Also, Complainant sent a cease and desist letter to Respondent, to which Respondent failed to respond or comply. Finally, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the STATE FARM mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in STATE FARM.
Respondent uses the domain name to address a website which has at one time displayed links to third parties and later redirected visitors to Complainant’s official website.
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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its STATE FARM mark establishes Complainant’s rights in such mark for the purposes of 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)).
The at-issue domain name contains Complainant’s STATE FARM trademark, less its space, prefixed with the geographical term “lasvegas” and suffixed with the descriptive term “agents” all appended with the top level domain name “.com.” The differences between the <lasvegasstatefarmagents.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Both, the term “las vegas” and “agents” are suggestive of Complainant’s business which may be conducted by “agents” in “Las Vegas” and thus only add to any confusing caused by Respondent’s inclusion of Complainant’s STATE FARM mark in at-issue domain name. Therefore, the Panel finds that <lasvegasstatefarmagents.com> is confusingly similar to Complainant’s STATE FARM trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <lasvegasstatefarmagents.com> shows that “Carolina Rodrigues” is the domain name’s registrant. Additionally, there is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <lasvegasstatefarmagents.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent’s <lasvegasstatefarmagents.com> domain name initially addressed a parked page with click through links to third parties. However, at some point, the domain was changed and now redirects visitors to Complainant’s website “statefarm.com.” In any event, Respondent’s use of the <lasvegasstatefarmagents.com> domain name to attract internet users to a webpage with links to third parties, a webpage with no content, or that simply redirects internet users to Complainant’s official website is not indicative of any bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(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).”);See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <lasvegasstatefarmagents.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent used its confusingly similar <lasvegasstatefarmagents.com>domain name to address a webpage which has at times displayed third party links and which now redirects visitors to Complainant’s official website. Such use of the at-issue domain name confuses internet users into believing that the domain name is affiliated with Complainant, when it is not. Respondent’s use of its <lasvegasstatefarmagents.com> domain name in this manner is indicative of bad faith under Policy ¶ 4(b)(iv). 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)).
Additionally, Respondent registered the <lasvegasstatefarmagents.com> domain name knowing that Complainant had trademark rights in STATE FARM. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of terms suggestive of Complainant’s business into the at-issue domain name. Therefore, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <lasvegasstatefarmagents.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lasvegasstatefarmagents.com> domain name be CANCELLED.
Paul M. DeCicco, Panelist
Dated: May 21, 2020
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