State Farm Mutual Automobile Insurance Company v. Steve Rebeil
Claim Number: FA2008001910189
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, United States. Respondent is Steve Rebeil (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tiffanygatesstatefarm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2020; the Forum received payment on August 27, 2020.
On August 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tiffanygatesstatefarm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@tiffanygatesstatefarm.com. Also on August 28, 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.
A timely Response was received and determined to be complete on September 10, 2020.
On September 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, State Farm Mutual Automobile Insurance Company is a business that engages in both the insurance and financial services industry. Complainant claims rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). Respondent’s <tiffanygatesstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, merely adding the term “Tiffany Gates” and the “.com” generic top-level domain (“gTLD”).
Complainant further contends that Respondent does not have rights or legitimate interests in the <tiffanygatesstatefarm.com> 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. Rather, Respondent uses the disputed domain name to divert Internet users to Respondent’s parked webpage.
Finally Complainant contends, that Respondent has registered and uses the <tiffanygatesstatefarm.com> domain name in bad faith. Respondent uses the domain name to generate business in direct conflict with Complainant’s interests. Additionally, 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 actual knowledge of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent contends that he does not use the <tiffanygatesstatefarm.com> domain name for any type of advertising, sales, or promotion, or any other uses outside of just owning the site.
The Panel notes that the disputed domain name was registered on July 11, 2020.
The Panel finds that:
(1) The domain name <tiffanygatesstatefarm.com> is confusingly similar to Complainants’ registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name < tiffanygatesstatefarm.com>.
(3) The Respondent has registered and is using the domain name <tiffanygatesstatefarm.com> 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.
Complainant claims rights in the STATE FARM mark based upon registration with the USPTO. Registration with the USPTO 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)). Here, Complainant provides copies of its STATE FARM registrations with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tiffanygatesstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, merely adding the term “Tiffany Gates” and the “.com” gTLD. Addition of related terms and a gTLD to a mark does not negate confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant notes that the additional term “Tiffany Gates” is related to Complainant’s business as it matches the name of one of Complainant’s employees. The Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s STATE FARM mark per Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(iii) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent does not have rights or legitimate interests in the <tiffanygatesstatefarm.com> domain name because Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain name. WHOIS information can support a finding that a respondent 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, 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.). Additionally, lack of authorization to use a complainant’s mark demonstrates 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 “Steve Rebeil,” and there is no other evidence to suggest Respondent was authorized to use the STATE FARM mark. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead attempts to create the impression of association with Complainant to divert Internet users to Respondent’s parked webpage. Use of a disputed domain name to divert Internet users seeking 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).”). See also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant asserts that Respondent intends to attract individuals looking for information about Complainant to a website with parked links. Complainant provides a screenshot of Respondent’s webpage and claims that the links are related to Complainant’s area of business. Thus, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and
uses the <tiffanygatesstatefarm.com> domain name in bad faith
because Respondent uses the domain name to generate business in direct conflict
with Complainant’s interests. Use of a confusingly similar domain name to host
commercial hyperlinks may be considered bad faith attraction for commercial
gain 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)); see also American Council on Education and GED
Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s
hosting of links to Complainant’s competitors demonstrates bad faith
registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant
provides a screenshot of Respondent’s webpage and notes that the hyperlinks
relate to the same insurance field in which Complainant operates. 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).
Additionally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the STATE FARM mark. Actual knowledge of a complainant’s rights in a mark is evidence of bad faith under Policy ¶ 4(b)(iv) and may be proven through a totality of circumstances surrounding the registration of the disputed domain name. 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.”). Complainant asserts that Respondent must have been aware of Complainant when it registered the domain name because of Complainant’s long-term use of the mark. Since the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when it registered the domain name, the Panel finds 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 <tiffanygatesstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: September 17, 2020
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