State Farm Mutual Automobile Insurance Company v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2012001924415
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefrmbank.com>, registered with Media Elite Holdings Limited.
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 December 10, 2020; the Forum received payment on December 10, 2020.
On December 12, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <statefrmbank.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2021 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@statefrmbank.com. Also on December 15, 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 January 8, 2021, 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 is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant has rights in the STATE FARM trademark through the Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered September 18, 2012). Respondent’s <statefrmbank.com> domain name is identical or confusingly similar to Complainant’s STATE FARM trademark as it merely omits the letter “a” in the word “Farm.”
Respondent lacks rights or legitimate interests in the <statefrmbank.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the STATE FARM trademark.
Respondent registered and uses the <statefrmbank.com> domain name in bad faith. Respondent intentionally attempts to attract Internet users to Respondent’s website. Additionally, Respondent fails to make active use of the disputed domain name. Finally, Respondent failed to respond to Complainant’s cease and desist letter.
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 STARE FARM FEDERAL CREDITUNION (fig), registered August 19, 2014 for services in class 36;
No. 4,441,297 STARE 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 <statefrmbank.com> was registered on March 5, 2020.
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 asserts rights in the STATE FARM trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 4,211,626, registered September 18, 2012). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). 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).”). Therefore, the Panel find that Complainant has demonstrated rights in the STATE FARM trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefrmbank.com> domain name is identical or confusingly similar to Complainant’s STATE FARM trademark as it merely omits the letter “a” in the word “Farm.”. The Panel further notes that the disputed domain name ends with the word “bank”, and thereby also refers to the Complainant’s registered trademark STATE FARM BANK. The addition of a generic or descriptive term and a gTLD to a misspelled trademark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire trademark and differs only by the addition of a generic or descriptive phrase and top-level domain as 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 See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel clearly 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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends that Respondent lacks rights or legitimate interests in the <statefrmbank.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the STATE FARM (or STATE FARM BANK) mark/s. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the STATE FARM trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Complainant contends that Respondent registered and uses the <statefrmbank.com> domain name in bad faith as Respondent intentionally attempts to attract Internet users to Respondent’s website. Intentionally attempting to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s trademark as to the source of the website can evidence bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant argues that the disputed domain name give the impression that interested individuals will receive information regarding the Complainant, but instead, the disputed domain name redirects users to a page offering information and the option to purchase a Volvo vehicle. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that Respondent registered and uses the <statefrmbank.com> domain name in bad faith as Respondent fails to make active use of the disputed domain name. Failing to make active use of a disputed domain name can demonstrate bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant argues that there is no legitimate content associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming. The Panel agrees with that conclusion, and find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered and uses the <statefrmbank.com> domain name in bad faith as Respondent failed to respond to Complainant’s cease and desist letter. Failing to respond to a cease and desist letter can demonstrate bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also 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). Based on the arguments and evidence provided by the Complainant, the Panel find that Respondent further registered that disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the relief shall be GRANTED.
Accordingly, it is Ordered that the <statefrmbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 18, 2021
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