State Farm Mutual Automobile Insurance Company v. David Espinoza
Claim Number: FA2108001958096
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is David Espinoza (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2021; the Forum received payment on August 4, 2021.
On August 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names are 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 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@statefarmlifeinsurancequote.com, postmaster@statefarmrenterinsurance.com. Also on August 6, 2021, 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 August 26, 2021.
On August 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: VOLUNTARY TRANSFER
Respondent claims that it attempted to “unlock” the disputed domain names so that Complainant could “claim” them. The Panel does not consider that a consent to transfer the disputed domain names to Complainant. Even if Respondent had properly consented to the transfer of the disputed domain names, Complainant has not consented to the transfer without a decision on the merits by the Panel. The Panel also notes that the “consent-to-transfer” approach is one way for cybersquatters to avoid adverse findings against them. The Panel will decide this case on the merits.
A. Complainant
1. Respondent’s <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names.
3. Respondent registered and uses the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names in bad faith.
B. Respondent claims that it attempted to “unlock” the disputed domain names so that Complainant could “claim” them.
Complainant, State Farm Mutual Automobile Insurance Company, holds a registration for its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,271,354, registered Aug. 22, 2017).
Respondent registered the <statefarmlifeinsurancequote.com> domain name on March 7, 2021 and the <statefarmrenterinsurance.com> domain name on April 7, 2021, and uses them to divert users to parked pages with a contact form to purchase the domain names.
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.
The Panel finds that Complainant has rights in the STATE FARM mark through its registration with the USPTO. 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).”).
Complainant argues that Respondent’s <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names use Complainant’s STATE FARM mark and add the descriptive terms “life,” “insurance,” “quote,” and “renter,” along with a gTLD. These changes do not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel finds that Respondent’s <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show 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 does not have rights or legitimate interests in the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names because Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the STATE FARM mark. The WHOIS information identifies “David Espinoza” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus has no rights under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”).
Complainant also argues that Respondent does not use the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain names to create an impression of association with Complainant and trade off of Complainant’s goodwill. Using a disputed domain name to pass off as affiliated with a complainant to divert users and trade off a complainant’s goodwill does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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).”) Complainant provides evidence showing that Respondent uses the disputed domain names to divert users to Respondent’s own websites, which are parked pages offering a contact form to purchase the domain names. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names in bad faith because Respondent offers the domain names for sale on the resolving websites and directly to Complainant for $900. Under Policy ¶ 4(b)(i), bad faith has been found when a respondent offers a domain name for sale for more than out-of-pocket costs. See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i). ”). Complainant provides screenshots showing the disputed domain names resolve to webpages that have no content except a contact form for users to purchase the domain names. Complainant also provides Respondent’s email, where Respondent offers to sell the disputed domain names to Complainant for $900 each. The Panel therefore finds bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent registered and uses the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names in bad faith since Respondent uses them to attract users by implying an affiliation with Complainant, for its commerical gain. Under Policy ¶ 4(b)(iv), using a confusingly similar domain name to attract users for commercial gain is evidence of bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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)). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered the <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names with knowledge of Complainant’s rights in the STATE FARM mark, based on Complainant’s long-term use of the mark, and Complainant’s prior registration of the trademark and the <statefarm.com> domain name. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”).
The Panel finds that Complainant has satisfied 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 <statefarmlifeinsurancequote.com> and <statefarmrenterinsurance.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 31, 2021
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