State Farm Mutual Automobile Insurance Company v. Domain Administrator
Claim Number: FA2110001968857
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 (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mystatefarmsbenefits.com>, registered with Sav.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2021; the Forum received payment on October 13, 2021.
On October 14, 2021, Sav.com, LLC confirmed by e-mail to the Forum that the <mystatefarmsbenefits.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 October 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@mystatefarmsbenefits.com. Also on October 14, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a well-known insurance company. Complainant has rights in the STATE FARM mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,211,626, registered Sept. 18, 2012; Reg. 4,227,731, registered Oct. 16, 2012).
2. Respondent’s <mystatefarmsbenefits.com>[i] domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds generic words along, with the letter “s” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <mystatefarmsbenefits.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its STATE FARM mark in the domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or service, nor a legitimate noncommercial or fair use, but instead hosts parked pay-per-click links on the domain name’s resolving website.
5. Respondent registered and uses the <mystatefarmsbenefits.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting parked pay-per-click links on the domain name’s resolving website.
6. Respondent registered the domain name with knowledge of Complainant’s rights in the STATE FARM mark.
7. Respondent typosquats with the domain name.
8. Respondent failed to respond to Complainant’s cease-and-desist requests.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mystatefarmsbenefits.com> domain name and that Respondent registered and uses the domain name 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.
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”).
Complainant has rights in the STATE FARM mark through its registrations with the USPTO (e.g. Reg. 4,211,626, registered Sep. 18, 2012; Reg. 4,227,731, registered Oct. 16, 2012). Registration with the USPTO is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mystatefarmsbenefits.com> domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Under Policy ¶ 4(a)(i), adding the letter “s” and generic words, along with the “.com” gTLD, to a complainant’s mark is insufficient in differentiating a domain name from the mark it incorporates. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see additionally Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark). The <mystatefarmsbenefits.com> domain name incorporates Complainant’s STATE FARM mark and adds an “s” to the end of the word, along with the words “my” and “benefits”, and the “.com” gTLD. Therefore, Respondent’s <mystatefarmsbenefits.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <mystatefarmsbenefits.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <mystatefarmsbenefits.com> domain name, nor has Complainant authorized or licensed Respondent to use its STATE FARM mark in the domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information, or lack thereof where hidden behind a privacy service, may demonstrate that a Respondent is not commonly known by a domain name. Further, a lack of evidence in the record supports a complainant’s assertion that it never authorized or licensed a respondent to use its mark in a domain name. See 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).”). The <mystatefarmsbenefits.com> domain name only lists a privacy service, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its STATE FARM mark in the domain name. Therefore, the Panel holds that Respondent is not commonly known by the <mystatefarmsbenefits.com> domain name under Policy ¶¶ 4(c)(ii).
Complainant argues that Respondent does not use the <mystatefarmsbenefits.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a domain name incorporating the mark of another to host competing and/or unrelated pay-per-click links is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See 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). Complainant provides screenshots of the <mystatefarmsbenefits.com> domain name’s resolving website, which features parked pay-per-click links for various websites, including insurance services. Therefore, Respondent does not use the <mystatefarmsbenefits.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <mystatefarmsbenefits.com> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a domain name incorporating the mark of a complainant to host competing and/or related hyperlinks is generally considered evidence of bad faith disruption for commercial gain. See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). The record includes a screenshot of the <mystatefarmsbenefits.com> domain name’s resolving website, which features parked pay-per-click links for various services, including insurance. Therefore, the Panel holds that Respondent registered and uses the <mystatefarmsbenefits.com> domain name for bad faith disruption for commercial gain under Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <mystatefarmsbenefits.com> domain name with actual knowledge of Complainant’s rights in the STATE FARM mark. Actual knowledge may be demonstrated through Respondent’s incorporation of a well-known or registered mark into a domain name, as well as its use of the domain name’s resolving website. 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 and in competition with Complainant.”). Because the <mystatefarmsbenefits.com> domain name incorporates Complainant’s STATE FARM mark in its entirety and the resolving website has links related to insurance services, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when the domain name was registered and therefore Respondent registered the <mystatefarmsbenefits.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <mystatefarmsbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 18, 2021
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