State Farm Mutual Automobile Insurance Company v. David DiRamio
Claim Number: FA2203001989141
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 DiRamio (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <davidfromstatefarm.com> and <davefromstatefarm.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2022; the Forum received payment on March 22, 2022.
On March 23, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <davidfromstatefarm.com> and <davefromstatefarm.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 March 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2022, 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@davidfromstatefarm.com, postmaster@davefromstatefarm.com. Also on March 24, 2022, 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 April 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, State Farm Mutual Automobile Insurance Company, provides insurance including property and auto insurance. Complainant has 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 Sep. 18, 2012). The disputed domain names are confusingly similar to Complainant’s STATE FARM mark because they incorporate the entire mark, eliminating the space between words in the mark, and merely adds the generic names “dave,” “david,” and “from” before adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domains because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s STATE FARM mark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent registered and uses the domains to trade off of the goodwill established by Complainant and cause initial-interest confusion.
Respondent registered and uses the disputed domain names in bad faith. Respondent failed to respond to several cease and desist letters from Complainant. Furthermore, the disputed domains resolve to inactive webpages. Finally, Respondent had constructive and actual knowledge of Complainant’s rights in the STATE FARM mark prior to registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), of Bloomington, Illinois, USA. Complainant is the owner of domestic and international registrations for the marks STATE FARM and STATE FARM INSURANCE, as well as related marks used in connection with the goods and services Complainant offers in the financial and insurance industries. Complainant has continuously used the STATE FARM mark since at least as early as 1990. Complainant also provides its services over the internet via its official website <statefarm.com>.
Respondent is David DiRamio (“Respondent”), of Cochranville, PA, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain names were both registered on or about June 12, 2021.
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 asserts rights in the STATE FARM mark based on registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Here, Complainant provides evidence of its registration with the USPTO for the STATE FARM mark (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012). The Panel here finds that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s STATE FARM mark because Respondent has incorporated the entire mark, eliminated the space in the mark, and added generic words and a gTLD. Deleting spaces and adding a gTLD are generally insufficient to distinguish a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Further, adding a generic word does not create a sufficient distinction. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). Here, Respondent has incorporated the entire mark with the space omitted and added the generic terms “david,” “dave,” “from,” and the “.com” gTLD, and these additions may not create a sufficient distinction between Complainant’s mark and the disputed domain name. Complainant argues that the addition of the words “dave” or “david” along with the word “from” creates the phrase “Dave/david from State Farm” and may only add to the confusing similarity as it may suggest to internet users that by reaching the domains, they will receive information about someone affiliated with Complainant. The Panel here finds that the disputed domain names are identical or confusingly similar to Complainant’s STATE FARM mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant claims Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not associated with Complainant or authorized to use Complainant’s STATE FARM mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name 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)). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See 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.”). Here, the WHOIS information lists the registrant of the domains as “David DiRamio.” No other information is provided as evidence that Respondent is commonly known the disputed domain names. The Panel here finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to an inactive webpage. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, both disputed domains resolve to inactive webpages displaying no content. The Panel here finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Registration and Use in Bad Faith
Complainant argues that Respondent has registered and uses the disputed domain names in bad faith because the domains resolve to inactive webpages. Prior Panels have noted that Policy ¶ 4(b) lists several non-exhaustive examples of bad faith and allows for Panels to consider other factors to find bad faith. See HDR Global Trading Limited v. Martin Forstner / Affiliate Group N.V., FA2111001972594 (Forum Dec. 10, 2021) (noting that the “list of circumstances set forth in Policy ¶ 4(b) is non-exclusive, allowing for consideration of additional factors in an analysis for bad faith…”). Previous Panels have found inactive holding of disputed domain names may be evidence of bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Here, as discussed above, the disputed domains resolve to inactive webpages. The Panel here finds that Respondent registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent has registered and uses the domains in bad faith because it failed to respond to Complainant’s cease and desist letters which may be evidence of bad faith per Policy ¶ 4(a)(iii). See 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); see also Bloomberg Finance L.P. v. Usman Ik / Divers Marine Contracting LLC, FA1812001820452 (Forum Jan. 10, 2019) (“…in light of the nonexclusive nature of Policy ¶ 4(b), failure to respond to a cease and desist notice has been held to support a finding of bad faith.”). Here, Complainant has sent to Respondent multiple cease and desist letters to which Respondent has failed to respond. The Panel here finds Respondent’s failure to respond further supports the conclusion that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the domain. Actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also 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).”). Here, Complainant argues that Respondent had actual knowledge of its rights in the mark given Complainant’s long, continuous use of the mark. The Panel here finds that Respondent had actual knowledge of Complainant’s mark and thus registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <davidfromstatefarm.com> and <davefromstatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 4, 2022
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