State Farm Mutual Automobile Insurance Company v. CHRIS STEPHENS
Claim Number: FA1506001622024
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is CHRIS STEPHENS (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <statefarmcalendars.com> and <statefarmcalendar.com>, registered with FastDomain Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.
On June 7, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <statefarmcalendars.com> and <statefarmcalendar.com> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 June 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2015 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@statefarmcalendars.com, postmaster@statefarmcalendar.com. Also on June 8, 2015, 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 July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant has registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). The mark is used on or in connection with underwriting and servicing auto, homeowners, life and fire insurance. The <statefarmcalendars.com> and <statefarmcalendar.com> domain names are confusingly similar to the STATE FARM mark because they contain the entire mark and add the generic terms “calendar” and “calendars,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use of the domain names as they resolve to an inactive webpage.
Respondent has engaged in bad faith registration and use of the disputed domain names. Respondent has failed to make an active use of the domain names. Also, Respondent had actual and/or constructive notice of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of underwriting and servicing auto, homeowners, life and fire insurance.
2. Complainant has registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996).
3. Respondent registered the <statefarmcalendars.com> and <statefarmcalendar.com> domain names on February 24, 2015.
4. The disputed domain names resolve to inactive webpages.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996). The Panel accepts that contention and the evidence on which it is based. The mark is used on or in connection with underwriting and servicing auto, homeowners, life and fire insurance. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark according to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second issue that arises is whether the disputed <statefarmcalendars.com> and <statefarmcalendar.com> domain names are identical or confusingly similar to Complainant’s STATE FARM mark. Complainant argues that the <statefarmcalendars.com> and <statefarmcalendar.com> domain names are confusingly similar to the STATE FARM mark. Complainant notes that the domain names contain the entire mark and add the generic terms “calendars” and “calendar” respectively, along with the gTLD “.com.” As a general rule, a gTLD can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Also, prior panels have established a confusing similarity where the domain name adds generic terms to a domain name that contains the entire mark at issue. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Thus, the Panel finds that the disputed domain names are confusingly similar to the STATE FARM mark according to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STATE FARM mark and to use it in its domain names, adding only the generic words “calendars” and “calendar” respectively;
(b) Respondent registered the disputed domain names on February 24, 2015;
(c) The disputed domain names resolve to inactive webpages;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the STATE FARM marks in domain names. The Panel notes that “CHRIS STEPHENS” is listed as the registrant of record for the disputed domain names. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(f) Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that the domain names resolve to inactive websites, which shows that Respondent has failed to make an active use of the domain names. The Panel notes that each of the domain names resolve to a blank webpage with the header “bluehost | Affordable, Reliable Webhosting Solutions.” See Compl., at Attached Ex. 3.1. Prior panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) or (iii) where the domain name is not being used. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Secondly, Complainant argues that Respondent has displayed bad faith by failing to make active use of the disputed domain names. Complainant again notes that the domain names resolve to a blank webpage with the header “bluehost | Affordable, Reliable Webhosting Solutions.” See Compl., at Attached Ex. 3.1. Prior panels have found that failure to use a domain name can be evidence of bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). As the Panel finds that Respondent has failed to use the domain names, it therefore finds bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii).
Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant's STATE FARM mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here notes that arguments of bad faith based on constructive notice are generally not persuasive and that UDRP decisions frequently decline to find bad faith based on constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the famous STATE FARM mark prior to registering the disputed domain names and finds that actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <statefarmcalendars.com> and <statefarmcalendar.com> domain names using the STATE FARM mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcalendars.com> and <statefarmcalendar.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 6, 2015
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