State Farm Mutual Automobile Insurance Company v. Lechelle Bishop
Claim Number: FA1603001665193
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Lechelle Bishop (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autostatefarm.xyz>, registered with NameCheap, 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 March 11, 2016; the Forum received payment on March 11, 2016.
On March 11, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <autostatefarm.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2016 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@autostatefarm.xyz. Also on March 15, 2016, 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 8, 2016, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
Policy ¶ 4(a)(i)
Complainant has rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered on June 11, 1996). Respondent’s <autostatefarm.xyz> domain name is confusingly similar to the STATE FARM mark because it incorporates the mark.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <autostatefarm.xyz> domain name because it is not authorized to use the STATE FARM mark or otherwise known by the domain name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain resolves to a parked page containing click-through links, including links to competitors of Complainant and unrelated content.
Policy ¶ 4(a)(iii)
Respondent uses the <autostatefarm.xyz> domain name in bad faith because the domain resolves to a parked page containing click-through links, including links to competitors of Complainant and unrelated content. Respondent registered the <autostatefarm.xyz> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the STATE FARM mark based upon Complainant’s longstanding use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the insurance and financial services industries.
2. Complainant has rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered on June 11, 1996).
3. Respondent registered the disputed <autostatefarm.xyz> domain name on August 20, 2015.
4. The domain name resolves to a parked page containing click-through links, including links to competitors of Complainant and unrelated content.
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 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 claims rights in the STATE FARM mark through its registration with the USPTO (e.g., Reg. No. 1,979,585, registered on June 11, 1996). Complainant has provided this registration in its Attachment 1. Accordingly, the Panel finds that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The second issue that arises is whether the disputed <autostatefarm.xyz> domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Complainant argues that Respondent’s <autostatefarm.xyz> domain name is confusingly similar to the STATE FARM mark because it incorporates the mark. The Panel notes that the domain name differs from the mark only in that it deletes the space between the words of the mark and adds the term “auto” and the generic top-level domain (“gTLD”) “.xyz.” Panels in the past have ordered the transfer of a domain name where it contained the gTLD “.xyz.” See Viber Media S.ŕ r.l. v. Hrvoje Klapic, FA 1631970 (Nat. Arb. Forum Sept. 14, 2015) (finding a confusing similarity between the <viberpromo.xyz> domain name and the VIBER trademark). Panels have also found that the addition of either generic or descriptive terms such as “auto” is not enough to differentiate a domain name and mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). As such, as the Panel finds the term “auto” to be generic or descriptive, it finds that the <autostatefarm.xyz> domain name is confusingly similar to the STATE FARM mark according to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under 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 name 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 name and has added the generic word “auto” which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on August 20, 2015;
(c) the domain name resolves to a parked page containing click-through links, including links to competitors of Complainant and unrelated content;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant alleges that Respondent is not commonly known by the <autostatefarm.xyz> domain name because it is not authorized to use the STATE FARM mark or otherwise known by the domain name. The Panel notes that the available WHOIS information lists “Lechelle Bishop” as Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <autostatefarm.xyz> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s submission that it did not authorize or license the respondent’s use of its mark in a domain name);
(f) Complainant contends that Respondent fails to use the <autostatefarm.xyz> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to a parked page containing click-through links, including links to competitors of Complainant and unrelated content. Complainant has provided a screenshot of the resolving page, in its Attachment 3, displaying links such as “State Auto Insurance Company” and “Auto Insurance Agent.” As the Panel finds this evidence sufficient, it finds that Respondent fails to use the <autostatefarm.xyz> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant maintains that Respondent uses the <autostatefarm.xyz> domain name in bad faith because the domain name resolves to a parked page containing click-through links, including links to competitors of Complainant that disrupt Complainant’s business operations. Complainant has provided a screenshot of the resolving page, in its Attachment 3, displaying links such as “Auto Insurance Agent.” As the Panel finds this evidence sufficient, it finds that Respondent uses the <autostatefarm.xyz> domain name in bad faith according to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant maintains that Respondent uses the <autostatefarm.xyz> domain name in bad faith because the domain name resolves to a parked page containing click-through links, including links to competitors of Complainant and unrelated content, and that Respondent does this in order to create confusion for individuals seeking information about Complainant. Complainant has provided a screenshot of the resolving page, in its Attachment 3, displaying links such as “State Auto Insurance Company” and “Auto Insurance Agent.” As the Panel finds this evidence sufficient, it finds that Respondent uses the <autostatefarm.xyz> domain name in bad faith according to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Thirdly, Complainant alleges that Respondent registered the <autostatefarm.xyz> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the STATE FARM mark based upon Complainant’s longstanding use of the mark. Complainant urges that Respondent knew or should have known of Complainant’s rights because of its long term use of the mark. As the Panel finds this sufficient to show actual knowledge of Complainant’s rights, it finds that Respondent registered the <autostatefarm.xyz> domain name in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); but see Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).
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 <autostatefarm.xyz> domain name using the STATE FARM mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <autostatefarm.xyz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 11, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page