State Farm Mutual Automobile Insurance Company v. John Bracamontes
Claim Number: FA1603001665209
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is John Bracamontes (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glencarbonstatefarm.com> (the “Domain Name”) registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Clive Elliott 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 14, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 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@glencarbonstatefarm.com. 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.
A timely Response was received and determined to be complete on March 25, 2016.
On March 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank. State Farm further states that it engages in business in both the insurance and the financial services industry and has established a nationally recognized presence on televised and other media.
Complainant contends that it first began using the “State Farm” trademark in 1930. It registered the “State Farm” trademark on June 11, 1996 and “State Farm Insurance” on September 11, 1979. State Farm has also registered with the United States Patent and Trademark Office the following marks that all include the phrase “State Farm”, including, but not limited to:
the State Farm Insurance 3 oval logo; State Farm, State Farm Bank, State Farm Bank logo, State Farm Bayou Classic, State Farm Catastrophe Services, State Farm Companies Foundation, State Farm Mutual Funds, State Farm Dollars, State Farm Green Space, State Farm Red Magazine.
Complainant also asserts that in Canada, it has registered the State Farm 3 oval logo; State Farm; State Farm Companies Foundation; State Farm Insurance, StateFarm.com, StateFarm.ca, and others. In the European Community, State Farm and the State Farm 3 oval logo is registered. In Mexico, the State Farm 3 oval logo, State Farm and State Farm Insurance are registered. The Domain Complainant contends that the Domain Name registered by Respondent incorporates the State Farm registered trademark, “State Farm” and is confusingly similar to the various State Farm registered marks.
Complainant asserts that it has expended substantial time, effort and funds to develop the goodwill associated with the name or mark “State Farm”, and it does not allow unauthorized parties to use its marks as part of their Internet domain names.
Complainant states that it developed its Internet web presence in 1995, using the domain name <statefarm.com>, which is its primary source of Internet information for the products, services and information provided by State Farm.
In August 2015 Complainant became aware of the registration of the Domain Name. It notes that at that time the Domain Name initially resolved to a blank web page which stated “Website Coming Soon”; the Domain now resolves to an error page with no content.
Complainant states that on August 18, 2015 it sent a cease and desist letter to Respondent. No response was received. On September 16, 2015 Complainant sent a further cease and desist letter. On December 3, 2015 another cease and desist letter was sent, along with a draft arbitration complaint.
Complainant contends that because of its substantial efforts in the market the public associates the phrase “State Farm” with the owner of the service mark “State Farm”, and that the State Farm mark is distinctive and has acquired secondary meaning. Complainant asserts that the Domain Name is confusingly similar to Complainant’s State Farm mark, and is also confusingly similar to products, services or information that State Farm offers generally to the public, as well as on its website.
Complainant asserts that Respondent has no right or legitimate interest in the Domain Name as he is not associated with, affiliated with or sponsored by Complainant. Complainant submits that Respondent is not commonly known under or by the Domain Name and believes that Respondent has never been known by or performed business under the Domain Name.
Complainant contends that the reason the Domain Name is confusingly similar to its trademark is because it includes the State Farm mark. Complainant submits that Respondent registered the Domain Name not only to create the impression of association with Complainant but to trade off the goodwill associated with the State Farm name and/or to create initial interest confusion for individuals looking for information about State Farm.
Finally, Complainant submits that Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent states that he purchased the Domain Name as he was considering becoming an agency for State Farm in Glen Carbon, Illinois, and he wanted to secure it so that once he became an agency he would build a site promoting his agency.
However, Respondent asserts he chose not to pursue becoming an agent after he received the initial complaint for filing of the Domain Name, soon after purchasing the Domain Name.
Respondent states that he has no plans to build a website or go live on the Domain, and that it is GoDaddy who has populated placeholder content stating that a website is coming soon. Respondent contends that he intends to let the Domain Name expire and invites Complainant to lodge a transfer request and he will release it to them.
Respondent asserts that he will not pay any fees, nor will he participate in any proceedings.
Respondent does not dispute or contest that it is appropriate that the Domain Name be transferred to Complainant. For the reasons set out below that must be right and it is ordered that the Domain Name be transferred to Complainant.
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.
Complainant plainly has rights in the STATE FARM mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). Respondent’s domain <glencarbonstatefarm.com> is confusingly similar to the STATE FARM mark as the Domain Name includes the entire mark and merely adds the generic top-level domain (“gTLD”) “.com” and the geographic term “Glen Carbon.”
The Panel finds that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
It is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase may be confusingly similar to the mark. Taken together, the Panel finds that Respondent’s Domain Name is confusingly similar to the STATE FARM mark.
Complainant has clearly made a prima facie showing that Respondent lacks rights or a legitimate interest in the Domain Name, thereby shifting the burden to Respondent to show that he has rights or legitimate interests in the Domain Name. Respondent explains that he intended to become an agent of Complainant but that fell through and he now accepts that his purported reason for registering the Domain Name no longer exists. That is a clear acknowledgement that Respondent does not have any ongoing rights or legitimate interests in the Domain Name.
In any event, the Panel finds that Respondent has not been commonly known by the Domain Name under Policy ¶ 4(c)(ii) and that Respondent’s inactive use of the Domain Name does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Accordingly, this ground is met.
Complainant contends that Respondent’s inactive use of the Domain Name evinces Respondent’s bad faith registration and use. The Panel accepts that this conduct is indicative of bad faith under Policy ¶ 4(a)(iii).
Complainant then argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the STATE FARM mark. This is not disputed. Indeed, Respondent accepts he had knowledge of Complainant. Whatever Respondent’s alleged reasons might have been for registering the Domain Name, the Panel is entitled to infer that he had actual knowledge of Complainant's mark when registering the Domain Name and lacked authority or permission to register the Domain Name and that this amounts to bad faith conduct under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glencarbonstatefarm.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Clive Elliott QC, Panelist
Dated: April 13, 2016
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