State Farm Mutual Automobile Insurance Company v. Gevorg Timuryan
Claim Number: FA1701001711941
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Gevorg Timuryan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm.la>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the FORUM electronically on January 11, 2017; the FORUM received payment on January 11, 2017.
On January 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the FORUM that the <statefarm.la> 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 January 16, 2017, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017 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@statefarm.la. Also on January 16, 2017, 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 February 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the FORUM appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
State Farm Trademark Rights to the Name “State Farm” and “State Farm Insurance”
State Farm 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 engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
State Farm first began using the “State Farm” trademark in 1930 and registered it with the Patent and Trademark Office on June 11, 1996 and registered “State Farm Insurance” on September 11, 1979. State Farm has also registered with the 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
In Canada, State Farm 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 name registered by the Respondent incorporates the State Farm registered trademark, “State Farm” and is confusingly similar to State Farm registered marks.
For over 70 years State Farm has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
State Farm on the Internet
State Farm developed its Internet web presence in 1995 using the domain name statefarm.com. At its web site, State Farm offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents. State Farm has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.
Conduct on Part of Respondent
In June of 2016, it was brought to the attention of State Farm that Complainant’s trademark "State Farm" had been registered as part of the domain name “StateFarm.la.” The domain name resolves to a web page which states “Website Coming Soon,” and no other content.
On June 20, 2016, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent at statefarm.la@domainsbyproxy.com. On July 14, 2016, another cease and desist letter was sent to Respondent via email; however, there was no response from Respondent. On August 24, 2016, a cease and desist letter was sent, along with a draft arbitration complaint.
Respondent Has No Legitimate Interest in the Domain Name
Because of the substantial efforts of State Farm, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning. The domain name at issue is confusingly similar to the State Farm servicemark that it has been using since 1930 and to other State Farm registered marks. Moreover, the domain name is confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.
Respondent has no right or legitimate interest in the disputed domain name. Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the servicemark "State Farm." State Farm did not authorize Respondent to register the domain name or to use the State Farm trademark for Respondent’s business purposes.
Respondent is not commonly known under the domain name “StateFarm.la.” It is believed that Respondent has never been known by or performed business under the domain name at issue. Respondent does not possess independent intellectual property rights in the name. In addition, State Farm does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name.
State Farm believes that Respondent registered the name to create the impression of association with State Farm, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm.
Respondent Has Acted in Bad Faith
It is clear that the name registered by Respondent is confusingly similar to State Farm trademarks. Indeed, the name includes the State Farm registered mark "State Farm.” This domain is clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the site.
State Farm has filed numerous complaints relating to its domain names under the ICANN Uniform Dispute Resolution Process. The arbitrators have consistently found that the use of a State Farm trademark in a domain name, whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm trademarks and that such registrations have been done in bad faith. (See State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc., FA94662 (FORUM June 8, 2000), State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA94427 (FORUM, May 27, 2000), State Farm Mut. Auto. Ins. Co. v. I & B, FA94719 (FORUM June 8, 2000), State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA94335 (FORUM April 24, 2000), State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA94663 (FORUM June 1, 2000), State Farm Mut. Auto. Ins. Co. v. Try Harder & Company, FA94730 (FORUM June 15, 2000), State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA94802 (FORUM June 13, 2000), State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA94808 (FORUM June 6, 2000), State Farm Mut. Auto. Ins. Co. v. HPR, FA94829 (FORUM June 22, 2000), State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA0710001087389 (FORUM, November 16, 2007), State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FAFA0710001087458 (FORUM, November 20, 2007), State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FAFA0710001092410 (FORUM, November 20, 2007).
As in the cases above, Respondent has no legitimate claim in the domain name at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the name in bad faith.
In accordance with 15 U.S.C. §1125(d), Respondent’s registration of the disputed domain name was in bad faith in that:
a) Respondent has never been known by the name “State Farm.” The Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain name in question. Moreover, Respondent has not registered the name in question with the Secretary of State in the state in which it does business or filed incorporation papers with respect to the same. This obvious lack of right to use the name in question shows bad faith registration and use.
b) Despite having registered the domain name “StateFarm.la,” Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm. Registering a domain name for products and services that it does not have authority to offer, shows that Respondent has acted in bad faith.
c) While Respondent registered the domain name “StateFarm.la,” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a web page which states “Website Coming Soon,” and no other content. The use of a trademark to generate business in other fashions reflects that Respondent has acted in bad faith.
d) Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming. Even if Respondent did put information on its website, its content along with the proposed domain name, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers. Failure to resolve the domain name to legitimate content indicates that Respondent has no legitimate reason for having registered the name and demonstrates that it has registered and is using the name in bad faith.
e) Respondent’s use of “StateFarm.la” domain name constitutes bad faith registration and use in that the disputed domain name resolves to an inactive website. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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); see also Pirelli & C.S.P.A. v. Tabriz, FA 9211798 (FORUM Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
f) Respondent has been sent Complainant’s cease and desist letter for notification of Respondent’s unauthorized use of the name in question. Failure to respond with legitimate information for use or intention to use the name and then failure to comply with Complainant’s cease and desist request demonstrates it has registered and is using the name in bad faith.
g) Respondent registered its domain name on June 10, 2016. State Farm registered its domain name “statefarm.com” on May 24, 1995. Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com.” Respondent’s registration of the domain name was intended to be in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 (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.”).
Complainant claims rights in the STATE FARM mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). Registration with the USPTO (or any other governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (FORUM Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant’s registration of the STATE FARM mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶4(a)(i).
Complainant claims the <statefarm.la> domain is identical to the STATE FARM mark. The disputed domain name contains the STATE FARM mark in its entirety, merely omitting the space and adding the Laos country code top-level domain (“ccTLD”) “.la.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (FORUM July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also Diners Club International Ltd. v. Andres Narvaez / smecuador, FA 1603896 (FORUM Mar. 23, 2015) (finding the <dinersclub.la> domain name to be identical to the DINERS CLUB mark, as the domain name simply omits the space in the mark and adds the “.la” ccTLD). The <statefarm.la> domain is identical to the STATE FARM mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in <statefarm.la> because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM mark for the Respondent’s business purposes. The WHOIS information and common sense can support a finding a respondent is not commonly known by the disputed domain name when the respondent has not submitted a response. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (FORUM July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Respondent registered the domain name using a privacy service. The current WHOIS information of record identifies Respondent as “Gevorg Timuryan.” There is no obvious relationship between Respondent’s name and the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (FORUM June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s lack of rights or legitimate interests in <statefarm.la> is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name resolves to a website that states “coming soon,” and includes no other information. Inactive holding of a domain name does not create rights or legitimate interests pursuant to Policy ¶¶4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (FORUM July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Broadcom Corp. v. Wirth, FA 102713 (FORUM Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent is not using the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use, and thus does not demonstrate rights or legitimate interests in the disputed domain name under Policy ¶¶4(c)(i) or (iii).
Furthermore, Respondent registered the domain name using a privacy service. This means Respondent did not publicly associate itself in any way with the domain name. Therefore, Respondent cannot (and did not) acquire any rights simply by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses <statefarm.la> in bad faith because any information Respondent would put on the resolving website would cause confusion with Complainant’s customers. Use of a confusingly similar domain name to take advantage of a complainant’s established goodwill for commercial gain can be evidence of Policy ¶4(b)(iv) bad faith. See Carey Int’l, Inc. v. Kogan, FA 486191 (FORUM July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶4(b)(iv).”). In this case, the Panel does not want to speculate about what Respondent might put on the web site in the future. While the Panel could imagine it is not likely Respondent would put up permissible content, the Panel does not want to prejudge the matter. Policy ¶4(b)(iv) requires Respondent to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to who is the source. At the moment, there has been no evidence Respondent has gotten any commercial gain. Therefore, Respondent has not registered and use the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s failure to make active use of the disputed domain name is evidence of Respondent’s bad faith. Inactive holding of a disputed domain name can be evidence of bad faith under the penumbra of Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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). The <statefarm.la> domain name resolves to a website that merely states “coming soon,” and does not include any other content. While a web site is not the only use for a domain name, it is the most common use (and the easiest one to prove…or disprove). Respondent has not claimed to use the disputed domain name. Respondent’s use of the disputed domain name does not amount to an active use and is therefore in bad faith pursuant to Policy ¶4(a)(iii).
Complainant claims its long-term use of the STATE FARM mark and the legitimate <statefarm.com> domain name means Respondent actually knew of Complainant and Complainant’s rights in the mark. This Panel is persuaded by Complainant’s argument. Respondent registered and “uses” the disputed domain name in bad faith under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. FORUM Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, Respondent registered the domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. The Panel is willing to find bad faith registration and use on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <statefarm.la> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, February 15, 2017
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