State Farm Mutual Automobile Insurance Company v. Ryan Nickels
Claim Number: FA1706001737548
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Ryan Nickels (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <albuquerquestatefarminsurance.com>, <anaheimstatefarminsurance.com>, <anchoragestatefarminsurance.com>, <arlingtonstatefarminsurance.com>, <atlantastatefarminsurance.com>, <aurorafieldstatefarminsurance.com>, <austinstatefarminsurance.com>, <bakersfieldstatefarminsurance.com>, <baltimorestatefarminsurance.com>, <batonrougestatefarminsurance.com>, <boisestatefarminsurance.com>, <bostonstatefarminsurance.com>, <chandlerstatefarminsurance.com>, <charlottestatefarminsurance.com>, <chesapeakestatefarminsurance.com>, <chicagostatefarminsurance.com>, <chulavistastatefarminsurance.com>, <cincinnatistatefarminsurance.com>, <clevelandstatefarminsurance.com>, <coloradospringsstatefarminsurance.com>, <columbusstatefarminsurance.com>, <corpuschrististatefarminsurance.com>, <dallasstatefarminsurance.com>, <denverstatefarminsurance.com>, <detroitstatefarminsurance.com>, <durhamstatefarminsurance.com>, <elpasostatefarminsurance.com>, <fortwaynestatefarminsurance.com>, <fortworthstatefarminsurance.com>, <fremontstatefarminsurance.com>, <fresnostatefarminsurance.com>, <garlandstatefarminsurance.com>, <gilbertstatefarminsurance.com>, <glendalestatefarminsurance.com>, <hendersonstatefarminsurance.com>, <hialeahstatefarminsurance.com>, <honolulustatefarminsurance.com>, <indianapolisstatefarminsurance.com>, <jacksonvillestatefarminsurance.com>, <jerseycitystatefarminsurance.com>, <kansascitystatefarminsurance.com>, <laredostatefarminsurance.com>, <lasvegasstatefarminsurance.com>, <lexingtonstatefarminsurance.com>, <lincolnstatefarminsurance.com>, <longbeachstatefarminsurance.com>, <louisvillestatefarminsurance.com>, <madisonstatefarminsurance.com>, <memphisstatefarminsurance.com>, <mesastatefarminsurance.com>, <milwaukeestatefarminsurance.com>, <minneapolisstatefarminsurance.com>, <nashvillestatefarminsurance.com>, <newarkstatefarminsurance.com>, <neworleansstatefarminsurance.com>, <newyorkstatefarminsurance.com>, <norfolkstatefarminsurance.com>, <oaklandstatefarminsurance.com>, <oklahomacitystatefarminsurance.com>, <omahastatefarminsurance.com>, <orlandostatefarminsurance.com>, <phoenixstatefarminsurance.com>, <portlandstatefarminsurance.com>, <raleighstatefarminsurance.com>, <renostatefarminsurance.com>, <riversidestatefarminsurance.com>, <sacrementostatefarminsurance.com>, <sanantoniostatefarminsurance.com>, <sanbernardinostatefarminsurance.com>, <sandiegostatefarminsurance.com>, <sanjosestatefarminsurance.com>, <santaanastatefarminsurance.com>, <scottsdalestatefarminsurance.com>, <seattlestatefarminsurance.com>, <stlouisstatefarminsurance.com>, <stocktonstatefarminsurance.com>, <stpaulstatefarminsurance.com>, <stpetersburgstatefarminsurance.com>, <tampastatefarminsurance.com>, <toledostatefarminsurance.com>, <tucsonstatefarminsurance.com>, <tulsastatefarminsurance.com>, <virginiabeachstatefarminsurance.com>, <washingtondcstatefarminsurance.com>, <wichitastatefarminsurance.com>, and <winstonsalemstatefarminsurance.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2017; the Forum received payment on June 27, 2017.
On June 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <albuquerquestatefarminsurance.com>, <anaheimstatefarminsurance.com>, <anchoragestatefarminsurance.com>, <arlingtonstatefarminsurance.com>, <atlantastatefarminsurance.com>, <aurorafieldstatefarminsurance.com>, <austinstatefarminsurance.com>, <bakersfieldstatefarminsurance.com>, <baltimorestatefarminsurance.com>, <batonrougestatefarminsurance.com>, <boisestatefarminsurance.com>, <bostonstatefarminsurance.com>, <chandlerstatefarminsurance.com>, <charlottestatefarminsurance.com>, <chesapeakestatefarminsurance.com>, <chicagostatefarminsurance.com>, <chulavistastatefarminsurance.com>, <cincinnatistatefarminsurance.com>, <clevelandstatefarminsurance.com>, <coloradospringsstatefarminsurance.com>, <columbusstatefarminsurance.com>, <corpuschrististatefarminsurance.com>, <dallasstatefarminsurance.com>, <denverstatefarminsurance.com>, <detroitstatefarminsurance.com>, <durhamstatefarminsurance.com>, <elpasostatefarminsurance.com>, <fortwaynestatefarminsurance.com>, <fortworthstatefarminsurance.com>, <fremontstatefarminsurance.com>, <fresnostatefarminsurance.com>, <garlandstatefarminsurance.com>, <gilbertstatefarminsurance.com>, <glendalestatefarminsurance.com>, <hendersonstatefarminsurance.com>, <hialeahstatefarminsurance.com>, <honolulustatefarminsurance.com>, <indianapolisstatefarminsurance.com>, <jacksonvillestatefarminsurance.com>, <jerseycitystatefarminsurance.com>, <kansascitystatefarminsurance.com>, <laredostatefarminsurance.com>, <lasvegasstatefarminsurance.com>, <lexingtonstatefarminsurance.com>, <lincolnstatefarminsurance.com>, <longbeachstatefarminsurance.com>, <louisvillestatefarminsurance.com>, <madisonstatefarminsurance.com>, <memphisstatefarminsurance.com>, <mesastatefarminsurance.com>, <milwaukeestatefarminsurance.com>, <minneapolisstatefarminsurance.com>, <nashvillestatefarminsurance.com>, <newarkstatefarminsurance.com>, <neworleansstatefarminsurance.com>, <newyorkstatefarminsurance.com>, <norfolkstatefarminsurance.com>, <oaklandstatefarminsurance.com>, <oklahomacitystatefarminsurance.com>, <omahastatefarminsurance.com>, <orlandostatefarminsurance.com>, <phoenixstatefarminsurance.com>, <portlandstatefarminsurance.com>, <raleighstatefarminsurance.com>, <renostatefarminsurance.com>, <riversidestatefarminsurance.com>, <sacrementostatefarminsurance.com>, <sanantoniostatefarminsurance.com>, <sanbernardinostatefarminsurance.com>, <sandiegostatefarminsurance.com>, <sanjosestatefarminsurance.com>, <santaanastatefarminsurance.com>, <scottsdalestatefarminsurance.com>, <seattlestatefarminsurance.com>, <stlouisstatefarminsurance.com>, <stocktonstatefarminsurance.com>, <stpaulstatefarminsurance.com>, <stpetersburgstatefarminsurance.com>, <tampastatefarminsurance.com>, <toledostatefarminsurance.com>, <tucsonstatefarminsurance.com>, <tulsastatefarminsurance.com>, <virginiabeachstatefarminsurance.com>, <washingtondcstatefarminsurance.com>, <wichitastatefarminsurance.com>, and <winstonsalemstatefarminsurance.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 June 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@albuquerquestatefarminsurance.com, postmaster@anaheimstatefarminsurance.com, postmaster@anchoragestatefarminsurance.com, postmaster@arlingtonstatefarminsurance.com, postmaster@atlantastatefarminsurance.com, postmaster@aurorafieldstatefarminsurance.com, postmaster@austinstatefarminsurance.com, postmaster@bakersfieldstatefarminsurance.com, postmaster@baltimorestatefarminsurance.com, postmaster@batonrougestatefarminsurance.com, postmaster@boisestatefarminsurance.com, postmaster@bostonstatefarminsurance.com, postmaster@chandlerstatefarminsurance.com, postmaster@charlottestatefarminsurance.com, postmaster@chesapeakestatefarminsurance.com, postmaster@chicagostatefarminsurance.com, postmaster@chulavistastatefarminsurance.com, postmaster@cincinnatistatefarminsurance.com, postmaster@clevelandstatefarminsurance.com, postmaster@coloradospringsstatefarminsurance.com, postmaster@columbusstatefarminsurance.com, postmaster@corpuschrististatefarminsurance.com, postmaster@dallasstatefarminsurance.com, postmaster@denverstatefarminsurance.com, postmaster@detroitstatefarminsurance.com, postmaster@durhamstatefarminsurance.com, postmaster@elpasostatefarminsurance.com, postmaster@fortwaynestatefarminsurance.com, postmaster@fortworthstatefarminsurance.com, postmaster@fremontstatefarminsurance.com, postmaster@fresnostatefarminsurance.com, postmaster@garlandstatefarminsurance.com, postmaster@gilbertstatefarminsurance.com, postmaster@glendalestatefarminsurance.com, postmaster@hendersonstatefarminsurance.com, postmaster@hialeahstatefarminsurance.com, postmaster@honolulustatefarminsurance.com, postmaster@indianapolisstatefarminsurance.com, postmaster@jacksonvillestatefarminsurance.com, postmaster@jerseycitystatefarminsurance.com, postmaster@kansascitystatefarminsurance.com, postmaster@laredostatefarminsurance.com, postmaster@lasvegasstatefarminsurance.com, postmaster@lexingtonstatefarminsurance.com, postmaster@lincolnstatefarminsurance.com, postmaster@longbeachstatefarminsurance.com, postmaster@louisvillestatefarminsurance.com, postmaster@madisonstatefarminsurance.com, postmaster@memphisstatefarminsurance.com, postmaster@mesastatefarminsurance.com, postmaster@milwaukeestatefarminsurance.com, postmaster@minneapolisstatefarminsurance.com, postmaster@nashvillestatefarminsurance.com, postmaster@newarkstatefarminsurance.com, postmaster@neworleansstatefarminsurance.com, postmaster@newyorkstatefarminsurance.com, postmaster@norfolkstatefarminsurance.com, postmaster@oaklandstatefarminsurance.com, postmaster@oklahomacitystatefarminsurance.com, postmaster@omahastatefarminsurance.com, postmaster@orlandostatefarminsurance.com, postmaster@phoenixstatefarminsurance.com, postmaster@portlandstatefarminsurance.com, postmaster@raleighstatefarminsurance.com, postmaster@renostatefarminsurance.com, postmaster@riversidestatefarminsurance.com, postmaster@sacrementostatefarminsurance.com, postmaster@sanantoniostatefarminsurance.com, postmaster@sanbernardinostatefarminsurance.com, postmaster@sandiegostatefarminsurance.com, postmaster@sanjosestatefarminsurance.com, postmaster@santaanastatefarminsurance.com, postmaster@scottsdalestatefarminsurance.com, postmaster@seattlestatefarminsurance.com, postmaster@stlouisstatefarminsurance.com, postmaster@stocktonstatefarminsurance.com, postmaster@stpaulstatefarminsurance.com, postmaster@stpetersburgstatefarminsurance.com, postmaster@tampastatefarminsurance.com, postmaster@toledostatefarminsurance.com, postmaster@tucsonstatefarminsurance.com, postmaster@tulsastatefarminsurance.com, postmaster@virginiabeachstatefarminsurance.com, postmaster@washingtondcstatefarminsurance.com, postmaster@wichitastatefarminsurance.com, and postmaster@winstonsalemstatefarminsurance.com. Also on June 29, 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.
A timely Response was received and determined to be complete on July 17, 2017.
On July 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names 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. It engages in business in both the insurance and the financial services industry. It has established a nationally recognized presence on televised and other media. It first began using the STATE FARM trademark in 1930, and has continuously used the trademark in commerce since that time. For over 70 years, Complainant has expended substantial time, effort and funds to develop the good will associated with the mark STATE FARM. Complainant registered the STATE FARM mark in the United States in 2012. Additionally, Complainant registered the STATE FARM mark in Canada in 2002.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s STATE FARM mark because they incorporate the mark in its entirety and merely add names of cities.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the STATE FARM mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domains.
The disputed domain names <albuquerquestatefarminsurance.com>, <anaheimstatefarminsurance.com>, <anchoragestatefarminsurance.com>, <arlingtonstatefarminsurance.com>, <atlantastatefarminsurance.com>, <aurorafieldstatefarminsurance.com>, <bakersfieldstatefarminsurance.com>, <baltimorestatefarminsurance.com>, <batonrougestatefarminsurance.com>, <boisestatefarminsurance.com>, <bostonstatefarminsurance.com>, <chandlerstatefarminsurance.com>, <charlottestatefarminsurance.com>, <chesapeakestatefarminsurance.com>, <chicagostatefarminsurance.com>, <chulavistastatefarminsurance.com>, <cincinnatistatefarminsurance.com>, <clevelandstatefarminsurance.com>, <coloradospringsstatefarminsurance.com>, <columbusstatefarminsurance.com>, <denverstatefarminsurance.com>, <detroitstatefarminsurance.com>, <durhamstatefarminsurance.com>, <fortwaynestatefarminsurance.com>, <fremontstatefarminsurance.com>, <fresnostatefarminsurance.com>, <garlandstatefarminsurance.com>, <gilbertstatefarminsurance.com>, <glendalestatefarminsurance.com>, <hendersonstatefarminsurance.com>, <hialeahstatefarminsurance.com>, <honolulustatefarminsurance.com>, <indianapolisstatefarminsurance.com>, <jacksonvillestatefarminsurance.com>, <jerseycitystatefarminsurance.com>, <kansascitystatefarminsurance.com>, <laredostatefarminsurance.com>, <lasvegasstatefarminsurance.com>, <lexingtonstatefarminsurance.com>, <lincolnstatefarminsurance.com>, <longbeachstatefarminsurance.com>, <louisvillestatefarminsurance.com>, <madisonstatefarminsurance.com>, <memphisstatefarminsurance.com>, <mesastatefarminsurance.com>, <milwaukeestatefarminsurance.com>, <minneapolisstatefarminsurance.com>, <nashvillestatefarminsurance.com>, <newarkstatefarminsurance.com>, and <neworleansstatefarminsurance.com> resolve to inactive websites. The disputed domain names <austinstatefarminsurance.com>, <corpuschrististatefarminsurance.com>, <dallasstatefarminsurance.com>, <elpasostatefarminsurance.com>, <fortworthstatefarminsurance.com>, <newyorkstatefarminsurance.com>, <norfolkstatefarminsurance.com>, <oaklandstatefarminsurance.com>, <oklahomacitystatefarminsurance.com>, <omahastatefarminsurance.com>, <orlandostatefarminsurance.com>, <phoenixstatefarminsurance.com>, <portlandstatefarminsurance.com>, <raleighstatefarminsurance.com>, <renostatefarminsurance.com>, <riversidestatefarminsurance.com>, <sanantoniostatefarminsurance.com>, <sanbernardinostatefarminsurance.com>, <sanjosestatefarminsurance.com>, <scottsdalestatefarminsurance.com>, <stlouisstatefarminsurance.com>, <stocktonstatefarminsurance.com>, <stpaulstatefarminsurance.com>, <stpetersburgstatefarminsurance.com>, <tampastatefarminsurance.com>, <toledostatefarminsurance.com>, <tucsonstatefarminsurance.com>, <tulsastatefarminsurance.com>, <wichitastatefarminsurance.com>, and <winstonsalemstatefarminsurance.com> resolve to parked web pages containing click-through links to products and services in direct competition with Complainant. The disputed domain names <sacrementostatefarminsurance.com>, <sandiegostatefarminsurance.com>, <santaanastatefarminsurance.com>, <seattlestatefarminsurance.com>, and <washingtondcstatefarminsurance.com> resolve to websites void of any content or displaying messages that the servers cannot be found. Respondent’s <virginiabeachstatefarminsurance.com> resolves to an inactive website displaying the message “website coming soon!”
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith. The disputed domain names attract internet users to Respondent’s websites, creating a likelihood of confusion as to Respondent’s affiliation with Complainant. Furthermore, Respondent states no demonstrable intent to actively use the domains and has offered to sell the disputed domain names to Complainant for $21.06M. Respondent registered eighty of the disputed domain names following Complainant’s June 16, 2017, cease and desist letter. Respondent registered the disputed domain names with actual knowledge of Complainant and its rights to the STATE FARM mark.
B. Respondent
The Response takes the form of a letter, the letterhead being: “Reliable Insurance Managers, Inc.”. The Response is reproduced verbatim below:
We do not believe that we have violated any ICANN UDRP policy rules. State Farm has owned statefarm.com since 1995. If they wanted to buy the other city specific site or intended to, they had 22 years to do so. Since they haven’t, they have shown in good faith that they don’t consider those relevant to their trademark or other marketing material. No one thinks Houston State Farm insurance, or any other city. They just think State Farm. So them saying we are making a confusion in the market place is absurd. We originally bought it just to have it. Since they sent us the initial request, it has been brought to my attention there is some merit in having these sites. I made an offer to sale them back to State Farm for an amount that wouldn’t be disclosed. We never bought them with the intention to sale insurance. Most of the sites don’t have any wording on it. The ones that do have any insurance wording are the ones that GoDaddy had put on their just stating their name. They even admit in section 5d of the claim we don’t have any demonstrable use or intent on our site.
We would like to settle this sale of sites to State Farm for an undisclosed amount at the current meeting.
Complainant has rights in the mark STATE FARM dating back to at least 2002. The mark is well known.
All of the disputed domain names were registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Fifty of the names resolve to inactive websites, thirty resolve to parked web pages containing click-through links to products and services in direct competition with Complainant, five resolve to websites void of any content or displaying messages that the servers cannot be found, and one resolves to an inactive website displaying the message “website coming soon!”.
Respondent has offered to sell the disputed domain names for a sum well over out of pocket costs.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
As preliminary matter, the Panel notes that Respondent argues that, since Complainant could have registered the disputed domain names many years ago, but did not do so, Complainant has implicitly admitted that “they don’t consider those [domain names] relevant to their trademark or other marketing material”.
This defense is not admissible under the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, states under 4.17: “Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.” The same holds for the situation where a complainant has, for many years, chosen not to register a domain name related to its mark: complainants have no obligation to register all possible domain names related to their marks, and they can initiate proceedings under the Policy at any time for any domain names that are confusingly similar to their marks.
The disputed domain names are confusingly similar to Complainant’s STATE FARM mark. The Panel notes that all of the disputed domain names contain Complainant’s mark in its entirety, preceded by a geographic location, and followed by a generic top-level domain (“gTLD”), none of which adequately distinguish domain names from registered trademarks. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that all of the disputed domain names are confusingly similar, in the sense of the Policy, to Complainant’s STATE FARM mark.
Complainant has not licensed or otherwise authorized Respondent to use its marks. The Response does not provide any indication that Respondent is commonly known by the disputed domain names. There is no evidence in the record to show that Respondent has ever been legitimately known by the disputed domain names. Relevant information can include the WHOIS. See Braun Corp. v. Loney, FA 699652 (ForumJuly 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Ryan Nickels” as the registrant, without any organizational information listed. The organizational information provided by the letterhead of the Response is “Reliable Insurance Managers, Inc.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of any of the disputed domain names. Fifty of the names resolve to inactive websites, thirty resolve to parked web pages containing click-through links to products and services in direct competition with Complainant, five resolve to websites void of any content or displaying messages that the servers cannot be found, and one resolves to an inactive website displaying the message “website coming soon!” Using confusingly similar domain names to divert Internet users to competing websites does not represent 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). See e.g. Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007). In addition, legitimate rights or bona fide use do not exist when there is deliberate infringement of another’s rights, or when the domain name is used in bad faith to divert users through confusion. See The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 18, 2000). As discussed below, all of the domain names are used in violation of Complainant’s rights, because they were offered for sale for an amount well over out of pocket costs; further, even the inactive web sites divert users through confusion.
Respondent has not presented any plausible explanation for his use of Complainant’s well known mark in the disputed domain name. The Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, the sheer volume of infringing domains registered by Respondent evinces a prevalent pattern of bad faith registration in the sense of Policy ¶ 4(b)(ii). See e.g., Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith). Respondent denies registering the disputed domain names with the intent of preventing Complainant from reflecting its mark in the domain names. However, the Panel does not accept this statement: Respondent is in the insurance business and therefore knows full well that Complainant, or its authorized agents, may wish to register domain names consisting of the mark STATE FARM together with a geographic terms, in particular the names cities. Indeed, in his offer to sell the disputed domain names, Respondent calculates a monetary value for each name on the basis of its use to attract customers for Complainant. Thus Respondent shows that he is well aware of the fact that the disputed domain names are likely to attract customers seeking Complainant’s products and services. Therefore, the Panel finds that Respondent’s registration of eighty-six domain names infringing on Complainant’s STATE FARM mark evinces a pattern of bad faith registration and use under the Policy.
As noted, Respondent implicitly admits that the disputed domain names attract internet users seeking Complainant’s products and services to Respondent’s websites. This creaties a likelihood of confusion as to Respondent’s affiliation with Complainant. The 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,” thereby establishing “bad faith under Policy ¶ 4(b)(iv).” See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005).
In addition Respondent has offered to sell the disputed domain names to Complainant for $21.06M. Respondent states that he did not register the disputed domain names with the intent to sell them, but subsequently found out that they might be valuable and thus were worth selling. The Panel does not accept this statement. The Panel finds that the disputed domain names were acquired primarily for the purpose of transferring them to Complainant for valuable consideration in excess of Respondent's out-of-pocket costs. See Lyon v. Casserly, FA 193891 (Forum Oct. 29, 2003); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <albuquerquestatefarminsurance.com>, <anaheimstatefarminsurance.com>, <anchoragestatefarminsurance.com>, <arlingtonstatefarminsurance.com>, <atlantastatefarminsurance.com>, <aurorafieldstatefarminsurance.com>, <austinstatefarminsurance.com>, <bakersfieldstatefarminsurance.com>, <baltimorestatefarminsurance.com>, <batonrougestatefarminsurance.com>, <boisestatefarminsurance.com>, <bostonstatefarminsurance.com>, <chandlerstatefarminsurance.com>, <charlottestatefarminsurance.com>, <chesapeakestatefarminsurance.com>, <chicagostatefarminsurance.com>, <chulavistastatefarminsurance.com>, <cincinnatistatefarminsurance.com>, <clevelandstatefarminsurance.com>, <coloradospringsstatefarminsurance.com>, <columbusstatefarminsurance.com>, <corpuschrististatefarminsurance.com>, <dallasstatefarminsurance.com>, <denverstatefarminsurance.com>, <detroitstatefarminsurance.com>, <durhamstatefarminsurance.com>, <elpasostatefarminsurance.com>, <fortwaynestatefarminsurance.com>, <fortworthstatefarminsurance.com>, <fremontstatefarminsurance.com>, <fresnostatefarminsurance.com>, <garlandstatefarminsurance.com>, <gilbertstatefarminsurance.com>, <glendalestatefarminsurance.com>, <hendersonstatefarminsurance.com>, <hialeahstatefarminsurance.com>, <honolulustatefarminsurance.com>, <indianapolisstatefarminsurance.com>, <jacksonvillestatefarminsurance.com>, <jerseycitystatefarminsurance.com>, <kansascitystatefarminsurance.com>, <laredostatefarminsurance.com>, <lasvegasstatefarminsurance.com>, <lexingtonstatefarminsurance.com>, <lincolnstatefarminsurance.com>, <longbeachstatefarminsurance.com>, <louisvillestatefarminsurance.com>, <madisonstatefarminsurance.com>, <memphisstatefarminsurance.com>, <mesastatefarminsurance.com>, <milwaukeestatefarminsurance.com>, <minneapolisstatefarminsurance.com>, <nashvillestatefarminsurance.com>, <newarkstatefarminsurance.com>, <neworleansstatefarminsurance.com>, <newyorkstatefarminsurance.com>, <norfolkstatefarminsurance.com>, <oaklandstatefarminsurance.com>, <oklahomacitystatefarminsurance.com>, <omahastatefarminsurance.com>, <orlandostatefarminsurance.com>, <phoenixstatefarminsurance.com>, <portlandstatefarminsurance.com>, <raleighstatefarminsurance.com>, <renostatefarminsurance.com>, <riversidestatefarminsurance.com>, <sacrementostatefarminsurance.com>, <sanantoniostatefarminsurance.com>, <sanbernardinostatefarminsurance.com>, <sandiegostatefarminsurance.com>, <sanjosestatefarminsurance.com>, <santaanastatefarminsurance.com>, <scottsdalestatefarminsurance.com>, <seattlestatefarminsurance.com>, <stlouisstatefarminsurance.com>, <stocktonstatefarminsurance.com>, <stpaulstatefarminsurance.com>, <stpetersburgstatefarminsurance.com>, <tampastatefarminsurance.com>, <toledostatefarminsurance.com>, <tucsonstatefarminsurance.com>, <tulsastatefarminsurance.com>, <virginiabeachstatefarminsurance.com>, <washingtondcstatefarminsurance.com>, <wichitastatefarminsurance.com>, and <winstonsalemstatefarminsurance.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 14, 2017
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