DECISION

 

State Farm Mutual Automobile Insurance Company v. Henry Francis

Claim Number: FA1707001738716

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Henry Francis (“Respondent”), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <autoinsurancestatefarm.xyz>, registered with Uniregistrar Corp.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 6, 2017; the Forum received payment on July 6, 2017.

 

On July 10, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <autoinsurancestatefarm.xyz> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name.  Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 July 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@autoinsurancestatefarm.xyz.  Also on July 12, 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 12, 2017.

 

On July 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides insurance and financial services throughout North America. Complainant uses the STATE FARM mark in conjunction with its business practices. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626; registered Sept. 18, 2012). Additionally, Complainant registered the STATE FARM Mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA559,285; registered Mar. 15, 2002) and the Office for Harmonization in the International Market (“OHIM”) (e.g., Reg. No. 010501997; registered on May 15, 2012). 

 

Respondent has no rights or legitimate interests in <autoinsurancestatefarm.xyz>. Respondent is not commonly known by the disputed domain name. 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 domain. Respondent’s <autoinsurancestatefarm.xyz> resolves to an inactive website, lacking any content beyond the statement “Welcome to autoinsurancestatefarm.xyz. This name was just registered on Uniregistry.com.”

 

Respondent registered and is using <autoinsurancestatefarm.xyz> in bad faith.  The disputed domain name attracts internet users to Respondent’s website, creating a likelihood of confusion as to Respondent’s affiliation with Complainant.  Furthermore, Respondent has not shown any demonstrable intent to actively use the domain.  Respondent registered <autoinsurancestatefarm.xyz> with actual knowledge of Complainant and its rights to the STATE FARM mark.

 

B. Respondent

Respondent is the current owner of <autoinsurancestatefarm.xyz>, which was registered on November 11, 2016.  Respondent is in the business of purchasing multiple domain names at the same time. Respondent did not have a “preplanned intention” for use of the disputed domain. Complainant should “be willing to wait out and observe the eventual usage (if any) of the domain and see if it’s in bad faith.” Because Respondent does not reside in the United States, the patent laws do not pertain to Respondent because it is “not competing in the geographical area the Patent covers.”  

 

FINDINGS

Complainant is State Farm Mutual Automobile Insurance Company, of Bloomington, Illinois, USA.  Complainant is the owner of domestic and international registrations for the marks STATE FARM and STATE FARM INSURANCE, as well as related marks used in connection with the goods and services Complainant offers in the financial and insurance industries. Complainant has continuously used the STATE FARM mark since at least as early as 1996. Complainant also provides its services over the internet via its official website <statefarm.com>.

 

Respondent is Henry Francis of Lagos, Nigeria. Respondent is the current owner of <autoinsurancestatefarm.xyz>, which was registered on or about November 11, 2016. Respondent’s registrar’s address is listed as Grand Cayman, Cayman Islands.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant provides insurance and financial services throughout North America. Complainant uses the STATE FARM mark in conjunction with its business practices.  Complainant registered the STATE FARM mark with the USPTO (e.g., Reg. No. 4,211,626; registered Sept. 18, 2012).  Additionally, Complainant registered the STATE FARM Mark with the CIPO (e.g., Reg. No. TMA559,285; registered Mar. 15, 2002) and the OHIM (e.g., Reg. No. 010501997; registered on May 15, 2012). Past panels have held that mark registrations with multiple government trademark entities is sufficient to show rights in a mark.  See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”); see also Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights to the STATE FARM mark.

 

Complainant asserts Respondent’s <autoinsurancestatefarm.xyz> is confusingly similar to Complainant’s STATE FARM mark as it wholly incorporates the mark. Registration of a domain name that wholly appropriates a mark, of which a complainant has established rights within, does not remove the resulting domain name from the realm of confusing similarity per Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Here, Complainant demonstrates rights in the STATE FARM mark through trademark registrations from multiple authorities. The Panel here finds that <autoinsurancestatefarm.xyz> is confusingly similar to Complainant’s mark.

 

Respondent raises no contentions with regards to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes 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), 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 (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). Complainant has met this burden.

 

Complainant asserts that Respondent has no rights or legitimate interests in <autoinsurancestatefarm.xyz>.  WHOIS information associated with this case indicates that Respondent is “Henry Francis.”  Prior panels have concluded that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Here nothing in the WHOIS information indicates that Respondent is ‘commonly known by’ the disputed domain name, and Respondent has provided no evidence to contradict Complainant’s assertions. The Panel here finds that Respondent is not commonly known by <autoinsurancestatefarm.xyz>.

 

Complainant avers it has not authorized or licensed Respondent to use the STATE FARM mark in any regard, nor is Respondent affiliated with Complainant.  Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain. To support its argument, Complainant submitted evidence indicating that Respondent’s <autoinsurancestatefarm.xyz> resolves to an inactive website, lacking any content beyond the statement “Welcome to autoinsurancestatefarm.xyz. This name was just registered on Uniregistry.com.” “Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’”  Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).  Moreover, a respondent’s failure to make an active use of a domain name “that is identical to [c]omplainant’s mark 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).”  Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004). The Panel here finds that Respondent’s failure to associate any content with its disputed domain name demonstrates a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).

 

Respondent claims to be in the business of purchasing multiple domain names at the same time. The Panel notes Respondent’s practice is not inherently improper. “In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.” See Front Range Internet, Inc. v. Murphy, FA 145231 (Forum Apr. 4, 2003). However, those circumstances do not include knowingly trafficking in domain names containing protected trademarks without authorization of the mark owners. Nor does the simultaneous purchasing of multiple domain names relieve purchasers of their duty to assure that the domain names purchased do not infringe upon the rights of any mark owners. Respondent has not indicated anything other than the nature of his business practices as a basis for establishing rights in the disputed domains. The Panel here finds that Respondent’s business practices do not afford it rights and legitimate interests in <autoinsurancestatefarm.xyz>.

 

Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant maintains that Respondent registered and is using <autoinsurancestatefarm.xyz> in bad faith.  The Panel again notes Respondent’s <autoinsurancestatefarm.xyz> resolves to an inactive webpage hosted by Uniregistry.com.  Complainant contends that the disputed domain name attracts internet users to Respondent’s website, creating a likelihood of confusion as to Respondent’s affiliation with Complainant. "While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."  Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002).  Additionally, “[r]egistration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”  Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003). 

 

Furthermore, Complainant argues that Respondent has not shown any demonstrable intent to actively use the domain. Panels have found bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.”  Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000). The Panel here finds that Respondent is capitalizing on the confusing similarity of the disputed domain name to benefit from the valuable goodwill that Complainant has established in its mark, and therefore has registered, and is using, the domain name in bad faith under Policy ¶ 4(b)(iv).

 

Because Respondent does not reside in the United States, Respondent argues that United States patent laws do not pertain to it since Respondent is “not competing in the geographical area the Patent covers.” Respondent also notes prior cases have held, “If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.” MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Forum May 9, 2003). Respondent’s arguments are improper on several grounds. The instant proceedings are based on the UDRP Policies, which are international in scope, and apply to all who register domain names for use on the World Wide Web. Unites States patent laws are inapplicable to these proceedings and have not been raised by Complainant in this case. Respondent also bears the burden of proving registration and use for a legitimate purpose or a reasonable belief related thereto. Merely registering multiple domain names incorporating registered marks of others, and setting up unauthorized resolving websites utilizing those marks is not a legitimate purpose. Everyone registering domain names indicates that they are familiar with the UDRP policies, including the representation that the domain names do not infringe or violate the rights of others. Respondent could not have reasonably believed that the disputed domain name was registered for a legitimate purpose, as Respondent stated he had no particular intentions when registering the domain name, and subsequently established an inactive website utilizing the domain name. Respondent’s registration and use was in bad faith.

 

Respondent raises no valid contentions with regards to Policy ¶ 4(a)(iii).

 

Complainant has proven this element.

 

DECISION

As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <autoinsurancestatefarm.xyz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Darryl C. Wilson, Panelist

Dated: July 28, 2017

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page