State Farm Mutual Automobile Insurance Company v. Mike Rummens / Caller DNA
Claim Number: FA1707001738724
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, U.S.A. Respondent is Mike Rummens / Caller DNA (“Respondent”), California, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapneasy-statefarm.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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2017; the Forum received payment on July 6, 2017.
On July 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cheapneasy-statefarm.com> 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 July 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@cheapneasy-statefarm.com. Also on July 10, 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 August 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarized as follows:
Complainant has been doing business under the name STATE FARM since 1930. It also owns many registered trade marks in the USA, Canada and elsewhere for and including this mark. It owns the domain name statefarm.com.
The Domain Name, registered in 2016, points to the site of one of Complainant’s competitors.
The Domain Name is confusingly similar to the STATE FARM mark.
Respondent has no rights or legitimate interests in the Domain Name. It is not affiliated with Complainant who has not given any authorization to Respondent to use the STATE FARM mark. Respondent is not commonly known by the Domain Name and has not traded under and has no trade marks for the name STATE FARM.
Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s site or the services on his site.
The use of the Domain Name is a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy 4 (a)(iii).
The failure of Respondent to answer the cease and desist letter also indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns many registered trade marks for or including the mark STATE FARM in the USA, Canada and elsewhere for insurance services with use recorded back to 1939 in Canada in the documents before the panel. Complainant owns the domain name statefarm.com.
The Domain Name registered in 2016 points to the site of one of Complainant’s competitors.
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 (Forum July 31, 2000) (holding that 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.”).
Identical and/or Confusingly Similar
Complainant is a provider of insurance services and is the owner of registered trademarks for or including STATE FARM in the United States, Canada and elsewhere with first use in Canada recorded as 1939 in the documents before the panel.
The Domain Name consists of a name identical to Complainant's registered mark STATE FARM plus the generic words ‘cheapneasy’, a hyphen and the gTLD .com. The addition of the generic words ‘cheapneasy’ do not serve to distinguish the Domain Name from Complainant's STATE FARM mark, nor does the addition of a hyphen or a gTLD and the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy. See Gillette CO v RFK Assocs, FA 492867 (Forum July 28, 2005)(finding that the addition of a generic term and the gTLD .com were insufficient to distinguish the domain name from Complainant’s mark) See Sports Auth. Mitch Inc. v Bantu 5, FA 176541 (Forum September 23, 2003). (The addition of a hyphen to Complainant’s mark does not create a distinct characteristic capable of overcoming a Policy 4 (a)(i) confusingly similar analysis.)
As such the Panel finds that Complainant has satisfied the first limb of the Policy.
Rights or Legitimate Interests
Respondent is not commonly known by the Domain Name and does not have any authorization from Complainant to use its mark.
It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote services in competition with those of Complainant. It is clear from the content of the site that Respondent was aware of the significance of the name "STATE FARM" in the field of insurance. The usage is not fair as the site does not make it clear that there is no commercial connection with Complainant. The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods and services. See Bank of AM Corp. v New. Free Cmty. Access, FA 180704 (Forum Sept 30, 2003) (Respondent’s demonstrated intent to divert Internet users seeking Complainant’s web site to website of Respondent and for Respondent’s benefit is not a bona fide offering of goods and services under Policy 4 ( c ) (i) and it is not a legitimate non commercial or fair use under Policy 4 ( c ) (iii).) Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s name and logo for the same and competing business.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent's use of the site is commercial and he is using it to make a profit from services which compete with Complainant in a confusing manner causing disruption to a competitor. The content of Respondent’s web site makes it clear that Respondent was aware of Complainant’s rights at the time of registration. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it sufficient to satisfy paragraph 4 (b)(iv) of the Policy and that this is disruptive to a competitor under Policy 4 (b) (iii). See Fitness International LLC v Alastair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015)(offering competing services under Complainant’s mark causes customer confusion, disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy 4 (b)(iii). See also CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own site where it offered competing services).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy 4 (b)(iii) and (iv). As such there is no need to consider other possible grounds for bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapneasy-statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 10, 2017
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