State Farm Mutual Automobile Insurance Company v. Nick Merklin / Direct Finds
Claim Number: FA1710001752380
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Nick Merklin / Direct Finds (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmdirectfinds.com>, registered with Tucows Domains Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 6, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <statefarmdirectfinds.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@statefarmdirectfinds.com. Also on October 9, 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 October 11, 2017.
On October 13, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that engages in business under the STATE FARM mark in both the insurance and financial services industries.
Complainant has rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered Sept. 18, 2012).
Respondent’s <statefarmdirectfinds.com> is confusingly similar to Complainant’s mark because the entire mark is incorporated, less the space, and the generic/descriptive phrase “direct finds” is incorporated along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the STATE FARM mark in a domain name. The domain name resolves to a blank webpage that reads “Website Expired.” There is no legitimate content associated with the disputed domain name, thus Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. Respondent registered the domain name with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Further, the disputed domain name resolves to an inactive website, further evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent states in its response, “Direct Finds would like to cancel the domain ‘statefarmdirectfinds.com.’ The domain is registered and paid through June 4, 2018. We would like to forfeit this remaining time and cancel immediately.”
Complainant has trademark rights in the STATE FARM mark.
Respondent registered the at-issue domain name after Complainant acquired rights in STATE FARM.
Respondent agrees to relinquish the domain name.
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.
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case, there is a clear indication that Respondent agrees to transfer the at-issue domain name. In its Response to the Complaint, Respondent states that “[it] would like to cancel the domain ‘statefarmdirectfinds.com.’ The domain is registered and paid through June 4, 2018. We would like to forfeit this remaining time and cancel immediately.” Therefore, the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for the STATE FARM trademark shows its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO). Additionally, the at-issue domain name contains Complainant’s entire STATE FARM trademark followed by the descriptive terms “direct” and “finds” (or simply “directfinds”). The top-level domain name “.com” is appended thereto. The differences between the at-issue <statefarmdirectfinds.com> domain name and Complainant’s STATE FARM trademark are insufficient to distinguish one from the other for the purposes of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding that confusing similarity existed where [a domain name] contained a complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and top-level domain).
In light of the foregoing, Respondent’s apparent consent to transfer its confusingly similar at-issue domain name in response to the instant complaint compels the Panel to order that Respondent’s <statefarmdirectfinds.com> domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent consents to Complainant’s request that the domain name be transferred to Complainant, the Panel further concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmdirectfinds.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 17, 2017
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