State Farm Mutual Automobile Insurance Company v. ANONYMOUSSPEECH ANONYMOUSSPEECH
Claim Number: FA1710001754924
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ANONYMOUSSPEECH ANONYMOUSSPEECH (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nancyrangelstatefarm.com>, registered with eNom, 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 October 20, 2017; the Forum received payment on October 20, 2017.
On October 23, 2017, eNom, LLC confirmed by e-mail to the Forum that the <nancyrangelstatefarm.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 October 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@nancyrangelstatefarm.com. Also on October 24, 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 November 16, 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”
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 has continuously used the trademark in commerce since that time. 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 logos, statefarm.com, State Farm Bank, State Farm Bank logos, State Farm Catastrophe Services, State Farm Companies Foundation, State Farm Loyalty Rewards, State Farm Mutual Funds, and State Farm Dollars.
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 and Mexico, the State Farm logo is registered.
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 January of 2017, it was brought to the attention of State Farm that Complainant’s trademark “State Farm” had been registered as part of the domain name “NancyRangelStateFarm.com.” The domain name resolves to a web page with no content. (See Attachment 3).
On February 16, 2017, a cease and desist letter was sent by Complainant’s Intellectual Property Manager via email to Respondent at contact@anonymousspeech.com. On March 13, 2017, another cease and desist letter was sent to Respondent via email; however, there was no response from Respondent. On April 21, 2017, 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 Complainant. 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. State Farm did not authorize Respondent to register the domain name or to use the State Farm trademark for Respondent’s business purposes.
In a prior arbitration proceeding regarding this same domain name, the Panel independently identified a State Farm agent by the name of Nancy Rangel. See State Farm Mutual Auto. Ins. Co. v. Anonymousspeech, FA1709001749257 (Forum Oct. 16, 2017). The Panel then inferred from State Farm’s complaint in that proceeding that State Farm did not contact its agent and determined that the existence of an agent with the name Nancy Rangel implied a legitimate interest. This is not the case. State Farm confirms that it contacted Ms. Rangel on or about March 27, 2017 regarding the disputed domain name. Ms. Rangel stated that she was not aware of and has no connection to the disputed domain name. Instead, Ms. Rangel operates a website at the domain http://nancyrangel.com/ and lists herself as the owner of that domain without an intervening privacy service.
In contrast, Respondent is not a State Farm agent and is not Nancy Rangel. Respondent has no legitimate interest. Respondent is not commonly known under the domain name “NancyRangelStateFarm.com.” 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. Respondent has had numerous opportunities to speak up, including the previous arbitration proceeding mentioned above, but has chosen to remain silent and hidden behind its privacy service.
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 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.
Since 2000, State Farm has filed over 450 complaints relating to 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. (Decisions can be viewed at www.adrforum.com/UDRP )
As in the cases referenced 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.” 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. This obvious lack of right to use the name in question shows bad faith registration and use. Moreover, State Farm has a registered agent named Nancy Rangel, but State Farm has confirmed that Ms. Rangel is not Respondent and does not have any known affiliation with Respondent.
b) Despite having registered the domain name “NancyRangelStateFarm.com,” 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 “NancyRangelStateFarm.com,” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a web page with no content. By using the domain name, Respondent has intentionally attempted to attract internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the site or location. Respondent’s use of a trademark in direct conflict with Complainant’s interest 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 “NancyRangelStateFarm.com” 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 February 28, 2007) (concluding that Respondent’s failure to make active use of its domain name in the three months after its registration indicated that Respondent registered the disputed domain name in bad faith); see also Pirelli & C.S.P.A. v. Tabriz, FA 9211798 (Forum April 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also Bloomberg L.P. v. SC Media Servs. & Info., FA 296583 (Forum September 2, 2004) (finding the failure to make an active use of a domain name is not a bona fide offering of goods or services).
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 January 26, 2017. (See Attachment 2) State Farm registered its domain name “statefarm.com” on May 24, 1995. (See Attachment 5) 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 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 its registration with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”). Registration with a governmental national trademark agency, such as the USPTO (or CIPO), is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country (Japan in this case). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Complainant has rights to the STATE FARM mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <nancyrangelstatefarm.com> is confusingly similar to the STATE FARM mark. Generally, the omission of spaces within a mark, and addition of generic or descriptive terms to a mark in order to form a domain name fails to distinguish the resulting domain name from the mark. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶4(a)(i)). Respondent registered the disputed domain name using the STATE FARM mark in its entirety—less the space—and merely adds the name “Nancy Rangel” and the gTLD “.com.” Nancy Rangel is the real name of one of Complainant’s real agents. It is well settled a respondent cannot distinguish a disputed domain name from Complainant’s mark by adding related terms (in this case, the name of an actual agent). There is no doubt some internet users will be confused (especially if they know of Nancy Rangel’s relationship to Complainant). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Therefore, the disputed domain name is confusingly similar to the STATE FARM mark under 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 Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 lacks rights or legitimate interests with respect to <nancyrangelstatefarm.com> because Respondent is not commonly known by the disputed domain name. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that Respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). In this case, the WHOIS information of record indicates the registrant of <nancyrangelstatefarm.com> to be “ANONYMOUSSPEECH ANONYMOUSSPEECH.” Complainant claims Respondent employed a privacy service to hide its true identity for these proceedings. This Panel does not interpret the facts this way. It appears Respondent used a non de plume and did not provide accurate WHOIS information when the domain name was registered (which is pretty similar to using a WHOIS privacy service). Nancy Rangel did not register or operate the disputed domain name, but operates her own website at <nancyrangel.com>. The Panel must conclude Respondent is not commonly known by the <nancyrangelstatefarm.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent has no rights or legitimate interests in <nancyrangelstatefarm.com> because it fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). Respondent has not shown any demonstrable preparations to use <nancyrangelstatefarm.com>, which means Respondent lacks rights or legitimate interests. It does not appear Respondent is using the domain name at all. Certainly there is no web site located at the domain name. Nothing indicates the domain is being used for an email server or as a back-end for ecommerce. Inactively holding a domain name demonstrates a lack of rights or legitimate interests under Policy ¶¶4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Respondent’s <nancyrangelstatefarm.com> resolves into an inactive site which only contains an error message (and not even a parking page). Respondent has not made any use of the domain name which would indicate it has rights or legitimate interests in the name under Policy ¶¶4(c)(i) or (iii).
The fact Nancy Rangel may have rights to her name has nothing to do with this case. Respondent is not Nancy Rangel. The fact a third party not involved in the proceeding may (or may not) have rights does not somehow endow Respondent with rights or eliminate Complainant’s rights, Mattel, Inc. v. RanComp Ltd., FA0510000579563 (Forum Nov. 29, 2005). Only the person who has rights may assert them (absent some special kind of relationship, such as being a conservator or a power of attorney).
Respondent registered the disputed domain name using a non de plume, which means Respondent did not provide accurate WHOIS information. Respondent did nothing to publicly associate itself with the disputed domain name. Therefore, Respondent could not have acquired any rights simply through the registration of the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used <nancyrangelstatefarm.com> in bad faith by attempting to confuse users, for commercial gain, as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s use of the STATE FARM mark attempts to create the impression to internet users seeking Complainant’s products (especially the clients of Nancy Rangel, a registered State Farm agent) and instead redirecting them to an inactive site which has nothing to do with Complainant. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where Respondent was diverting Internet users searching for Complainant to its own website and likely profiting); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration 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.”). Respondent uses Complainant’s STATE FARM mark to confuse Internet users and redirect them to Respondent’s own site (presumably for some kind of profit). Users will likely be confused when seeking Complainant’s financial and insurance services, and that any potential future use of the domain name would almost certainly be infringing. The Panel finds Respondent registered and uses the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent registered and used <nancyrangelstatefarm.com> in bad faith by failing to use the disputed domain name. Inactive holding of a disputed domain name demonstrate bad faith under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent’s <nancyrangelstatefarm.com> resolves to an error message. There is nothing in the record to suggest the domain name is being used as an email server (or for any other legitimate purpose). Respondent does not use the domain name, which constitutes bad faith under Policy ¶4(a)(i).
Complainant claims Respondent knew of Complainant's rights in the STATE FARM mark prior to registration of the domain names. The Panel believes this because Respondent chose to register a domain name which contains the real name of one of Complainant’s agents. Respondent knew about Complainant and its marks. Respondent knew Nancy Rangel worked for Complainant. Respondent knows too much to claim this was all a simple accident.
Respondent used a non de plume to register the domain name. Giving false WHOIS contact information raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption. This Panel will find bad faith registration and use on these grounds alone, The Toronto-Dominion Bank v. TD Bank, FA1612001707004, Zoetis Inc. and Zoetis Services LLC v. tomy Office, Claim Number: FA1703001721046, The Toronto-Dominion Bank v. Ugo King, FA1606001680782, Gilead Sciences, Inc. v. VLADIMIR LENCHITSKY / TARGET LOGIX LLC, FA1606001678718, Homer TLC, Inc. v. Domain Admin / Whois Privacy Corp., FA1606001677982, and CircleBack Lending, Inc. v. Andy Tang, FA1603001667870. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii).
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 <nancyrangelstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 21, 2017
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