State Farm Mutual Automobile Insurance Company v. Sean Spence
Claim Number: FA1712001762147
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Sean Spence (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmsaves.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 11, 2017.
On December 12, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <statefarmsaves.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@statefarmsaves.com. Also on December 13, 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 January 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds a registration for the STATE FARM service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,211,626, registered September 18, 2012.
Respondent registered the domain name <statefarmsaves.com> on or about September 4, 2017.
The domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent has not been commonly known by the domain name
Complainant has not licensed or otherwise permitted Respondent to use the STATE FARM mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, the domain name resolves to a parked page with a domain name search toolbar.
Respondent has no rights to or legitimate interests in the domain name.
For commercial gain, Respondent attempts to attract Internet users to the website resolving from the domain name.
Respondent has failed to make demonstrable preparations to use the domain name for any legitimate purpose.
Respondent has failed to respond to Complainant’s cease and desist letter.
Respondent knew of Complainant’s rights in the STATE FARM mark prior to its registration of the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the STATE FARM service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a [UDRP] complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶4(a)(i), we conclude from a review of the record that Respondent’s <statefarmsaves.com> domain name is confusingly similar to Complainant’s STATE FARM service mark. The domain name contains the mark in its entirety, with only the addition of the generic term “saves,” which can be taken to relate to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and a gTLD to the mark of another in creating a domain name is insufficient to distinguish the resulting domain name from that mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested domain name
<statefarmsaves.com>, and that Complainant has not authorized Respondent to use the STATE FARM mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Sean Spence,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the relevant WHOIS record listed “Dale Anderson” as the registrant of a disputed domain name, that respondent was not commonly known by the <statefarmforum.com> domain name as provided in Policy ¶ 4(c)(ii)). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <statefarmsaves.com> domain name resolves to a parked page with a domain name search toolbar, and that Respondent seeks to gain financially from this use of the domain name. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name under the provisions of those subsections of the Policy. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO March 12, 2008) (where a disputed domain name had been parked, a panel found that:
[T]he Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.
See also Cengage Learning Inc. v. Myers, FA 1116919 (Forum January 15, 2008):
[T]he view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.
That Respondent evidently seeks to profit from the operation of the parked page residing on the website resolving from the domain name makes the outcome all the more clear.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <statefarmsaves.com> domain name, which we have found to be confusingly similar to Complainant’s STATE FARM mark, in an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands of proof of Respondent’s bad faith in registering and using the domain name. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum December 29, 2000) (finding bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) notwithstanding that a respondent has not yet actively 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”).
Next, Complainant claims that Respondent uses the disputed domain name to host a parked webpage. Where a respondent owns a domain name and fails to make an active use of said domain name, a different entity’s hosting of links or advertisements on the resolving page indicates bad faith on the part of the respondent. To the same effect, see Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO April 26, 2007) (finding that it made no difference that a respondent permitted advertisements to be hosted on an offending web page that were “generated by the parking company,” concluding that that respondent nonetheless registered and used the domain name in bad faith).
Finally, under this head of the Policy, we are convinced by the evidence that Respondent knew of Complainant and its rights in the STATE FARM mark when Respondent registered the <statefarmsaves.com> domain name. This too demonstrates that Respondent registered the domain name in bad faith. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <statefarmsaves.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 16, 2018
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