State Farm Mutual Automobile Insurance Company v. Tony Teolis
Claim Number: FA1804001780864
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Tony Teolis (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <charlestonstatefarm.com>, registered with Google LLC.
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 April 9, 2018; the Forum received payment on April 9, 2018.
On April 9, 2018, Google LLC confirmed by e-mail to the Forum that the <charlestonstatefarm.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 April 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@charlestonstatefarm.com. Also on April 13, 2018, 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 April 17, 2018.
On April 23, 2018, 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, engages in business in the insurance and financial services industries.
Complainant uses its STATE FARM mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012).
Respondent’s <charlestonstatefarm.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <charlestonstatefarm.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its STATE FARM mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Tony Teolis” as the registrant. Respondent is not using the <charlestonstatefarm.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to an inactive website.
Respondent registered and is using the <charlestonstatefarm.com> domain name in bad faith. Respondent attempts to create confusion between Complainant’s mark and the domain name for Respondent’s commercial gain. Additionally, Respondent registered the <charlestonstatefarm.com> domain name with actual or constructive knowledge of Complainant’s rights in the STATE FARM mark. Furthermore, Respondent fails to make active use of the disputed domain name.
B. Respondent
Respondent contends as follows:
Respondent registered the at-issue domain name for a third party who is opening a State Farm Agency in Charleston, South Carolina to assist the with marketing and web presence regarding such business.
Respondent was unaware of the particular issues regarding branding and so purchased <charlestonstatefarm.com> to secure it in the case that this was allowed.
The domain was never pointed to a web page and there was no intent of doing so after becoming aware that this was not allowed. Respondent’s first record this dispute was from Google Domains on 4/9/18.
Respondent apologizes; as this was a misunderstanding and is happy to have the domain transferred to State Farm corporate.
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 at-issue 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.
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 the requested 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 express indication that Respondent agrees to transfer its <charlestonstatefarm.com> domain name and does not oppose the Complaint. Respondent, in its short Response, states in no uncertain terms that it desires that the at-issue domain name be transferred to Complainant. The Panel, noting the parties’ agreement as to the disposition of the <charlestonstatefarm.com> domain name, 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 immediately above, as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must nevertheless 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 Complainant’s rights in such trademark for the purposes of Policy ¶ 4(a)(i). 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).
Additionally, the at-issue domain name contains Complainant’s entire STATE FARM trademark, less its space, prefixed with the geographical descriptor “charleston” all followed by the top-level domain name “.com.” The slight differences between the at-issue <charlestonstatefarm.com> domain name and Complainant’s trademark are insufficient to distinguish the trademark from Respondent’s domain name for the purposes of the Policy. Therefore, the Panel finds Respondent <charlestonstatefarm.com> domain name to be confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
In light of the foregoing, Respondent’s consent to transfer the at-issue domain name permits the Panel to order that the 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 at-issue domain name be transferred to Complainant, the Panel GRANTS Complainant’s request.
Accordingly, it is Ordered that the <charlestonstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 23, 2018
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