DECISION

 

State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield

Claim Number: FA1808001799574

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company

(“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois.  Respondent is Dr. Keenan Cofield

(“Respondent”), Maryland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsurance.app>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 1, 2018; the Forum received payment on August 1, 2018.

 

On August 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarminsurance.app> 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 August 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@statefarminsurance.app.  Also on August 7, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 31, 2018, pursuant to Complainant’s  request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 Supplements Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company in the insurance and financial services industry that has been doing business under the name STATE FARM since 1930. Complainant has rights in the STATE FARM and multiple related marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered Sep. 18, 2012). See Compl. Ex. 1. Respondent’s <statefarminsurance.app> domain name is confusingly similar to Complainant’s STATE FARM mark, as the mark is part of the domain name.

2.    Respondent has no rights or legitimate interests in the <statefarminsurance.app> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the STATE FARM mark in any manner. Respondent cannot establish rights in a domain name so similar to the famous STATE FARM mark, and has registered the name to create the impression of association with Complainant in order to trade off the goodwill associated with the mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content. See Compl. Ex. 3.

3.    Respondent registered and is using the <statefarminsurance.app> domain name in bad faith. Respondent’s attempt to sell the domain name to Complainant is evidence of this bad faith. Further, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Additionally, Respondent is not using, nor has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Finally, Respondent knew or should have known of Complainant’s long-term use of the STATE FARM mark at the time Respondent registered and subsequently used the domain name.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <statefarminsurance.app> domain name is confusingly similar to Complainant’s STATE FARM mark.

2.    Respondent does not have any rights or legitimate interests in the <statefarminsurance.app> domain name.

3.    Respondent registered or used the <statefarminsurance.app> domain name in bad faith.

 

DISCUSSION

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 the 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 claims rights in the STATE FARM mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,211,626, registered Sep. 18, 2012). See Compl. Ex. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the STATE FARM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

Complainant next argues Respondent’s <statefarminsurance.app> domain name is confusingly similar to the STATE FARM mark, as the name contains the mark. Though Complainant does not specifically argue the changes Respondent made to the mark in creating the domain name, the Panel notes the name omits the spacing in the mark, and adds the term “insurance” as well as the generic top-level domain (“gTLD”) “.app.” Such changes, when asserted, are not typically sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. 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 MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”); see also PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”). The Panel therefore determines the <statefarminsurance.app> domain name is confusingly similar to the STATE FARM mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <statefarminsurance.app> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” 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 purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Dr. Keenan Cofield,” (see Compl. Ex. 2) and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <statefarminsurance.app> domain name.

 

Complainant further argues that because the STATE FARM mark is famous and distinctive, Respondent cannot establish rights or legitimate interests in the confusingly similar <statefarminsurance.app> domain name per Policy ¶ 4(c)(ii). Where a domain name incorporates a famous mark, a presumption that the respondent is not commonly known by the name may apply. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”). Complainant contends the STATE FARM mark is distinctive and has acquired secondary meaning in the minds of the public which is associated with Complainant. The Panel agrees and finds Respondent is not commonly known by the <statefarminsurance.app> domain name.

 

Complainant further argues Respondent’s lack of rights or legitimate interests in the <statefarminsurance.app> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant does not expand on this assertion, but elsewhere in the Complaint claims the domain name is not being actively used. Inactive holding of a domain name, without contradicting evidence from the respondent, is not a bona fide offering of goods or services indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Complainant includes a screenshot of the error message returned upon an attempt to visit the disputed domain name as evidence of Respondent’s nonuse of the name. See Compl. Ex. 3. The Panel therefore finds Respondent does not use the domain name to make a bona fide  offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends Respondent’s offering of the <statefarminsurance.app> domain name for sale to Complainant indicates it registered and used of the name in bad faith. A specific offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See State Farm Mutual Automobile Insurance Company v. Yu Ke Rong, FA 1750476 (Forum Oct. 25, 2017) (finding bad faith where the respondent attempted to sell the domain name to the complainant for $800.00: “offers targeted specifically at a complainant may serve as evidence of bad faith under Policy ¶ 4(b)(i).”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant includes a copy of correspondence from Respondent in which Respondent states the “price for the app is $5,000,000 or best offer,” and threatens to countersue. See Compl. Ex. 4. The Panel agrees and finds Respondent to have registered and used the <statefarminsurance.app> domain name in bad faith per Policy ¶ 4(b)(i).

 

Complainant asserts that Respondent’s failure to use the <statefarminsurance.app> domain name in connection with a bona fide offering of goods or services is evidence of its bad faith. Inactive holding of a domain name can be evidence of 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).”). Complainant claims the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content. See Compl. Ex. 3 The Panel agrees and finds Respondent to be inactively holding the <statefarminsurance.app>  domain name in bad faith per Policy ¶ 4(a)(iii).

 

Complainant also contends that in light of the fame and notoriety of Complainant's STATE FARM mark, it is inconceivable that Respondent could have registered the <statefarminsurance.app> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the names in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarminsurance.app> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  September 10, 2018