State Farm Mutual Automobile Insurance Company v. Ashley Bishop / Chaney's Used Cars
Claim Number: FA1808001799597
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Ashley Bishop / Chaney's Used Cars (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmbudgetinsurance.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
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 <statefarmbudgetinsurance.com> 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 6, 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@statefarmbudgetinsurance.com. Also on August 6, 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 August 10, 2018.
On August 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <statefarmbudgetinsurance.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmbudgetinsurance.com> domain name.
3. Respondent registered and uses the <statefarmbudgetinsurance.com> domain name in bad faith.
B. Respondent claims that she did not purchase/register the <statefarmbudgetinsurance.com> domain name.
Complainant, State Farm Mutual Automobile Insurance Company, holds a registration for its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,211,626, registered Sept. 18, 2012).
The <statefarmbudgetinsurance.com> domain name was registered on April 11, 2018, and it resolves to an inactive page. Respondent claims the domain name was registered by an unknown party using her information.
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.
The Panel finds 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).
See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <statefarmbudgetinsurance.com> domain name incorporates Complainant’s STATE FARM mark and simply adds the descriptive terms “budget” and “insurance” and the “.com” gTLD. These changes do not distinguish a domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that Respondent’s <statefarmbudgetinsurance.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <statefarmbudgetinsurance.com> domain name, and is not commonly known by the disputed domain name. Respondent is not authorized or licensed to use the STATE FARM mark. The WHOIS information of record for the <statefarmbudgetinsurance.com> domain name lists the registrant as “Ashley Bishop / Chaney's Used Cars.” The Panel therefore finds that Respondent is not commonly known by the <statefarmbudgetinsurance.com> domain name under Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 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 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).”).
Complainant further argues that Respondent fails to use the <statefarmbudgetinsurance.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent registered the disputed domain name to create the impression of association with Complainant, its agents, products, sponsorships, and services. The Panel notes that the disputed domain name resolves to an inactive page, and finds that inactive use also does not constitute a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <statefarmbudgetinsurance.com> domain name in bad faith by utilizing Complainant’s mark to attract Internet users to the disputed domain name. Appropriation of a complainant’s’ mark into a disputed domain name for the purpose of disruption can evince a finding of bad faith pursuant to Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii)). Complainant contends that customers attempting to reach Complainant’s page may instead reach Respondent’s page, which resolves to an inactive page. The Panel finds that this constitutes bad faith disruption under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered and uses the <statefarmbudgetinsurance.com> domain name in bad faith because the domain name resolves to an inactive page. The Panel agrees and finds 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 provides a screenshot of the disputed domain name’s website which resolves to an inactive page which states “website coming soon!” and “Please check back soon to see if the site is available.”
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmbudgetinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 17, 2018
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