State Farm Mutual Automobile Insurance Company v. GTECH
Claim Number: FA2001001878510
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is GTECH (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aplaceforstatefarm.com>, registered with Network Solutions, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 13, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <aplaceforstatefarm.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 January 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2020 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@aplaceforstatefarm.com. Also on January 14, 2020, 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 February 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, State Farm Mutual Automobile Insurance Company, is a engages in both the insurance and financial services industry. Complainant claims rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012).
2. Respondent’s <aplaceforstatefarm.com>[i] domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, less the space, merely adding the generic term “a place for” and the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <aplaceforstatefarm.com> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <aplaceforstatefarm.com> domain name to divert Internet users away from Complainant to Respondent’s webpage.
5. Respondent has registered and uses the <aplaceforstatefarm.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location.
6. In addition, Respondent fails to make an active use of the domain name.
7. Furthermore, Complainant sent a cease-and-desist letter to Respondent, to which Respondent failed to respond or comply.
8. Finally, Respondent registered the <aplaceforstatefarm.com> domain name with actual knowledge of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <aplaceforstatefarm.com> domain name and that Respondent registered and uses the domain name 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:
(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the STATE FARM mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides copies of its STATE FARM registrations with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). Therefore, Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <aplaceforstatefarm.com> domain name is confusingly similar to the STATE FARM mark as it contains the mark in its entirety, merely adding the generic term “a place for” and the “.com” gTLD. Additions of generic and/or descriptive terms along with a gTLD may not sufficiently mitigate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees and holds that the <aplaceforstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <aplaceforstatefarm.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <aplaceforstatefarm.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the STATE FARM mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “GTECH,” and there is no other evidence to suggest Respondent was authorized to use the STATE FARM mark or is commonly known by the <aplaceforstatefarm.com> domain name. The Panel therefore finds Respondent is not commonly known by the <aplaceforstatefarm.com> domain name per Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the <aplaceforstatefarm.com> domain name is shown by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent is attempting to create the impression of association with Complainant to trade off the good will associated with Complainant. Attempting to create a false affiliation to divert Internet users seeking Complainant’s website is not a bona fide offering or legitimate use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The record supports Complainant’s assertion that Respondent is intending to attract individuals looking for information about Complainant, to Respondent’s parked webpage displaying click through links. Therefore, the Panel agrees with Complainant and finds that Respondent has does not have rights or legitimate interests in the<aplaceforstatefarm.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <aplaceforstatefarm.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s STATE FARM mark, and giving the impression that interested individuals will receive information regarding Complainant. In fact, individuals are sent to a parked web page that displays click through links. The Panel agrees with Complainant and finds that Respondent registered and uses the <aplaceforstatefarm.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Next, Complainant asserts that Respondent has failed to make an active use of the <aplaceforstatefarm.com> domain name. Failure to actively use a domain name that incorporates the mark of another is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots of Respondent’s parked website that features click through links. Thus, Respondent registered and uses the <aplaceforstatefarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <aplaceforstatefarm.com> domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts that because it is so widely known, Respondent must have been aware of Complainant when it registered the domain name, particularly because the <aplaceforstatefarm.com> domain incorporates the STATE FARM mark in its entirety. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when it registered the <aplaceforstatefarm.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <aplaceforstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 9, 2020
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