State Farm Mutual Automobile Insurance Company v. Wis INC
Claim Number: FA2004001892393
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, United States. Respondent is Wis INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmpay.com>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmpay.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 April 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@statefarmpay.com. Also on April 20, 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 May 13, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the STATE FARM trademark and other similar trademarks which it has registered, the details of which are provided below. Complainant additionally claims rights acquired through the goodwill it has established by use of the STATE FARM mark in its insurance services for over 70 years.
Complainant submits that the disputed domain name <statefarmpay.com> is confusingly similar to its STATE FARM trademark arguing that the addition of the related or generic term “pay” to a domain name and the <.com> gTLD extension is not sufficient to distinguish the disputed domain from the Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name, arguing that Respondent is not commonly known under the domain name <statefarmpay.com>. Complainant states that it is believed that the Respondent has never been known by or performed business under the domain name at issue, and that Respondent does not possess independent intellectual property rights in the name.
Complainant asserts that Respondent is not associated with, affiliated with or sponsored by Complainant; that Complainant did not authorize Respondent to register the disputed domain name or to use the STATE FARM trademark for Respondent’s business purposes; and that Complainant has no contractual arrangement with Respondent that would allow Respondent to offer services under the STATE FARM name.
Complainant adds that Respondent is not using, nor are there any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming. Even if Respondent did put information on its website it would cause confusion to potential customers.
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant alleges that Respondent registered the disputed domain name to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the goodwill associated with the STATE FARM name; and/or to create initial interest confusion for individuals looking for information about Complainant.
The disputed domain name was registered on November 18, 2019. Complainant registered its domain name <statefarm.com> on May 24, 1995. Complainant argues that therefore that the registrant of the disputed domain name knew, or should have known, of Complainant’s long-term use of the STATE FARM trademark and the long-term use of the domain name <statefarm.com> when the disputed domain name was registered
Complainant submits that the disputed domain name was registered to attract individuals seeking information on Complainant and to create customer confusion as to the source or sponsorship of the site. Individuals visiting the website which the disputed domain name resolves are misled to a parked web page with click through links for products and services similar to Complainant’s business.
Complainant alleges that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the site or location. Respondent’s use of a trademark to generate business in direct conflict with Complainant’s interest reflects that the Respondent has acted in bad faith.
Complainant adds that Respondent has failed to respond to correspondence from Complainant demanding that Respondent cease and desist unauthorized use of the name in question. Complainant alleges that such failure to respond with legitimate information for use or intention to use the name and then failure to comply with Complainant’s cease and desist request demonstrates that respondent has registered and is using the name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the STATE FARM trademark, which it has used in the insurance and the financial services industry in the United States since 1930.
Complainant owns a portfolio of registered trademarks including in United States and Canada for the STATE FARM trademark and other trademarks incorporating the words “State Farm”. The portfolio includes the following United States registered trademarks and service marks:
· State Farm (design) registration number 4,211,626 registered on September 18, 2012, on the Principal Register for services in international class 36;
· State Farm (design) Reg. No. 4,227,731 registered on October 16, 2012, on the Principal Register for services in international class 36;
· STATE FARM registration number 5,271,354, registered on August 22, 2017, on the Principal Register for services in international class 36;
· STATE FARM BANK registration number 2,319,867, registered on February 15, 2000 on the Principal Register for services in international class 36;
· STATE FARM BANK (design) registration number 4,211,629, registered on September 8, 2012 on the Principal Register for services in international class 36;
· STATEFARM.COM registration number 2,444,342, registered on April 17, 2001 on the Principal Register for services in international class 36;
· STATEFARM.COM registration number 2,444,341, registered on April 17, 2001 on the Principal Register for services in international class 38;
· STATEFARM.COM registration number 2,450,890, registered on May 15, 2001 on the Principal Register for services in international class 42;
· STATE FARM DOLLARS registration number 2,544,840, registered on March 5, 2002 on the Principal Register for services in international class 35;
Complainant’s Canadian registered service marks include STATE FARM registration number TMA559,285 registered on Mary 15, 2002.
Complainant has an established its Internet presence using its domain name <statefarm.com> since 1995.
The disputed domain name was registered on November 18, 2019 and resolves to a website that purports to present links to insurance and bill pay services.
There is no information available about Respondent except for that which is provided in the Complaint, the published registration details on the Registrar’s WHOIS, and the information provided by the Registrar in response to the request sent by the Forum to the Registrar requesting registration details of the disputed 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.
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”).
The disputed domain name <statefarmpay.com> is composed of Complainant’s STATE FARM registered service mark in its entirety, the word “pay” and the <.com> gTLD extension. Complainant’s service mark is the initial, dominant and only distinctive element in the disputed domain name. For the purposes of comparison, the word “pay” in this context does not reduce the similarity of the disputed domain name and Complainant’s mark. The gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the Test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name, arguing that Respondent is not commonly known under the domain name <statefarmpay.com>; that it is believed that the Respondent has never been known by, or performed business under, the disputed domain name; that Respondent does not possess independent intellectual property rights in the disputed domain name; that Respondent is not associated with, affiliated with or sponsored by Complainant; that Complainant did not authorize Respondent to register the disputed domain name or to use the STATE FARM trademark for Respondent’s business purposes; that Complainant has no contractual arrangement with Respondent that might allow Respondent to offer services under the STATE FARM name; and that Respondent is not using, nor are there any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services because as of the date of this Complaint, there was no legitimate content associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant carries on a substantial, long established business. The disputed domain name was registered on November 18, 2019. Complainant has been using the STATE FARM trademark for 70 years and has had an Internet presence since it registered its domain name <statefarm.com> on May 24, 1995. It is most improbable therefore that the registrant was unaware of Complainant, its name, trademark and Internet domain name when the disputed domain name was registered. On the balance of probabilities therefore the disputed domain name was registered in order to create the impression of association with Complainant, its agents, products, sponsorships, and services and to trade off Complainant’s reputation and goodwill.
The disputed domain name resolves to a very simple website purporting to offer links to Internet content relating to insurance and bill pay services. Such services directly compete with Complainant.
This panel finds on the balance of probabilities, that by such use of the disputed domain name, Respondent has intentionally attempted 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 Respondent’s website and the products and services on the website. Respondent is therefore using the disputed domain name bad faith.
As this panel finds that the disputed domain name was registered and is been used in bad faith, Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii) and is entitled to the remedies requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmpay.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________________
James Bridgeman SC
Panelist
Dated: May 14, 2020
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