State Farm Mutual Automobile Insurance Company v. Freddy Cano / Suncoast Automotive Wholesalers
Claim Number: FA2004001893217
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Freddy Cano / Suncoast Automotive Wholesalers (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmwindshieldreplacement.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2020; the Forum received payment on April 22, 2020.
On April 24, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmwindshieldreplacement.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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@statefarmwindshieldreplacement.com. Also on April 24, 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 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, State Farm Mutual Automobile Insurance Company is a famous business that 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). See Compl. Ex. 1. Respondent’s <statefarmwindshieldreplacement.com> 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 terms “windshield,” and “replacement” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <statefarmwindshieldreplacement.com> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <statefarmwindshieldreplacement.com> domain name to divert Internet users away from Complainant.
Respondent has registered and uses the <statefarmwindshieldreplacement.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. In addition, Respondent fails to make an active use of the disputed domain name. Complainant sent a cease and desist letter to Respondent, to which Respondent failed to respond or comply. See Compl. Ex. 4. Finally, Respondent registered the disputed 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.
1. Complainant is a prominent United States company engaged in both the insurance and financial services industries.
2. Complainant has established its trademark 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).
3. Respondent registered the <statefarmwindshieldreplacement.com> domain name on September 17, 2019.
4. Respondent uses the <statefarmwindshieldreplacement.com> domain name to create the impression of association with Complainant to divert Internet users away from Complainant and trade off the good will associated with Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the STATE FARM mark based upon its registration with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). See Compl. Ex. 1. 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)). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Complainant submits that Respondent’s <statefarmwindshieldreplacement.com> domain name is confusingly similar to Complainant’s STATE FARM mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed 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). Complainant argues Respondent merely adds the terms “windshield,” and “replacement” along with the “.com” gTLD to Complainant’s STATE FARM mark. The Panel agrees with Complainant and finds that the <statefarmwindshieldreplacement.com> domain name does not contain changes that would sufficiently distinguish it from the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STATE FARM trademark and to use it in its domain name, merely adding the words “windshield,” and “replacement” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <statefarmwindshieldreplacement.com> domain name on September 17, 2019;
(c) Respondent uses the <statefarmwindshieldreplacement.com> domain name to create the impression of association with Complainant to divert Internet users away from Complainant and trade off the good will associated with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <statefarmwindshieldreplacement.com> domain name because Respondent is not licensed or authorized to use the STATE FARM mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed 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 the disputed 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 “Freddy Cano / Suncoast Automotive Wholesalers,” and there is no other evidence to suggest Respondent was authorized to use the STATE FARM mark or is commonly known by the disputed domain name. See Compl. Ex. 2. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <statefarmwindshieldreplacement.com> domain name is evinced 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).”). Here, Complainant submits that Respondent is intending to attract individuals looking for information about Complainant when instead users are redirected to Respondent’s website offering windshield replacement services. See Compl. Ex. 3. Therefore, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <statefarmwindshieldreplacement.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 falsely to 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, but the fact is individuals are redirected to Respondent’s website offering windshield replacement services. See Compl. Ex. 3. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent has failed to make an active use of the disputed domain name. Failure to use a domain name actively 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 contends that Respondent’s domain name fails to resolve to a website that contains legitimate content. See Compl. Ex. 3. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the disputed 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 disputed 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, given the global reach of the Internet, the fact that Complainant is widely known indicates Respondent must have been aware of Complainant when it registered the disputed domain name. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when it registered the <statefarmwindshieldreplacement.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmwindshieldreplacement.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 18, 2020
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