DECISION

 

State Farm Mutual Automobile Insurance Company v. yosef ishaki

Claim Number: FA2010001916006

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), Illinois, USA.  Respondent is yosef ishaki (“Respondent”), Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <statefarmhvac.com> and <statefarmheatingandcooling.com>, 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 October 6, 2020; the Forum received payment on October 6, 2020.

 

On October 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@statefarmhvac.com, postmaster@statefarmheatingandcooling.com.  Also on October 7, 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 October 29, 2020, 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 Supplemental 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant has rights in the STATE FARM mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered September 18, 2012). See Compl. Exhibit A. Respondent’s <statefarmhvac.com> and <statefarmheatingandcooling.com> are identical or confusingly similar to Complainant’s STATE FARM mark as they merely add the industry related abbreviation “HVAC” and the phrase “Heating and Cooling.”

 

2.    Respondent lacks rights or legitimate interests in the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the STATE FARM mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses them to trade off the good will associated with Complainant and create the impression of association with Complainant. Additionally, Respondent is not using, nor are there any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services as there is no demonstrable indication that legitimate content would be associated with the disputed domain names.

 

3.    Respondent registered and uses the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names in bad faith. Respondent uses the <statefarmhvac.com> domain name to intentionally attract internet users for Respondent’s commercial gain as the domain name resolves to a parked page with click through links. Respondent makes no use of the <statefarmheatingandcooling.com> domain name as the domain resolves to an error page with no content. Additionally, Respondent uses both disputed domain names to intentionally attract individuals seeking information on Complainant and create initial customer confusion as to the source or sponsorship of these sites. Lastly, Complainant failed to respond to Complainant’s cease and desist letters. 

 

B.   Respondent

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

 

FINDINGS

1.    Respondent’s <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names are confusingly similar to Complainant’s STATE FARM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names.

 

3.    Respondent registered and used the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names 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 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”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the STATE FARM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,211,626, registered September 18, 2012). See Compl. Exhibit A. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the STATE FARM mark per Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names are identical or confusingly similar to Complainant’s STATE FARM mark as they merely add the industry related abbreviation “HVAC” or the phrase “Heating and Cooling.” The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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 as 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 the disputed domain names are confusingly similar to Complainant’s 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 contends Respondent lacks rights or legitimate interests in the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the STATE FARM mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Yosef Ishaki,” and there is no other evidence to suggest that Respondent was authorized to use the STATE FARM mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses them to trade off the good will associated with Complainant and create the impression of association with Complainant. Using a confusingly similar domain name to intentionally create a false impression of association with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 argues the disputed domain names are confusingly similar to Complainant’s mark, and Respondent intentionally seeks to cause Internet user confusion regarding Complainant’s affiliation with Respondent’s domain names. The Panel agrees and finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Furthermore, Complainant argues that Respondent fails to use the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as there are no demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. Failure to make use of a confusingly similar domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant provides screenshots of the inactive webpage resolving from the <statefarmheatingandcooling.com> domain name. See Compl. Exhibit 3.2. Therefore, the Panel further finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the <statefarmhvac.com> domain name in bad faith as Respondent uses the domain name to host a parked page with click through links. Registration of a confusingly similar domain name with the intent to generate revenue can evidence bad faith registration and use per Policy ¶ 4(b)(iv)). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the disputed domain name’s resolving webpage, showing parked page with the pay-per-click advertisements. See Compl. Exhibit 3.1. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Complainant contends Respondent registered and uses the <statefarmheatingandcooling.com> domain name in bad faith as the domain name resolves to an error page with no content. Failing to make use of a confusingly similar domain name can evidence bad faith registration and use per 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 provides a screenshot of the disputed domain name’s resolving error page. See Compl. Exhibit 3.2. The Panel therefore finds  Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).

 

Complainant also contends Respondent registered and uses the <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names in bad faith as Respondent uses them to create initial customer confusion as to the source of the disputed domain names. Intentionally creating initial customer confusion can demonstrate bad faith per Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant argues that Respondent intentionally attempts to attract individuals seeking information on Complainant, and thus intentionally creates initial customer confusion. The Panel agrees and finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).

 

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 <statefarmhvac.com> and <statefarmheatingandcooling.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

November 11, 2020