State Farm Mutual Automobile Insurance Company v. Michael Ciarrocchi
Claim Number: FA1611001703984
Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, United States. Respondent is Michael Ciarrocchi ("Respondent"), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmcarbuyers.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2016; the Forum received payment on November 21, 2016.
On November 22, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <statefarmcarbuyers.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 November 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@statefarmcarbuyers.com. Also on November 22, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 November 26, 2016.
On December 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a nationally known company engaged in the insurance and financial services industries. Complainant began using the STATE FARM mark in 1930. Complainant's marks registered in the United States include STATE FARM (registered in 1996), STATE FARM INSURANCE (registered in 1979), and others.
Respondent registered the disputed domain name <statefarmcarbuyers.com> in April 2016. The domain name resolves to a web page that states "Website Coming Soon," with no other content. Complainant states that Respondent is not associated with, affiliated with, or sponsored by Complainant, and that Complainant has not authorized Respondent to use its mark. Complainant states further that Respondent is not commonly known by the domain name, and accuses Respondent of registering the domain name in order to create the impression of association with Complainant, to trade off Complainant's goodwill, or to create confusion for individuals looking for information about Complainant. On these grounds Complainant contends that the disputed domain name is confusingly similar to Complainant's STATE FARM and related marks; that Respondent has no rights or legitimate interests in the disputed domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that he operates a used car dealership, and that he registered the disputed domain name intending to use it for a website listing cars that would be of interest to Complainant's policyholders because they would qualify for lower insurance rates. He states that he has not started working on this website, and is no longer pursuing the venture as a result of this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.
The disputed domain name <statefarmcarbuyers.com> combines Complainant's registered STATE FARM mark with the generic term "car buyers," omitting the spaces and adding the ".com" top-level domain. These alterations do not diminish the similarity between the domain name and Complainant's mark. See, e.g., State Farm Mutual Automobile Insurance Co. v. James Schwehr / Affinity Luxury Car Rentals, FA 1529030 (Nat. Arb. Forum Dec. 19, 2013) (finding <statefarmcarrentals.com> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. Kimgitae a/k/a Jongno-gu, FA 669747 (Nat. Arb. Forum May 15, 2006) (finding <statefarmcar.com> confusingly similar to STATE FARM). The Panel therefore considers the domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Such rights or interests may arise from the use of or preparations to use the domain name in connection with a bona fide offering of goods or services. Policy paragraph 4(c)(i).
The disputed domain name incorporates Complainant's mark without authorization, and Respondent has neither made any use of the name nor demonstrated any preparations to use it. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent claims that he registered the disputed domain name intending to use it for a website promoting used cars to Complainant's policyholders. In the Panel's view, such use would likely be actionable under trademark laws and is indicative of bad faith under paragraph 4(b)(iv). Cf. State Farm Mutual Automobile Insurance Co. v. Master Plumbing, FA 1466938 (Nat. Arb. Forum Oct. 30, 2012) (finding bad faith based upon registration of <statefarmplumber.com> for a landing page on respondent's website). Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcarbuyers.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 7, 2016
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