State Farm Mutual Automobile Insurance Company v. Faith Roth
Claim Number: FA1706001737318
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, U.S.A. Respondent is Faith Roth (“Respondent”), California, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bestlocalstatefarminsuranceagent.com>, <bestlocalstatefarminsurance.com>, <bestlocalstatefarminsurancequote.com>, <bestlocalstatefarminsuranceagents.com>, and <bestlocalstatefarminsurancequotes.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2017; the Forum received payment on June 26, 2017.
On June 29, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bestlocalstatefarminsuranceagent.com>, <bestlocalstatefarminsurance.com>, <bestlocalstatefarminsurancequote.com>, <bestlocalstatefarminsuranceagents.com>, and <bestlocalstatefarminsurancequotes.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 June 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2017 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@bestlocalstatefarminsuranceagent.com, postmaster@bestlocalstatefarminsurance.com, postmaster@bestlocalstatefarminsurancequote.com, postmaster@bestlocalstatefarminsuranceagents.com, and postmaster@bestlocalstatefarminsurancequotes.com. Also on June 30, 2017, 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 July 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <bestlocalstatefarminsuranceagent.com>, <bestlocalstatefarminsurance.com>, <bestlocalstatefarminsurancequote.com>, <bestlocalstatefarminsuranceagents.com>, and <bestlocalstatefarminsurancequotes.com> domain names (the “disputed domain names”) are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an insurance business that has registered its well-known STATE FARM and STATEFARM.COM marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,211,626, registered Sept. 18, 2012, Reg. No. 2,444,342, registered Apr. 17, 2001, respectively).
Respondent registered the disputed domain names on September 21, 2016, and uses them to resolve to parked web pages hosting competing links.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has established its rights in the STATE FARM marks under Policy ¶ 4(a)(i) through registration of the marks with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent incorporates Complainant’s STATE FARM mark into each of the disputed domain names and simply adds descriptive words and the gTLD “.com.” The gTDL is irrelevant to this analysis, and the addition of generic terms does not distinguish the disputed domain names from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s STATE FARM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names and that it has not authorized Respondent’s use of the STATE FARM marks. Complainant contends that Respondent is not commonly known by the disputed domain names within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information for the disputed domain names identifies “Faith Roth” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. The Panel agrees and finds that Respondent is not commonly known by, and thus lacks rights and a legitimate interest in, the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead, is using the disputed domain names to trade off on Complainant’s goodwill and create an initial interest confusion. Creating confusion and thereby diverting Internet users in search of Complainant’s services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Furthermore, Complainant demonstrates that Respondent’s disputed domain names resolve to parked websites, and such use can reinforce a finding of no legitimate interest. See Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest); see also Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”). The Panel similarly concludes that Respondent is not using the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the disputed domain names to attract Internet users for commercial gain and has thus registered, and is using, the disputed domain names in bad faith. All of the disputed domain names resolve to parked pages hosting competing links. The Panel finds that this use constitutes bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the STATE FARM marks due to Complainant’s long-term use of those marks in conjunction with the insurance business. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”).
The Panel finds that 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 <bestlocalstatefarminsuranceagent.com>, <bestlocalstatefarminsurance.com>, <bestlocalstatefarminsurancequote.com>, <bestlocalstatefarminsuranceagents.com>, and <bestlocalstatefarminsurancequotes.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 25, 2017
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