State Farm Mutual Automobile Insurance Company v. David Mitchell / David Mitchell Insurance
Claim Number: FA1706001737320
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is David Mitchell / David Mitchell Insurance (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freestatefarmquote.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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2017; the Forum received payment on June 26, 2017.
On June 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <freestatefarmquote.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 June 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@freestatefarmquote.com. Also on June 28, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, a well-known insurance company engaging in the industry since as early as 1930, registered its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,211,626, registered Sep. 18, 2012), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <freestatefarmquote.com> domain name is confusingly similar to Complainant’s mark because it merely eliminates the space, includes the descriptive terms “free” and “quote,” along with appending the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the <freestatefarmquote.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its STATE FARM mark. Respondent is not commonly known by the disputed domain name. Respondent’s lack of rights and legitimate interests is further evinced by Respondent’s offer to sell the disputed domain name for an excessive price. Respondent also does not use the disputed domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name initially resolved to a parked web page with click-through ads for various companies and products, some of which are in direct competition with Complainant. The domain then changed to resolve to a web page which stated “Free State Farm Quote,” and asked users for personal information for obtaining an insurance quote; however, the Respondent is not associated with State Farm and is not authorized to offer products or services on behalf of State Farm.
Respondent has registered and is using the disputed domain name in bad faith. Bad faith is evidenced by Respondent’s offer to sell the disputed domain name to Complainant for excessive costs. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by offering competing insurance services. Respondent also attempts to attract Internet traffic and commercially benefit from the goodwill of the STATE FARM mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Additionally, Respondent previously used the disputed domain name to host a parked webpage with hyperlinks to competing services. Further, Respondent’s actual knowledge of Complainant’s rights in the STATE FARM mark shows bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a well-known insurance company engaging in the industry since as early as 1930. Complainant has rights in the STATE FARM mark through registration with the USPTO (Reg. No. 4,211,626, registered Sep. 18, 2012). Respondent’s <freestatefarmquote.com> domain name is confusingly similar to Complainant’s mark.
Respondent, David Mitchell / David Mitchell Insurance, registered the <freestatefarmquote.com> domain name on October 10, 2016.
Respondent has no rights or legitimate interests in the <freestatefarmquote.com> domain name. Respondent’s domain name initially resolved to a parked web page with click-through ads for various companies and products, some of which are in direct competition with Complainant. The domain then changed to resolve to a web page which stated “Free State Farm Quote,” and asked users for personal information for obtaining an insurance quote; however, the Respondent is not associated with State Farm and is not authorized to offer products or services on behalf of State Farm.
Respondent has registered and is using the disputed domain name 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.
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.”).
Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i) through registration with the USPTO. Registration with the USPTO confers rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . .” ).
Complainant asserts that the <freestatefarmquote.com> domain name is confusingly similar to Complainant’s mark because it merely eliminates the space, includes two descriptive terms relating to Complainant’s business, and appends the gTLD “.com” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its STATE FARM mark. The WHOIS information for the <freestatefarmquote.com> “DAVID MITCHELL” as the registrant. Respondent is not commonly known by the <freestatefarmquote.com> 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); see also 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).
Next, Respondent lacks rights and legitimate interests in the <freestatefarmquote.com> domain name because Respondent offered to sell the domain name to Complainant for $10,000. Such an offer exceeds the reasonable out-of-pocket registration costs associated with the transfer of a domain name and therefore shows that Respondent lacks rights and legitimate interests in the <freestatefarmquote.com> domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (A respondent’s disproportionate offer to sell its domain name to the complainant for more than its out-of-pocket registration costs is evidence that the respondent lacks rights and legitimate interests in the domain name).
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving webpage was parked. Respondent’s domain name initially resolved to a parked web page with click-through ads for various companies and products, some of which are in direct competition with Complainant. The domain then changed to resolve to a web page which stated “Free State Farm Quote,” and asked users for personal information for obtaining an insurance quote; however, the Respondent is not associated with State Farm and is not authorized to offer products or services on behalf of State Farm.
The registrant of a domain is responsible for the content that appears on its resolving website even if the registrant does not receive any commercial benefit. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Using a confusingly similar domain name to offer competing services fails to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent registered and uses the <freestatefarmquote.com> domain name in bad faith because Respondent offered to sell the domain name to Complainant for an excess out-of-pocket costs. Offers to sell a domain name to a complainant, especially when the offer is excessive, can show bad faith pursuant to Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provided email correspondence between Complainant and Respondent wherein Respondent states that it will “gladly sell the url to State Farm for $10,000”.
Respondent disrupts Complainant’s business by attempting to divert potential customers away from Complainant by offering information that directly competes with Complainant. Competing with a complainant while using a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent registered and uses the <freestatefarmquote.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the STATE FARM mark by accruing income from parked advertisements and, subsequently, offering competing insurance services. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Respondent’s use of a disclaimer on the <freestatefarmquote.com> resolving website does not mitigate Respondent’s bad faith. Incorporating a disclaimer on a disputed domain name’s resolving website does not prevent a finding of bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).
Respondent registered the <freestatefarmquote.com> domain name with actual knowledge of Complainant’s STATE FARM mark. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freestatefarmquote.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 28, 2017
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