State Farm Mutual Automobile Insurance Company v. mehrdad najib / frenze
Claim Number: FA1708001745159
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is mehrdad najib / frenze (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminterlock.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2017; the Forum received payment on August 17, 2017.
On August 21, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarminterlock.com> domain name is 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 August 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@statefarminterlock.com. Also on August 22, 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 September 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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, State Farm Mutual Automobile Insurance Company, is an insurance and financial services company. In connection with this business, Complainant uses the STATE FARM mark to promote its goods and services. Complainant has rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (i.e. STATE FARM—Reg. No. 4,211,626, registered Sep. 18, 2012). Respondent’s <statefarminterlock.com> is confusingly similar as it contains the STATE FARM mark in its entirety.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to register the domain name or to use the STATE FARM mark. Respondent failed to use <statefarminterlock.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, the disputed domain name resolves to a page with a message stating “Website Coming Soon” and no other content.
Respondent registered and uses the disputed domain name in bad faith. Respondent intentionally attempted to attract 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 Respondent’s website. Respondent had actual or constructive knowledge of Complainant’s rights in the STATE FARM mark prior to registration. Respondent failed to respond to Complainant’s cease and desist letter. Respondent inactively holds the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <statefarminterlock.com> domain name.
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 asserts rights in the STATE FARM mark based upon registration with the USPTO (i.e. STATE FARM—Reg. No. 4,211,626, registered Sep. 18, 2012). Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel finds Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <statefarminterlock.com> is confusingly similar as it contains the STATE FARM mark in its entirety. Domain names that contain a complainant’s mark reproduced completely are confusingly similar per Policy ¶ 4(a)(i). 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”). Here, Respondent has wholly appropriated Complainant’s STATE FARM mark into the disputed domain name. The Panel finds Respondent’s domain name to be confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and then 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 asserts Respondent is not commonly known by the <statefarminterlock.com> domain name, nor has Complainant authorized Respondent to register the domain name or to use the STATE FARM mark. Absent a Response, WHOIS information can substantiate a finding that a respondent lacks rights and legitimate interests in a disputed domain name per Policy ¶ 4(c)(Ii). Similarly, lack of information in the record as to a complainant’s authorization of a respondent’s use of a mark further evinces a finding that said respondent is not known by the relevant disputed domain name per 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 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 initially named “Registration Private / Domains By Proxy, LLC” as the registrant of the disputed domain name, but at the commencement of the process, the registrant was revealed as “Mehrdad Najib.” The Panel finds Respondent is not commonly known by the disputed domain name.
Next, Complainant argues Respondent failed to use <statefarminterlock.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, the disputed domain name resolves to a page with a message stating “Website Coming Soon” and no other content. Failure to make an active use of a disputed domain name demonstrates a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant argues Respondent intentionally attempted to attract 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 Respondent’s website by registering Complainant’s mark in the domain name. Registration of a domain name containing a complainant’s entire mark demonstrates bad faith via Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel agrees with Complainant and finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).
Next, Complainant asserts Respondent had actual or constructive knowledge of Complainant’s rights in the STATE FARM mark prior to registration. Actual knowledge of a complainant’s rights in a mark can be determined by the domain name used and the use made of the resolving website per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant asserts Respondent utilized the entire STATE FARM mark and failed to make an active use of the disputed domain name. The Panel agrees with Complainant and finds Respondent had actual knowledge of Complainant’s mark, further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Next, Complainant contends Respondent failed to respond to three cease and desist notices sent via email. Failure to respond to a cease and desist letter demonstrates bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). The Panel finds this is evidence Respondent acted in bad faith per Policy ¶ 4(a)(iii).
Last, Complainant argues Respondent inactively holds the <statefarminterlock.com> domain name. Inactive holding of a disputed domain name can evince a finding of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds this is evidence Respondent acted in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminterlock.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 19, 2017
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