State Farm Mutual Automobile Insurance Company v. Tulip Trading Company
Claim Number: FA1708001745162
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <logontostatefarm.com>, registered with Key-Systems GmbH.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically August 17, 2017; the Forum received payment August 17, 2017.
On August 21, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <logontostatefarm.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems Gmbh verified that Respondent is bound by the Key-Systems GmbH registration agreement and 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@logontostatefarm.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. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant is a nationally known insurance company offering financial and other services since 1930. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered Sept. 18, 2012). See Compl., Attached as 1. Respondent’s <logontostatefarm.com> is confusingly similar to Complainant’s STATE FARM mark because it incorporates the mark in its entirety, eliminates spaces, adds the generic terms “log,” “on,” and “to,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <logontostatefarm.com>. Respondent is not commonly known by <logontostatefarm.com> according to WHOIS. Respondent has made no bona fide offer of goods or services and has not made a legitimate or fair use of the disputed domain.
Respondent registered and used <logontostatefarm.com> in bad faith. Respondent registered the disputed domain to disrupt Complainant’s business by creating confusion between the mark and the disputed domain name. Respondent failed to respond to multiple cease and desist letters from Complainant.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered <logontostatefarm.com> December 4, 2016.
Complainant established rights to and legitimate interests in the mark and disputed domain name that is confusingly similar to that protected mark.
Respondent has no rights or legitimate interests in the mark or the domain name.
Respondent registered and used 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant made a prima facie case that it has rights to the mark in question. Complainant registered multiple variations of the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered September 18, 2012). See Compl., at Attached Ex. 1. Registration with the USPTO shows rights in a mark under the Policy. 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.”). Therefore, the Panel finds that Complainant has rights and legitimate interests in the STATE FARM mark.
Complainant asserts that the disputed domain name is confusingly similar to the STATE FARM mark. Respondent’s <logontostatefarm.com> domain name incorporates the entire STATE FARM mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Furthermore, the addition of generic terms “log,” “on,” and “to” as well as the “.com” gTLD do not distinguish between the disputed domain and the mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered and used a disputed domain name ` that is calculatingly confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN 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), and then the burden of proof shifts to Respondent to show it does have such 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 that Respondent is not commonly known as <logontostatefarm.com> pursuant to Policy ¶ 4(c)(ii). WHOIS shows that the Respondent is “Tulip Trading Company.” Complainant argues that no other evidence supports any finding that Respondent is commonly known by the disputed domain name. Where the WHOIS does not match respondent’s name, a finding of “commonly known by” cannot be made in favor of such a respondent especially when no response is filed of record. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The Panel finds that no evidence supports that Respondent is commonly known by or related to the disputed domain.
Next, Complainant asserts that Respondent made no bona fide offer of goods or services and has not made a legitimate or fair use of the disputed domain pursuant to Policy ¶¶ 4(c)(i) and (iii). Complainant notes that Respondent’s <logontostatefarm.com> domain name has no legitimate content, but sits at a parked site with click-through links to various companies and products. Complainant argues that respondent intentionally attempts to attract Internet users for commercial gain, which does not show rights and legitimate interests. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant attached a document, which purports to show Respondent’s <logontostatefarm.com>; however, the document only depicts a virus detection warning. See Compl., at Attached Annex 3 (“ZEUS VIRUS DETECTED - YOUR COMPUTER HAS BEEN BLOCKED”). This evidence does not match Complainant’s allegations although it is bad in its own right. The Panel may consider such a disparity in assessing whether a party succeeds in making a prima facie case under Policy ¶¶ 4(c)(i) and (iii). See Tech Traders LLC / David Page v. Insuladd Environmental Products, FA 1738720 (Forum Aug. 3, 2017) (finding that respondent had overcome complainant’s contentions under the Policy, because complainant failed to make the required prima facie showing of respondent’s lack of rights and legitimate interests in the disputed domain name). This Panel finds first that the mistaken attachment permits an inference of conduct by Respondent at least as bad as if not worse than the conduct allegedly attached. And although the Panel could ask for a correction, no need exists to delay the outcome of the case to do so where the disputed domain name so blatantly infringes on the well-know rights of another and where Respondent is not engaged about the matter enough to file a Response. The mistaken attachment is but one fact and the Panel does not find it to be controlling.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark along with “log on” language designed to take advantage of the unsuspecting Internet user; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent registered and is using <logontostatefarm.com> in bad faith. Respondent allegedly registered and used the disputed domain name for financial gain by providing click-through links to various companies and products. Complainant argues that Respondent disrupted Complainant’s business by attracting Internet users away from Complainant’s site to its competitors under Policy ¶¶ 4(b)(iii) and (iv). Where such use is substantiated by evidence, bad faith findings have followed. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also 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)). Again, the resolving website displays the message, “ZEUS VIRUS DETECTED - YOUR COMPUTER HAS BEEN BLOCKED”. Compl., at Attached Annex 3. The Panel finds such Virus threats, real or not, to the computer of an unsuspecting Internet user not only competitive but even more damaging to Complainant’s good will than the complained of conduct. The Panel finds that Complainant satisfied Policy ¶¶ 4(b)(iii) or (iv).
Next, Complainant asserts that Respondent failed to respond to multiple cease
and desist letters. Complainant argues that the failure to respond to cease and
desist letters on three separate occasions constitutes bad faith under Policy ¶
4(a)(iii). See Compl., at Attached Annex 4. Other Panels have found that
Respondent’s failure to respond to Complainant’s cease and desist letters
constitutes bad faith under the Policy. 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
accordingly.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <logontostatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 25, 2017
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