State Farm Mutual Automobile Insurance Company v. Tobias Flaitz / DomCollect International GmbH
Claim Number: FA1709001749243
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Tobias Flaitz / DomCollect International GmbH (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jayslonakerstatefarm.com>, <my-statefarm.com>, and <bankstatefarm.com>, registered with 1&1 Internet SE.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2017; the Forum received payment on September 15, 2017.
On September 25, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <jayslonakerstatefarm.com>, <my-statefarm.com>, and <bankstatefarm.com> domain names are registered with 1&1 Internet SE and that Respondent is the current registrant of the names. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 September 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@jayslonakerstatefarm.com, postmaster@my-statefarm.com, and postmaster@bankstatefarm.com. Also on September 25, 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 October 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant engages in business in both the insurance and the financial services industry. Complainant also has established a nationally recognized presence on televised and other media. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered Sep. 18, 2012). See Compl. Ex. 1.
Respondent has no rights or legitimate interests in the <jayslonakerstatefarm.com>, <my-statefarm.com>, and <bankstatefarm.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent registered the domain names to create the impression of association with Complainant to trade off the good will associated with the STATE FARM name and to create confusion for individuals looking for information about Complainant.
Respondent registered and uses the disputed domain names in bad faith. Respondent’s domain names are clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the sites. Further, Respondent disrupts Complainant’s business and commercially benefits via click-through links for various companies/products, some of which are in direct competition with Complainant. See Compl. Ex. 3.1-3.3. This parking indicates that Respondent is not using, nor has made any demonstrable preparations to use the domain names for a legitimate purpose. Finally, Respondent knew or should have known of Complainant’s long-term use of the STATE FARM trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain names on December 30, 2016.
The Panel finds that the disputed domain names are confusingly similar with Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 each of the disputed domain names is confusingly similar to Complainant’s valid and subsisting trademark, STATE FARM. Complainant has adequately pled its rights and interests in and to this trademark. Respondent arrives at the disputed domain names by adding generic words to the precise trademark, STATE FARM, and merely deleting spaces and adding the g TLD “.com” to each. This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
Respondent further has no rights or legitimate interests in or to the disputed domain names. Respondent has no permission or license to register the disputed domain names. Respondent is not commonly known by any of the disputed domain names. One of the disputed domain names, <jayslonakerstatefarm.com>, appears to include a person’s name; however, according to WHOIS, that disputed domain name is registered to Tobias Flaitz, not Jay Slonaker. As such, the Panel finds that none of the disputed domain names are the common name of a named respondent.
Further, Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent appears to have registered the disputed domain names to create the impression of association with Complainant to trade off the good will associated with the STATE FARM name and to create confusion for individuals looking for information about Complainant.
Accordingly, the Panel finds that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii), and, as such, has no rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant argues that Respondent registered and uses the <jayslonakerstatefarm.com>, <my-statefarm.com>, and <bankstatefarm.com> domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering click-through link to competing goods and services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). 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)). Complainant provides screenshots of the resolving webpage for the disputed domain names, which displays links to sites such as “Auto Insurance Agent” and “State Auto Insurance Company.” See Compl. Ex. 3.1-3.3.
Accordingly, the Panel finds that Respondent attempts to disrupt Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to make demonstrable preparations to actively use the domain names for legitimate purposes. Inactively holding a confusingly similar domain name can evince bad faith registration and use under 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 screenshots provided by the Complainant contain parked click-through links. See Compl. Ex. 3.1-3.3. The Panel finds that Respondent does not make a legitimate use of the disputed domain names and thus registered and uses the disputed domain names in bad faith.
Complainant lastly claims that Respondent had actual knowledge of Complainant’s STATE FARM mark. The Panel finds that, given the totality of the circumstances and the fame of Complainant’s trademark, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <jayslonakerstatefarm.com>, <my-statefarm.com>, and <bankstatefarm.com> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: October 23, 2017
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