State Farm Mutual Automobile Insurance Company v. AJaye Mashburn / Southern Insurance Associates
Claim Number: FA1911001870286
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insur ance Company, Illinois, USA. Respondent is AJaye Mashburn / Southern Insurance Associates (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmringgold.com>, <statefarmrockspring.com>, <statefarmfortoglethorpe.com> and <statefarmlafayette.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2019; the Forum received payment on November 7, 2019.
On November 8, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmringgold.com>, <statefarmrockspring.com>, <statefarmfortoglethorpe.com> and <statefarmlafayette.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 November 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2019 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@statefarmringgold.com, postmaster@statefarmrockspring.com, postmaster@statefarmfortoglethorpe.com, postmaster@statefarmlafayette.com. Also on November 14, 2019, 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 December 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, engages in business in both the insurance and the financial services industries. Complainant has rights in the trademark STATE FARM through its use in commerce, dating back to 1930, and its registration with the United States Patent and Trademark Office (“USPTO”) and the European Intellectual Property Office (“EUIPO”), dating back to 1998. Complainant has also used the domain name <statefarm.com> since 1995. Respondent’s <statefarmringgold.com>, <statefarmrockspring.com>, <statefarmfortoglethorpe.com> and <statefarmlafayette.com> domain names, all registered on February 19, 2019, are confusingly similar to Complainant’s STATE FARM mark. Respondent includes the mark in its entirety and adds the descriptive or generic term “Ringgold”, “Rock Spring”, “Fort Oglethorpe”, or “Lafayette” along with the “.com” top-level domain name (“gTLD”).
Respondent has no rights or legitimate interests in the <statefarmringgold.com>, <statefarmrockspring.com>, <statefarmfortoglethorpe> and <statefarmlafayette.com> domain names. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to create the impression that Respondent is affiliated with Complainant by redirecting to a website for Respondent’s independent insurance agency even though no such affiliation exists.
Respondent registered and uses the disputed domain names in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. In addition, Respondent’s response to Complainant’s cease and desist letter merely stated that it is not using the domain <statefarm.com> and inquired whether Complainant has trademark rights to the full text of the disputed domain names. Lastly, Respondent knew or should have known of Complainant’s rights to the STATE FARM mark.
B. Respondent
In a reply email to the Forum after being served with this case, Respondent stated “I don’t understand what this is in regards to. We don’t use any State Farm logo.” Respondent has not submitted any other Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the STATE FARM mark through its registration with the USPTO and the EUIPO. Registration of a mark with such governmental authorities 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) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Here, Complainant has submitted copies of numerous USPTO and EUIPO registrations for the STATE FARM mark and marks that include this phrase. Therefore, the Panel finds that Complainant has adequately shown rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefarmringgold.com>, <statefarmrockspring.com>, <statefarmfortoglethorpe> and <statefarmlafayette.com> domain names are confusingly similar to Complainant’s STATE FARM mark as Respondent merely adds a modifier and a gTLD to the mark. The addition of generic and/or descriptive terms and a gTLD to a complainant’s mark does not often negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). 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)). Here, Respondent includes the STATE FARM mark in its entirety and adds the descriptive and/or generic term “Ringgold”, “Rock Spring”, “Fort Oglethorpe”, or “Lafayette” along with the “.com” gTLD. As these added terms appear to be geographic locations in the state of Georgia, Respondent’s location noted in the WHOIS record for the disputed domain names, the Panel finds that their appearance does not sufficiently distinguish the domain names from the STATE FARM mark per Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names. Specifically, Complainant argues that Respondent is not licensed or authorized to use the STATE FARM mark and is not commonly known by the disputed domain names. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “AJaye Mashburn / Southern Insurance Associates” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the STATE FARM mark. Further, the Respondent has not filed a substantive Response or addressed this issue in this case to rebut the Complainant’s assertions. As such, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Rather, Complainant contends that Respondent is attempting to create the impression of association with Complainant to trade off the good will associated with the STATE FARM mark. Attempting to create a false affiliation to divert Internet users seeking a complainant’s products or services is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant asserts that Respondent is intending to attract individuals looking for information about Complainant and redirect them to websites that offer insurance services from Complainant’s competitors. Submitted into evidence are screenshots of the Respondent’s own website and the Panel notes that it does display logos from other insurance companies. Therefore, in the absence of any countervailing explanation or evidence by Respondent, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain names per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent “knew or should have known” of the STATE FARM mark. It may be that constructive notice of the registered STATE FARM mark is sufficient in this case as both parties are located in the United States, a jurisdiction that applies the legal theory of constructive notice. However, actual knowledge of a complainant’s rights in a mark prior to registering the disputed domain name is a stronger ground upon which to support a claim of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, the Complaint states that “[t]he Respondent knew or should have known of Complainant’s long-term use of the trademark ‘State Farm,’ ‘State Farm Insurance’ and the long-term use of the domain name ‘statefarm.com’” and further states that Complainant is a “nationally known company” and “has established a nationally recognized presence on televised and other media”. However, Complainant submits no evidence to support these claims other than copies of its trademark registrations. As such registrations do not attest to the public recognition of the STATE FARM mark or the use of the <statefarm.com> domain, the Panel is unable to determine, from the submitted evidence, the scope of the mark’s reputation. However, the submitted copies of Respondent’s own website on which the logos of other insurance companies are displayed does support the conclusion that Respondent is engaged in the field of insurance and is knowledgeable regarding companies in this industry. Further, its registration of a series of four domain names that all include the STATE FARM mark followed by geographic terms adds weight to the claim that Respondent was aware of Complainant at the time it registered the disputed domain names. Therefore, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark prior to registration of the disputed domain names. This is a sufficient foundation upon which to build a case of bad faith per Policy ¶ 4(a)(iii).
Complainant next asserts that Respondent registered and uses the disputed domain names in bad faith. Specifically, Complainant contends that Respondent is disrupting Complainant’s business and diverting users to the disputed domain names to offer competing goods and services. Using a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”) Complainant contends that Respondent uses the disputed domain names to divert potential customers of Complainant’s business to webpages that offer insurance services in direct competition with Complainant. Screenshots of Respondent’s own insurance agency website, at which the logos of other insurance companies appear, have been submitted into evidence and the Respondent has not contested this Complainant’s assertion. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii). Further, as the Respondent is using the domain names that are confusingly similar to the STATE FARM mark to attract potential customers to its own website for commercial gain, the Panel also finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmringgold.com>, <statefarmrockspring.com>, <statefarmfortoglethorpe.com> and <statefarmlafayette.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 9, 2019
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