State Farm Mutual Automobile Insurance Company v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2001001878029
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statgefarm.com>, registered with Media Elite Holdings Limited.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2020; the Forum received payment on January 8, 2020.
On January 9, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <statgefarm.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 January 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2020 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@statgefarm.com. Also on January 10, 2020, 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.
On February 3, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the STATE FARM trademark established through its portfolio of trademark registrations and its use of the mark continuously since 1930 and has continuously used the trademark in commerce since that time. It developed its Internet web presence in 1995 using the domain name <statefarm.com>.
On its web site, Complainant offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents.
Complainant submits that it has expended substantial time, effort and funds to develop its web site as a primary source of Internet information for its products, services and information.
Complainant submits that the disputed domain name is confusingly similar to its STATE FARM and STATEFARM.COM service marks, which, it argues, are distinctive and have acquired secondary meaning. Complainant submits that Respondent’s domain name can only bring to mind Complainant’s marks and argues that the use of a misspelling of Complainant’s marks makes the reading of the syntax of the disputed domain name confusingly similar.
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name, arguing that Respondent is not associated with, affiliated to, or sponsored by Complainant; that Complainant did not authorize Respondent to register the disputed domain name or to use the STATE FARM trademark for Respondent’s business purposes.
Complainant further argues that Respondent is not commonly known by the disputed domain name and asserts that it is believed that the Respondent has never been known by or performed business under the domain name at issue.
Furthermore, Complainant submits that Respondent does not possess independent intellectual property rights in the disputed domain name. In addition, Complainant asserts that it has no contractual arrangement with Respondent that would allow Respondent to offer services under the STATE FARM name.
Complainant adds that Respondent is not using, nor are there any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content on the website associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming.
Complainant argues that even if Respondent did put information on its website, its content, along with the domain name, would be in direct conflict with information that Complainant already provides and would cause confusion to potential customers. Failure to cause the disputed domain name to resolve to legitimate content indicates that the Respondent has no legitimate reason for having registered the disputed domain name and demonstrates that it has registered and is using the disputed domain name in bad faith.
Complainant argues that the registration of the disputed domain name was intentionally in bad faith. Complainant refers to the fact that the disputed domain name was registered on November 16, 2012, long after Complainant had registered its domain name <statefarm.com> on May 24, 1995. Complainant argues that it follows that Respondent knew or should have known of Complainant’s long-term use of the trademarks STATE FARM and STATE FARM INSURANCE and the long-term use of the domain name <statefarm.com> as the address of its website.
Complainant alleges that Respondent registered the disputed domain name to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the STATE FARM name; and/or to create initial interest confusion for individuals looking for information about Complainant.
Complainant submits that the registration of the confusingly similar domain name is clearly intended to attract individuals seeking information on Complainant and create customer confusion as to the source or sponsorship of the website to which it resolves.
Complainant submits that Respondent’s use of disputed <statgefarm.com> domain name constitutes typosquatting which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant cites inter alia National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting…is the intentional misspelling of words with intent to intercept and siphon traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”); National Geographic Soc. v. Stoneybrook Inv., FA96263 (Forum January 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).
Complainant argues that while Respondent’s website creates the impression that interested individuals will receive information regarding Complainant, the fact is that individuals are sent to a web page displaying a message offering to compare insurance rates. By using the disputed domain name, Respondent has intentionally attempted to attract, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the site or location. Complainant submits that Respondent’s use of a trademark in direct conflict with Complainant’s interest reflects that the Respondent has acted in bad faith.
Finally, Complainant asserts that Respondent has failed to respond to the Complainant’s letter demanding that Respondent cease and desist unauthorized use of the disputed domain name. Complainant submits that Respondent’s failure to respond to said letter and failure to comply with Complainant’s cease and desist demands demonstrates that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides insurance and financial services and claims to have done so since 1930. Complainant is the owner of a portfolio of United States trademark registrations for and incorporating the STATE FARM mark including the following service mark registrations on the Principal Register:
· United States trademark STATE FARM and Design, registration number 4,211,626 registered on September 18, 2012 for services in international class 36;
· United States trademark STATE FARM and Design registration number. 4,227,731 registered on October.16, 2012 for services in international class 36;
· United States trademark STATE FARM, registration number 5,271,354 Registered Aug. 22, 2017 for services in international class 36
Additionally, Complainant is the owner of a number of United States registered service marks that contain the words STATE FARM as a distinguishing element together with other elements including:
· STATE FARM BANK registration number 2,319,867 registered on February 15, 2000 for services in international class 36;
· STATE FARM BANK and Design, registration number 4,211,628, registered on September 18, 2012 for services in international class 36;
· STATE FARM BANK and design, registration number 4,211,629 registered on September 18, 2012 for services in international class 36;
· STATEFARM.COM registration number eg. No. 2,444,342, registered on April 17, 200I for services in international class 36;
· STATEFARM.COM, registration number 2,444,341, registered April 17, 2001 for services in international class 38;
· STATEFARM.COM, registration number 2,450,890, registered May 15, 2001 for services in international class 42;
Additionally, Complainant owns and uses the following trademarks in association with its financial services business: State Farm Bank, STATE FARM BANK LOGOS, STATE FARM CATASTROPHE SERVICES, STATE FARM COMPANIES FOUNDATION, STATE FARM LOYALTY REWARDS, STATE FARM MUTUAL FUNDS, AND STATE FARM DOLLARS.
Complainant has an Internet presence and has owned the domain name <statefarm.com> since May 4, 1995.
The registration information provided by Complainant for the disputed domain name states that it was registered on October 22, 2019 and elsewhere states that it was registered on October 23, 2019. The October 23, 2019 date is confirmed by the verification email sent to the Forum by the Registrar.
The disputed domain name is offered for sale on the WhoIs look-up search result submitted with the Complaint and resolves to a website which purports to offer quotations for insurance products with which Complainant denies any connection or affiliation.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the request for verification of the registration details of the disputed domain name in the course of this proceeding. Respondent has used a privacy service to conceal its identity which was only disclosed by the Registrar in response to the Forum’s verification request.
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 has adduced uncontested evidence of its ownership of and rights in, the STATE FARM trademark and STATEFARM.COM trademarks acquired through its abovementioned trademark registrations and its long use of the marks in association with its insurance and financial services business.
The disputed domain name <statgefarm.com> is almost identical to Complainant’s STATE FARM and STATEFARM.COM service marks except for the additional letter “g” inserted between the letters “t” and “e” in the word “state” in each case. The element “statge” in the disputed domain name makes no sense. However by deleting the letter “g” it becomes Complainant’s distinctive trademark. Having compared both this Panel finds that the disputed domain name is almost identical to and is confusingly similar to the trademark STATE FARM in which Complainant has rights.
While normally the gTLD extension may be ignored for the purpose of comparison in the present case Complainant is the owner of the STATEFARM.COM service mark and the <.com> element is relevant and serves to confirm the confusing similarity of the disputed domain name and that mark.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i)
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that Respondent is not commonly known by the disputed domain name <statgefarm.com> and asserts that it is believed that the Respondent has never been known by or performed business under the domain name; that Respondent does not possess independent intellectual property rights in the disputed domain name; that the disputed domain name is confusingly similar to Complainant’s name and mark and Respondent does not have a contractual arrangement with Complainant that would allow them to offer services under the STATE FARM name or mark.
Complainant furthermore asserts that Respondent is not otherwise associated with, affiliated with or sponsored by Complainant; that Complainant did not authorize Respondent to register the disputed domain name or to use the STATE FARM trademark for the Respondent’s business purposes. Additionally, Complainant has argued that Complainant is not using the disputed domain name to provide any bona fide offering of goods or services, but is in fact purporting to offer quotations for competing products and services.
In such circumstances, Complainant having made out a prima facie case, the burden of production shifts to Respondent. Respondent has not responded in this Complaint and has therefore failed to discharge the burden. In these circumstances this Panel finds that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel accepts Complainant’s uncontested submissions that the registrant of the disputed domain name must have been aware of Complainant and its name and mark when the disputed domain name was chosen and registered. Given that the disputed domain name itself has no meaning or distinctive character as such, and the fact that it is almost identical to Complainant’s well known trademark, this Panel finds that on the balance of probabilities the disputed domain name was registered because of its confusing similarity to Complainant’s name and mark. On the balance of probabilities the disputed domain name was registered in bad faith for its perceived value and use for the purpose of typosquatting i.e. the intentional misspelling of words in a domain name with intent to cause confusion with a trademark, in order to confuse and misdirect users of the Internet so as to misdirect Internet traffic away from its intended destination.
On the balance of probabilities, the disputed domain name was registered consisting of a misspelling of Complainant’s trademarks incorporating the additional and meaningless letter “g” in order to secure the registration of the domain name because Complainant already had already registered <statefarm.com> which was therefore unavailable.
Complainant has used the disputed domain name to resolve to a website which purports to offer quotations for insurance products which are unaffiliated with and therefore competing with Complainant’s offerings, Additionally Respondent is offering the disputed domain name for sale.
This Panel finds therefore that the disputed domain name was registered and is being used for the primary purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the STATE FARM and STATEFARM.COM service marks or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
Additionally, this Panel finds that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and products or services purported to be offered on its web site.
This Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statgefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
James Bridgeman SC
Panelist
Dated: February 4, 2020
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