State Farm Mutual Automobile Insurance Company v. Kendy Bennett
Claim Number: FA2001001878419
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Kendy Bennett (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmdawsonville.com> and <rogerslatonstatefarm.com> (the “Disputed Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 13, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmdawsonville.com> and <rogerslatonstatefarm.com> Disputed Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Disputed Domain 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 January 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@statefarmdawsonville.com and postmaster@rogerslatonstatefarm.com. Also on January 16, 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, and 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 February 6, 2020., pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a famous business that engages in both the insurance and financial services industries. Complainant claims rights in the “State Farm” trademark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012) (hereinafter, the “STATE FARM Mark”).
In February of 2019, it was brought to the attention of Complainant that the Disputed Domain Names had been registered by Respondent on February 19, 2019. The Disputed Domain Names resolve to parking pages hosted by the Registrar, and thus, are being used passively.
Complainant sent to Respondent cease-and-desist letters on February 28, 2019, and April 4, 2019. Respondent replied to Complainant on April 8, 2019 with an offer to sell the Disputed Domain Names. On April 10, 2019 and May 2, 2019, Complainant also sent cease-and-desist letters to Respondent, the latter with an attached Complaint.
Complainant contends that the Disputed Domain Names <statefarmdawsonville.com> and <rogerslatonstatefarm.com> are confusingly similar to Complainant’s STATE FARM Mark as the Disputed Domain Names incorporate the trademark in its entirety, merely adding descriptive or geographic terms, followed by the “.com” generic Top-Level Domain (“gTLD”). Complainant further contends that Respondent lacks rights or legitimate interests in the Disputed Domain Names, and that Respondent registered and is using the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant engages in business in both the insurance and the financial services industries. Complainant also has established a nationally recognized presence on televised and other media. Complainant first began using the STATE FARM Mark in 1930 and has continuously used it in commerce since that time. Complainant claims rights in the STATE FARM Mark based on its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶4(a)(i).
The Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s STATE FARM Mark, that Respondent lacks rights or legitimate interests in the Disputed Domain Names, and that Respondent registered and is using the Disputed Domain Names in bad faith.
DISCUSSION
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 the Disputed Domain Names should be cancelled or transferred:
(1) the Disputed Domain Names registered by Respondent are 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 Disputed Domain Names; and
(3) the Disputed Domain Names were registered and are 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 rights in the STATE FARM Mark based on its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides copies of its STATE FARM trademark registrations with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). Therefore, the Panel finds that Complainant has rights in the STATE FARM Mark per Policy ¶4(a)(i).
The <statefarmdawsonville.com> and <rogerslatonstatefarm.com> Disputed Domain Names are confusingly similar to the STATE FARM Mark as they each contain the trademark in its entirety, merely adding a descriptive or geographic term and the gTLD “.com”. The addition of a descriptive or geographic term to a registered trademark does not mitigate confusing similarity between the Disputed Domain Names and the STATE FARM Mark under Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a domain name contains a complainant’s entire mark and differs only by the addition of a descriptive phrase). Here, Respondent merely adds the terms “Roger Slaton,” and “Dawsonville,” the former, a purported independent contractor agent affiliated with Complainant (which he is not), and the latter, the town in which the agent is allegedly located.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the Disputed Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Names as Respondent has not provided evidence nor proven that it is not commonly known by the Disputed Domain Names, nor has Complainant authorized Respondent to use the STATE FARM Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the Disputed Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent holds the Disputed Domain Names passively, which is not deemed a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Complainant argues that Respondent registered and uses the <statefarmdawsonville.com> and <rogerslatonstatefarm.com> Disputed Domain Names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own websites by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Complainant also asserts that Respondent has failed to make an active use of the Disputed Domain Names. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website had no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii)). In this case, Complainant provides screenshots of Respondent’s parked webpages that feature no content. Therefore, the Panel finds that Respondent registered and is using the Disputed Domain Names in bad faith.
Complainant further argues that Respondent registered the Disputed Domain Names with actual knowledge of STATE FARM Mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the Disputed Domain Names. According to Complainant, given the global reach of the Internet and the fact that Complainant is widely known indicates that Respondent must have been aware of Complainant when it registered the Disputed Domain Names.
Finally, the Panel finds that Respondent’s failure to respond and comply with Complainant’s multiple cease and desist letters demonstrates that Respondent registered and is using the Disputed Domain Names in bad faith pursuant to Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmdawsonville.com> and <rogerslatonstatefarm.com> Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 12, 2020
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