State Farm Mutual Automobile Insurance Company v. Ingrid Allen Multi-Media / EndPoint CP
Claim Number: FA2001001878893
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, United States. Respondent is Ingrid Allen Multi-Media / EndPoint CP (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmpahrump.com>, registered with GoDaddy.com, LLC.
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 14, 2020; the Forum received payment on January 14, 2020.
On January 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmpahrump.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 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@statefarmpahrump.com. Also on January 15, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the STATE FARM trademark acquired through its ownership of the trademark registrations described below and its rights at common law acquired through long and extensive use of the mark in relation to its banking services
Complainant submits that the disputed domain name <statefarmpahrump.com> name is identical and/or confusingly similar to its STATE FARM trademark which it submits is distinctive and has acquired secondary meaning though long and extensive use since 1930.
Complainant submits that the disputed domain name can only bring to mind the Complainant’s mark as it consists of Complainant’s trademark with the addition of the term “pahrump.” Complainant submits that the addition of a related term or a generic term to a trademark in a domain name is not sufficient to distinguish the domain name from the trademark mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶4(a)(i)).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not associated with, affiliated with or sponsored by Complainant; that Complainant did not authorize the Respondent to register the disputed domain name or to use the STATE FARM trademark for Respondent’s business purposes; and that Respondent is not commonly known under the domain name <StateFarmPahrump.com>.
Complainant further submits that it is believed that Respondent has never been known by or performed business under the disputed domain name at issue; that Respondent does not possess independent intellectual property rights in the disputed domain name; nor has Respondent any contractual arrangement with Complainant that would allow Respondent to offer services under the STATE FARM name.
Complainant further submits that there is no evidence that Respondent is using or has made 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 associated with the name and no demonstrable indication that legitimate content would be forthcoming. Even if the Respondent did put information on its website, its content along with the proposed domain name, would be in direct conflict with information that Complainant already provides and would cause confusion to potential customers.
Complainant submits that Respondent registered the disputed domain name in bad faith 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 State Farm.
Complainant submits that the disputed domain name was registered on June 26, 2019, long after Complainant registered its domain name <statefarm.com> on May 24, 1995 and argues that at the time of registration, the registrant knew or should have known of Complainant’s long-term use of the STATE FARM trademark and its website associated with its <statefarm.com. domain name.
Therefore, Complainant submits, the registration of the disputed domain name was intended to be in bad faith.
Complainant adds that Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of Complainant, its affiliates or subsidiaries and is not an independent contractor agent of Complainant and argues that registering a domain name for products and services that it does not have authority to offer, shows that the Respondent has acted in bad faith.
Complainant adds that Respondent’s use of Complainant’s STATE FARM trademark in direct conflict with Complainant’s interest reflects that the Respondent has acted in bad faith.
In June of 2019 Complainant became aware that its STATE FARM trademark had been registered as part of the domain name <statefarmpahrump.com> which resolves to a parked page with no content.
On July 18, 2019, a cease-and-desist letter was sent by Complainant’s Intellectual Property Manager via email to Respondent at the email contact address provided for Respondent on the Registrar’s WhoIs. On August 14, 2019, another cease and desist letter was sent to the Respondent via email; however, there was no response from the Respondent. On August 28, 2019, a cease and desist letter was sent, along with a draft arbitration complaint.
Respondent failed to respond. Complainant submits that failure to respond with legitimate information for use or intention to use the name and then failure to comply with Complainant’s cease and desist request 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 has carried on its financial services business insurance and the financial services under the name “State Farm” since 1930 and established the State Farm Bank 1999. Complainant is the owner of a portfolio of registered trademarks for and incorporating the name and mark STATE FARM including:
· 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.
Complainant has an Internet presence which it has developed since 1995 using its domain name <statefarm.com>.
The disputed domain name was registered on June 26, 2019 and resolves to a parked web page with no content.
There is no information available about Respondent except for that provided in the Complaint, on the Registrar’s WhoIs and by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name.
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 rights in the STATE FARM trademark and service mark acquired through its abovementioned portfolio of trademark registrations and at common law by its claimed long and extensive use of the mark in connection with its financial services business including on the Internet.
The disputed domain name consists of Complainant’s STATE FARM trademark and the word “Pahrump” and the gTLD <.com> extension.
The initial and dominant element of the disputed domain name is Complainant’s STATE FARM mark. The word “Pahrump” is a geographical place name. There is no evidence on the record that the geographical place name adds any distinctive characteristic to the disputed domain name.
In the circumstances outlined on the record the gTLD <.com> extension may be ignored for the purposes of comparison.
This Panel finds that the disputed domain name is confusingly similar to the trademark STATE FARM in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a strong prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that that Respondent is not associated with, affiliated with or sponsored by Complainant; that Complainant did not authorize the Respondent to register the disputed domain name or to use the STATE FARM trademark for Respondent’s business purposes; and that Respondent is not commonly known by the disputed domain name; that it is believed that Respondent has never been known by or performed business under the disputed domain name at issue; that Respondent has no contractual arrangement with Complainant that would allow Respondent to offer services under the STATE FARM name; that there is no evidence that Respondent is using or has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; that as of the date of this Complaint, there was no content or demonstrable indication that there would be any legitimate content forthcoming on the webpage associated with the disputed domain name.
In such circumstances the burden of production shifts to Respondent to demonstrate rights or legitimate interest in the disputed domain name.
Respondent has failed to respond to the Complaint and has therefore failed to discharge the burden of production.
This Panel finds therefore 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).
Respondent is passively holding the disputed domain name which is confusingly similar to Complainant’s STATE FARM trademark. On the balance of probabilities, the registrant of the disputed domain name became aware of Complainant’s <statefarm.com> domain name during the registration process. On the balance of probabilities therefore the disputed domain name was registered with knowledge of Complainant’s mark.
Given that there was no Response filed in this proceeding and that there is no obvious explanation as to why the disputed domain name was created and chosen, and that the disputed domain name has been passively held since July 2019 with no demonstrable preparation for any legitimate use of the disputed domain name, this Panel may take the inference that the disputed domain name was registered with Complainant’s mark in mind.
Because the disputed domain name <statefarmpahrump.com> creates the impression that interested individuals will receive information regarding Complainant and resolves to a parked page with no content, and given the strength of Complainant’s rights in and its long and extensive use of the STATE FARM service mark, this Panel finds on the balance of probabilities that Respondent is passively holding the disputed domain name, which was on the balance of probabilities chosen and registered because of its reference to Complainant’s name in mark, in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmpahrump.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________
James Bridgeman SC
Panelist
Dated: February 6, 2020
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