State Farm Mutual Automobile Insurance Company v. Chris Kephart / Temping Teachers
Claim Number: FA2003001887692
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Chris Kephart / Temping Teachers (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thestatefarmbowl.com>, registered with Wix.com Ltd..
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2020; the Forum received payment on March 10, 2020.
On March 15, 2020, Wix.com Ltd. confirmed by e-mail to the Forum that the <thestatefarmbowl.com> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. 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 March 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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 email@example.com. Also on March 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, 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 April 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
Complainant, State Farm Mutual Automobile Insurance Company is a famous business that engages in both the insurance and financial services industry. Complainant claims rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 5,271,354 registered on Aug. 22, 2017). Respondent’s <thestatefarmbowl.com> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, less the space, merely adding the generic terms “the,” and “bowl” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <thestatefarmbowl.com> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <thestatefarmbowl.com> domain name to divert Internet users away from Complainant. In addition, Respondent fails to make an active use of the disputed domain name.
Respondent has registered and uses the <thestatefarmbowl.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's
mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. In addition, Respondent fails to make an active use of the disputed domain name. Complainant sent a cease and desist letter to Respondent, to which Respondent failed to respond or comply. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the STATE FARM mark.
Respondent failed to submit a formal Response in this proceeding. However, Respondent submitted an informal response, arguing that the <thestatefarmbowl.com> domain is intended for a website which will display wooden bowls in the outlines of states as part of an arts and crafts project. The Panel notes that the <thestatefarmbowl.com> domain name was registered on January 19, 2020.
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 formal 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 rights in the STATE FARM mark based upon its registration with the USPTO (e.g., Reg. No. 5,271,354, registered on Aug. 22, 2017). Registration with the USPTO is sufficient to establish rights in a mark 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)). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <thestatefarmbowl.com> domain name is confusingly similar to Complainant’s STATE FARM mark, as Respondent merely adds the words “the” and “bowl” to the mark. The Panel agrees that the addition of the word “the” in the domain name is insufficient to differentiate the domain from the registered mark. State Farm Mutual Automobile Insurance Company v. COMholdings , FA798899 (Nov. 1, 2006)(finding the domain name <thestatefarm.com> to be confusingly similar to the STATE FARM mark).
However, Complainant has provided no arguments as to why the word “bowl” should be considered generic or descriptive with respect to the registered trademark. In State Farm Mutual Automobile Insurance Company v. Christensen, FA 1840727 (May 22, 2019), the Panel found the domain <bigstatefarmagent.com> not to be confusingly similar to the STATE FARM mark. The Panel in that case noted that the domain <bigstatefarmagent.com> could be read as “’big state’ ‘farm agent’”. Similarly, in this case, the domain <thestatefarmbowl.com> might be read as “The State ‘Farm Bowl’”. As suggested in Respondent’s informal response, for example, this might refer to bowls constructed in the outlines of the shapes of states.
As Complainant provides no arguments as to why the term “bowl” should be considered descriptive or generic with respect to the registered trademark, this Panel finds that the disputed domain name is not confusingly similar to Complainant’s trademark. Thus, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thestatefarmbowl.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: April 17, 2020
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