State Farm Mutual Automobile Insurance Company v. Wendy Rose
Claim Number: FA2004001892107
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Wendy Rose (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmhq.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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 April 15, 2020; the Forum received payment on April 15, 2020.
On April 22, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <statefarmhq.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 April 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@statefarmhq.com. Also on April 23, 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 May 17, 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 cancelled.
A. Complainant
Complainant claims rights in the STATE FARM trademark based on its ownership of the trademark registrations described below and the goodwill which it claims to have established by its use in both the insurance and the financial services industry since 1930.
Complainant submits that its STATE FARM mark is distinctive and has acquired secondary meaning and because of the substantial efforts of Complainant, the public associates the phrase “State Farm” with Complainant.
Complainant submits that the disputed domain name is confusingly similar to its STATE FARM service mark arguing that the addition of the related term or generic term “hq” to Complainant’s mark is not sufficient to distinguish the disputed domain from the Complainant’s 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 interest in the disputed domain name. Complainant submits that Respondent is not commonly known under the domain name <statefarmhq.com>. It is believed that Respondent has never been known by or performed business under the domain name at issue. Respondent has not registered the name in question with the Secretary of State in the state in which it does business or filed incorporation papers with respect to the same. Complainant asserts that it does not have a contractual arrangement with Respondent that would allow her to offer services under the STATE FARM name, nor is Respondent associated with, affiliated with or sponsored by Complainant. Complainant adds that it did not authorize Respondent to register the disputed domain name or to use the STATE FARM mark for Respondent’s business purposes.
Complainant adds that Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As of the date of this Complaint, the disputed domain name resolved to a parked web page with click through links for services similar to Complainant’s business. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i).
Complainant submits that that the disputed domain name was registered 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 Complainant’s name; and/or to create initial interest confusion for individuals looking for information about Complainant. The disputed domain name was registered August 23, 2018. Complainant registered its domain name <statefarm.com> on May 24, 1995; Complainant submits that therefore, the registrant knew or should have known of Complainant’s long-term use of the trademark when the disputed domain name was registered.
Complainant further alleges that the disputed domain name is being used in bad faith as it resolves to a parked web page with click through links for services similar to Complainant’s business.
The website to which the disputed domain name resolves purports to create the impression that interested individuals will receive information regarding Complainant whereas, the fact is that individuals are sent to a parked web page with click through links for services similar to Complainant’s business. Complainant alleges that by using the domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, 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. Respondent’s use of a trademark to generate business in direct conflict with Complainant’s interest reflects that the Respondent has acted in bad faith.
Complainant adds that it has written to Respondent on August 28, 2029 and subsequently sent reminders, calling upon her to cease and desist the unauthorized use of the disputed domain name. Respondent has failed to reply to this correspondence, and Complainant submits that this is further evidence of bad faith use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the STATE FARM service mark which it uses in connection with the services it provides in the insurance and the financial services industry. Complainant is the registered owner of a portfolio of registered trademarks for STATE FARM and similar marks including:
· United States registered service mark STATE FARM (design), registration number 4,211,626, registered on September 18, 2012 for services in international class 36;
· United States registered service mark STATE FARM (design), registration number 4,227,731, registered on October 16, 2012 on the Principal Register for services in international class 36;
· United States registered service mark STATE FARM, registration number 5,271,354, registered on August 22, 2017, on the Principal Register for services in international class 36;
· United States registered service mark STATEFARM.COM registration number 2,444,342, registered on April 17, 2001, on the Principal Register for services in international class 36;
· United States registered service mark STATEFARM.COM registration number 2,444,342, registered on April 17, 2001, on the Principal Register for services in international class 38;
· United States registered service mark STATEFARM.COM registration number 2,450,890, registered on May 15, 2001, on the Principal Register for services in international class 42;
· United States registered service mark STATE FARM CENTER, registration number 4,492,572, registered March 4, 2014 on the Principal Register for services in international class 43;
· United States registered service mark STATE FARM CENTER (design), registration number 4,492,573 registered March 4, 2014 on the Principal Register for services in international class 43;
The disputed domain name was registered on August 23, 2019 and resolves to a parked page with click through links for services similar to Complainant’s business.
There is no information available about Respondent, except for that which is provided in the Complaint, the Registrar’s WHOIS and the information provided by the Registrar in response to the Forum’s request for the registration details of the disputed domain name. Respondent availed of a privacy service to conceal her identity on the published WHOIS and her details were disclosed by the Register in the course of this proceeding.
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 convincing, uncontested evidence that it has rights in the STATE FARM mark though its ownership of the registered trademarks described above and its long-term use of the mark in its financial services and insurance business.
The disputed domain name is composed of Complainant’s STATE FARM service mark in its entirety in combination with the letters “hq” and the generic Top Level Domain (gTLD) <.com> extension. Complainant’s service mark is the initial and dominant element of the disputed domain name. The letters “hq” have no distinctive character and in the context would be taken to mean “headquarters”.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint because the domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has 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 interest in the disputed domain name arguing that Respondent is not commonly known under the domain name <statefarmhq.com>; that it is believed that Respondent has never been known by or performed business under the domain name at issue; that Respondent has not registered the disputed domain name with the Secretary of State in the state in which Respondent does business or filed incorporation papers with respect to the same; that Complainant has no contractual arrangement with Respondent that would allow her to offer services under the STATE FARM name; that Respondent is not 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 mark for Respondent’s business purposes; 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 because the disputed domain name resolves to a parked web page with click through links for services which compete with Complainant’s business.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find 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).
The disputed domain name was registered on August 23, 2019, long after Complainant’s first use of the STATE FARM mark and its registration of its domain name <statefarm.com> on May 24, 1995. It is improbable that the registrant of the disputed domain name was unaware of Complainant, and its rights in the STATE FARM name and mark when the disputed domain name was chosen and registered.
Because of the similarity of the disputed domain name and Complainant’s mark and the inference that the disputed domain name is associated with Complainant’s headquarters, this Panel finds on the balance of probabilities that the disputed domain name was registered in bad faith to confuse Internet users and take predatory advantage of Complainant’s reputation and goodwill.
The disputed domain resolves to an undeveloped web page with click-through links for services similar to Complainant’s business. The links are named “ Insurance Quote”, “State Farm Contact”, State Farm Insurance Quote”, “State Farm Insurance” and “Allstate Insurance Quote”.
These links therefore purport to have some association with Complainant. Complainant states that it has no association with Respondent and that the links lead to competitors.
In such circumstances, this Panel finds that, on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of her web site and is therefore using the disputed domain name 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 <statefarmhq.com> domain name be CANCELLED.
James Bridgeman SC
Panelist
Dated: May 18, 2020
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