State Farm Mutual Automobile Insurance Company v. Christian Puckerin
Claim Number: FA2004001893193
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Christian Puckerin (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jakefromstatefarm.club>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2020; the Forum received payment on April 22, 2020.
On April 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <jakefromstatefarm.club> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 firstname.lastname@example.org. 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 Paul M. DeCicco 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 contends as follows:
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”).
Respondent’s <jakefromstatefarm.club> 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 terms “jake,” and “from” along with the generic top-level domain (“gTLD”) “.club.”
Respondent has no rights or legitimate interests in the <jakefromstatefarm.club> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the at-issue domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <jakefromstatefarm.club> domain name to divert Internet users away from Complainant to a parked webpage displaying only a copyright disclaimer.
Respondent has registered and uses the <jakefromstatefarm.club> domain name in bad faith. Respondent attempts to attract, likely 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 Response in this proceeding.
Complainant has trademark rights in the STATE FARM mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in STATE FARM.
Respondent uses the domain name to address a parked webpage displaying only a copyright disclaimer.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its STATE FARM mark establishes Complainant’s rights in such mark for the purposes of 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)).
The at-issue domain name contains Complainant’s STATE FARM trademark, less its space prefixed with the terms “jake from,” and all appended with the top level domain name “.club.” The differences between the <jakefromstatefarm.club> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Indeed, the phrase “Jake from State Farm” is a catch phrase used in Complainant’s product marketing and thus only adds to any confusing caused by Respondent’s inclusion of Complainant’s STATE FARM mark in the domain name. Therefore, the Panel finds that the <jakefromstatefarm.club> domain name is confusingly similar to Complainant’s STATE FARM mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <jakefromstatefarm.club> ultimately indicates that “Christian Puckerin” is the domain name’s registrant. Further, there is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <jakefromstatefarm.club> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent’s domain name addresses a parked webpage that displays a copyright disclaimer and nothing more. Using the confusingly similar domain name to display a parked webpage is not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <jakefromstatefarm.club> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent uses its confusingly similar <jakefromstatefarm.club> domain name to address a parked webpage. Respondent’s use of the domain name diverts internet user to Respondent’s empty website by confusing the internet users into believing that the domain name is affiliated with Complainant, when it is not. Respondent’s use of its <jakefromstatefarm.club> domain name is indicative of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondents use of the domain name may be characterized as a passive holding of the domain name. Respondent’s failure to actively use the at-issue domain name indicates bad faith registration and use of the domain name 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 contained 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)).
Additionally, Respondent registered the <jakefromstatefarm.club> domain name knowing that Complainant had trademark rights in STATE FARM. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of Complainant’s unique catch phrase “Jake from State Farm” into the domain name. Therefore, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <jakefromstatefarm.club> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering 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 <jakefromstatefarm.club> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 17, 2020
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