State Farm Mutual Automobile Insurance Company v. Nnadi Nnanna / Deloo
Claim Number: FA2012001923522
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, United States. Respondent is Nnadi Nnanna / Deloo (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmllc.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2020; the Forum received payment on December 2, 2020.
On December 2, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <statefarmllc.com> 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 December 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@statefarmllc.com. Also on December 3, 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 December 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
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. 4,211,626, registered on Sep. 18, 2012) ( “the STATE FARM mark”). See Compl. Ex. 1. Respondent’s <statefarmllc.com> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, merely adding the related term “LLC” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <statefarmllc.com> domain name because Respondent is not authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather uses the disputed domain name to create an impression of association with Complainant and redirect Internet traffic.
Respondent registered and uses the <statefarmllc.com> domain name in bad faith. Respondent attempts to attract users to a webpage for fraudulent purposes. In addition, Respondent fails to make an active use of the disputed domain name. Also, Complainant sent a cease and desist letter to Respondent, to which Respondent failed to respond or comply. See Compl. Ex. 4. Finally, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a famous business that engages in the insurance and financial services industry.
2. Complainant has established its trademark rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012).
3. Respondent registered the disputed domain name on September 7, 2020.
4. Respondent uses the disputed domain name to create an impression of association with Complainant and redirect Internet traffic.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the STATE FARM mark based upon registration with the USPTO. 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)). Here, Complainant provides copies of its STATE FARM registrations with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). See Compl. Ex. 1. Therefore, the Panel finds that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Complainant argues that Respondent’s <statefarmllc.com> domain name is confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark in its entirety, merely adding the related term “LLC” and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD to a mark is insufficient to overcome confusing similarity between a domain name and the mark. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). The Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s STATE FARM mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s STATE FARM trademark and to use it in its domain name, adding the related term “LLC” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on September 7, 2020;
(c) Respondent uses the disputed domain name to create an impression of association with Complainant and redirect Internet traffic;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits Respondent does not have rights or legitimate interests in the <statefarmllc.com> domain name because Respondent is not authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Nnadi Nnanna / Deloo,” and there is no other evidence to suggest Respondent was authorized to use the STATE FARM mark. See Compl. Ex. 2. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <statefarmllc.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather uses the disputed domain name to create an impression of association with Complainant and redirect Internet traffic. Passing off as a complainant or otherwise suggesting affiliation with a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (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).”). Complainant argues that the disputed domain name creates an impression of association with Complainant to trade off Complainant’s goodwill for its own benefit. As the Panel agrees, the Panel finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent registered and uses the <statefarmllc.com> domain name in bad faith because Respondent attempts to attract users to a webpage for fraudulent purposes. Use of a disputed domain name to attract users to a website that spreads malware or attempts to collect user information is evidence of bad faith per Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Complainant provides a screenshot of the warning screen that arises when one attempts to access the disputed domain name. See Compl. Ex. 3. Complainant claims this warning shows that the disputed domain name is used to install malicious software or reveal personal information. As the Panel agrees, the Panel finds bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent fails to
make an active use of the <statefarmllc.com> domain name. Failure to use a domain name actively
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 M 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)). On the totality of the evidence, the Panel
finds that Respondent inactively holds the domain name, and therefore finds bad
faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <statefarmllc.com> domain name with knowledge of Complainant’s rights in the STATE FARM mark. Actual knowledge of a Complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown through the totality of circumstances surrounding registration and use of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent knew or should have known of Complainant’s rights in the STATE FARM mark based upon the fame of Complainant’s mark and Complainant’s long term use of the mark. As the Panel agrees that actual knowledge is acceptable evidence, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmllc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 29, 2020
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