State Farm Mutual Automobile Insurance Company v. Bryan Shisler / AMFAM
Claim Number: FA2012001923733
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Bryan Shisler / AMFAM (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmphoenix.com> and <statefarmscottsdale.com>, registered with Google 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2020; the Forum received payment on December 3, 2020.
On December 3, 2020, Google LLC confirmed by e-mail to the Forum that the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 December 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@statefarmphoenix.com, postmaster@statefarmscottsdale.com. Also on December 8, 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 31, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant has rights in the STATE FARM mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered September 18, 2012). See Compl. Exhibit 1. Respondent’s <statefarmphoenix.com> and <statefarmscottsdale.com> are identical or confusingly similar to Complainant’s STATE FARM mark as they merely add the geographic words “Phoenix” and “Scottsdale” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the STATE FARM mark.
Respondent registered and uses the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names in bad faith. Respondent intentionally attempts to attract Internet users to Respondent’s website. Additionally, Respondent fails to make active use of the disputed domain name. Finally, Respondent failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, on December 9, 2020, the Forum received the following email purporting to have been sent by Respondent : “It appears I made a mistake in purchasing these domain names. My intention was to give them to a State Farm agent friend but it appears that wouldn’t have been okay either. I’m actually a little surprised Google doesn’t have a safeguard for this sort of thing.
I went into the Google Domain registration settings to simply delete the domains. Unfortunately, due to this investigation, the domain is locked and cannot be transferred or deleted. When I contacted support, they said they have to leave it blocked until this investigation is complete. Is unlocking these domains so I can either make the transfer or delete the domains something you can request?
I’d like to comply but don’t know our next step.
What are your recommendations?”
1. Complainant is a United States company that that has been doing business in the insurance and related industries under the name “State Farm”.
2. Complainant has established its trademark rights in the STATE FARM mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered September 18, 2012).
3. Respondent registered the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names on September 1, 2020.
4. Respondent has failed to make an active or any other legitimate use of the disputed domain names.
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”).
As previously noted, the Forum received an email communication purporting to come from Respondent. The contents of that email communication are set out above and the Panel has taken them into account in its consideration of each of the elements required to be adjudicated upon under the Policy.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the STATE FARM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,211,626, registered September 18, 2012). See Compl. Exhibit 1. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the STATE FARM mark per Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Complainant argues Respondent’s <statefarmphoenix.com> and <statefarmscottsdale.com> domain names are identical or confusingly similar to Complainant’s STATE FARM mark as they merely add the geographic words “Phoenix” and “Scottsdale” to Complainant’s mark. Adding a geographic word and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s 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 names 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STATE FARM
mark and to use it in its domain names;
(b) Respondent registered the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names on September 1, 2020;
(c) Respondent has failed to make an active or any other legitimate use of the disputed domain names;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the STATE FARM mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Bryan Shisler,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the STATE FARM mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to make an active use of the disputed domain names. Failure to make demonstrable preparations to use a disputed domain name can demonstrate a lack of a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides screenshot evidence of the resolving websites for the disputed domain names, both of which show a failure to load content. See Compl. Ex. 3.1, 3.2. Therefore, the Panel finds Respondent failed to use the disputed domain names in accordance with Policy ¶¶ 4(c)(i) & (iii), and that Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names in bad faith as Respondent intentionally attempts to attract Internet users to Respondent’s websites for a purpose of its own and without the permission of Complainant. Intentionally attempting to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source of the website can evidence bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant argues the disputed domain names give the impression that interested individuals will receive information regarding Complainant, but instead, individuals are sent to error pages with no other content. See Compl. Exhibit 3. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent registered and uses the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names in bad faith as Respondent fails to make active use of the disputed domain names. Failing to make active use of a disputed domain name can demonstrate bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant argues that the disputed domain names resolve to error pages with no other content. See Compl. Exhibit 3. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends Respondent registered and uses the <statefarmphoenix.com> and <statefarmscottsdale.com> domain names in bad faith as Respondent failed to respond to Complainant’s cease and desist letters. Failing to respond to a cease and desist letter can demonstrate bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant argues that Respondent failed to respond to Complainant’s three different cease and desist letters . See Compl. Exhibit 4. Therefore, the Panel finds Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the STATE FARM mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
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 <statefarmphoenix.com> and <statefarmscottsdale.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 4, 2021
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