State Farm Mutual Automobile Insurance Company v. Gabriel Teran
Claim Number: FA2101001927602
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Gabriel Teran (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarminsurancefontana.com>, <statefarminsuranceontario.com>, <statefarminsuranceriverside.com>, <statefarminsuranceranchocucamonga.com> and <statefarminsuranceupland.com>, registered with Godaddy.Com, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2021; the Forum received payment on January 8, 2021.
On January 11, 2021; January 14, 2021, Godaddy.Com, Llc; confirmed by e-mail to the Forum that the <statefarminsurancefontana.com>, <statefarminsuranceontario.com>, <statefarminsuranceriverside.com>, <statefarminsuranceranchocucamonga.com>, and <statefarminsuranceupland.com> domain names are registered with Godaddy.Com, Llc; and that Respondent is the current registrant of the names. Godaddy.Com, Llc; has verified that Respondent is bound by the Godaddy.Com, 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 January 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2021 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@statefarminsurancefontana.com, postmaster@statefarminsuranceontario.com, postmaster@statefarminsuranceriverside.com, postmaster@statefarminsuranceranchocucamonga.com, postmaster@statefarminsuranceupland.com. Also on January 15, 2021, 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.
A timely Response was received and determined to be complete on February 4, 2021.
On February 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.[i]
A. Complainant
Complainant asserts trademark rights in STATE FARM and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent broadly denies wrongdoing but its submissions are largely non-responsive to the Policy and the principles developed under it. In summary, the submissions are that the disputed domain names (i) are not identical or confusingly similar to the STATE FARM trademark; (ii) were purchased on the open market and Respondent had legal access to them; (iii) are not being used for any active marketing promotions or services; and (iv) Respondent offered to sell the disputed domain names to Complainant at a fair market price.
The factual findings pertinent to the decision in this case are that:
1. Complainant has since 1930 provided insurance and financial service products throughout the United States by reference to the trademark STATE FARM;
2. Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,211,626, registered September 18, 2012 for the mark STATE FARM;
3. Respondent registered the disputed domain names in September and November 2020 long after Complainant had acquired both registered and common law[ii] trademark rights in STATE FARM;
4. There is no relationship between the parties and Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.
5. The <statefarminsurancefontana.com>, <statefarminsuranceontario.com>, <statefarminsuranceriverside.com> and <statefarminsuranceranchocucamonga.com> domain names resolve to parked pages with no content but, contrary to Respondent’s assertion, the <statefarminsuranceupland.com> domain name has redirected to a competitor’s website; and
6. In response to Complainant’s cease and desist letter in connection with the <statefarminsuranceupland.com> domain name, Respondent invited Complainant to purchase the name.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registration for STATE FARM, the Panel is satisfied that it has trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). For the purposes of later discussion the Panel reiterates its finding that Complainant also has common law trademark rights in STATE FARM.
Whilst Respondent asserts that the disputed domain names are neither identical nor confusingly similar to the STATE FARM trademark it provides no reasoned argument in that respect. The Panel agrees with Respondent that the disputed domain name are not identical to Complainant’s trademark but is in no doubt that they are each confusingly similar to the trademark. The disputed domain names take the trademark and merely add the descriptive word “insurance”, the names of geographic locations in California, plus the non-distinctive gTLD, “.com.” The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy (see, for example, Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding <franklincoveykorea.com> confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”; see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the addition of the top level of the domain name does not affect the determination of whether the compared terms are identical or confusingly similar).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The name of the holder of the disputed domain names, “Gabriel Teran”, provides no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. Moreover, in his Response, Gabriel Teran states that he is not known by those names. There is no evidence that Respondent has any trademark rights of his own. There is no evidence that Complainant might have authorized Respondent to use the trademark and Complainant explicitly states that it has not.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. The only submissions that might connect with this aspect of the Policy are that the domain names were purchased on the open market and that Respondent had not made active use of them. Taking those in turn, the purchase of a domain name does not, of itself, give rights or legitimate interests in that name; Respondent must demonstrate those rights or interests. Respondent has not done so – one name has been used competitively with Complainant’s business under the trademark and the others have not been used at all thus failing to establish any rights or interests (see, for example, 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).”; see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
The Panel finds that Complainant has established the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 the 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.’
The Panel finds that paragraph 4(b)(iv) has direct application in the case of the <statefarminsuranceupland.com> domain name. The Panel finds registration and use in bad faith under that paragraph. The remaining domain names do not fit within any of the above scenarios, but the Panel nonetheless finds registration and use in bad faith in each case. The Panel has not been presented with any explanation for adoption of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel draws the reasonable inference that Respondent knew of the trademark and of Complainant’s business at the time it registered the disputed domain names. The Panel finds that Respondent did not have a legitimate use in mind when registering the domain names and so finds registration in bad faith under the Policy. Albeit that the remaining disputed domain names are not being used the Panel has already found that the trademark is well known and cannot envisage any use of the disputed domain names which would be in good faith. Accordingly, the Panel finds so-called passive holding in bad faith and so finds registration in bad faith in line with the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsurancefontana.com>, <statefarminsuranceontario.com>, <statefarminsuranceriverside.com>, <statefarminsuranceranchocucamonga.com>, and <statefarminsuranceupland.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 15, 2021
[i] The Complaint does not explicitly request transfer to Complaint but that can be implied as the intended relief sought in the proceedings.
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