State Farm Mutual Automobile Insurance Company v. Derrick Hicks
Claim Number: FA2206002001308
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Derrick Hicks (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmsinsurances.com>, registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA.
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 22, 2022.
On June 23, 2022, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <statefarmsinsurances.com> domain name is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA 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 June 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2022 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@statefarmsinsurances.com. Also on June 24, 2022, 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 July 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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, engages in both the insurance and financial services industry. Complainant claims rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 4,211,626, registered Sep. 18, 2012). See Compl. Ex. 1. Respondent’s <statefarmsinsurances.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the STATE FARM mark in a misspelled form, and adds the related generic term “insurances”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <statefarmsinsurances.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its STATE FARM mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent uses the confusingly similar nature of the disputed domain name in order to create a false impression of association with Complainant.
Respondent registered and uses the <statefarmsinsurances.com> domain name in bad faith. Respondent uses the confusingly similar domain name to attract users to its website in bad faith. Moreover, Respondent registration and use of the disputed domain name constitutes typosquatting. Finally, Respondent registered the disputed domain name in order to create initial interest confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in both the insurance and financial services industries.
2. Complainant has established its rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012).
3. Respondent registered the disputed domain name on June 17, 2022.
4. Respondent has used the confusingly similar nature of the disputed domain name in order to create a false impression of association with Complainant.
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 through its registration with the USPTO (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012). See Compl. Ex. 1. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i) based on its registration with the USPTO.
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 <statefarmsinsurances.com> domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety, and misspelling the mark by adding the letter “s” is generally not sufficient in distinguishing a domain name from a protected mark. See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). Additionally, the addition of a related or generic term fails to differentiate a disputed domain name from a protected mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Further, the addition of the gTLD “.com” is generally insufficient in distinguishing a disputed domain name from another’s trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The <statefarmsinsurances.com> incorporates Complainant’s mark in whole, and adds the letter “s”, along with the related generic term “insurances”, as well as the “.com” generic top-level domain (“gTLD”). The term “insurances” is a highly related term to Complainant’s business in the insurance industry. Therefore, as the Panel agrees, it finds Respondent’s domain name is identical or confusingly similar to Complainant’s mark pursuant to 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 mark and to use it in its domain name adding the letter “s” and the related generic term “insurances”, to the mark;
(b) Respondent registered the domain name on June 17, 2022;
(c) Respondent has used the confusingly similar nature of the disputed domain name in order to create a false impression of association with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <statefarmsinsurances.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the STATE FARM mark. Without evidence to the contrary, a respondent’s use of a privacy service to shield its identity in a disputed domain name’s WHOIS information supports a finding that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Further, any information on the record that reveals a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Respondent used a privacy service to mask its identity in the disputed domain name’s WHOIS information. See Compl. Ex 1. However, the registrar, Ascio, was able to reveal the registrant of the disputed domain name as “Derrick Hicks.” See Registrar Verification Email. Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s STATE FARM mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <statefarmsinsurances.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. A respondent’s use of confusingly similar domain name to divert Internet users seeking the complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent incorporates the entirety of Complainant’s STATE FARM mark in the <statefarmsinsurances.com> domain name in order to divert Internet users seeking Complainant and to create a false impression of affiliation with Complainant. As the Panel agrees, it finds that Respondent does not use the disputed domain name domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
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 does not have a right or legitimate interest in the disputed domain name.
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 contends that Respondent use its STATE FARM mark in the <statefarmsinsurances.com> domain name with intent to divert and attract Internet users for commercial gain in bad faith. A respondent’s use of a domain name that is obviously connected to a complainant’s widely used mark indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Secondly, past panels have found bad faith registration and use where a respondent used a disputed domain name’s resolving webpage to impersonate the complainant. See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information). Respondent registered and uses the confusingly similar domain name to divert unsuspecting users to Respondent’s own webpage. Additionally, Respondent uses the disputed domain name’s resolving webpage to impersonate Complainant through the use of Complainant’s logo as well as descriptions claiming to be Complainant. See Compl. Ex. 3. As the Panel agrees, it finds that Respondent uses the <statefarmsinsurances.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent’s <statefarmsinsurances.com> domain name constitutes typosquatting. Registration and use of a domain name that capitalizes on a common typographical error is considered typosquatting and is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Respondent’s <statefarmsinsurances.com> domain name capitalizes on a common typographical error by adding the “s” to the end of the STATE FARM mark. As the Panel believes Respondent engaged in typosquatting, it finds bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent uses the confusing similarity of the <statefarmsinsurances.com> domain name to Complainant’s well-known STATE FARM mark in order to generate initial interest confusion. A disputed domain name that incorporates the entirety of a well-known protected mark may evidence bad faith use. See London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”). Complainant’s STATE FARM mark is well-known and associated with Complainant. Further, Respondent’s <statefarmsinsurances.com> domain name incorporates the entirety of Complainant’s protected mark. Therefore, as the Panel agrees, it finds that Respondent’s<statefarmsinsurances.com> domain name is obviously connected to Complainant’s well-known mark and is used to generate initial interest confusion in bad faith.
Fifthly, Complainant argues that Respondent registered the <statefarmsinsurances.com> domain name with actual knowledge in Complainant’s mark. A respondent’s full incorporation of a protected mark in a disputed domain name may demonstrate a respondent’s actual knowledge in a mark. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Respondent fully incorporates Complainant’s STATE FARM mark in the disputed domain name. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark under Policy ¶ 4(a)(iii).
Finally, 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 name using the STATE FARM mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it 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 <statefarmsinsurances.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 20, 2022
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