State Farm Mutual Automobile Insurance Company v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2208002010257
Complainant is State Farm Mutual Automobile Insurance Company
(“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statffarm.com>, registered with Media Elite Holdings Limited.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on August 30, 2022; Forum received payment on August 30, 2022.
On September 5, 2022, Media Elite Holdings Limited confirmed by e-mail to Forum that the <statffarm.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 September 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@statffarm.com. Also on September 7, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) 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 September 18, 2012). The disputed domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the STATE FARM mark in a misspelled form, replacing the letter “e” in the word “state” with the letter “f”, along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed 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. Instead, Respondent takes advantage of the confusingly similar nature of the disputed domain name in order to create a false impression of association with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. Similarly, Respondent uses the disputed domain name to take advantage of the goodwill and brand recognition associated with Complainant’s mark and is an example of opportunistic bad faith. Moreover, Respondent is engaged in typosquatting. Respondent failed to respond to Complainant’s three cease-and-desist letters. Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on June 28, 2022.
2. Complainant has established 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 September 18, 2012).
3. The disputed domain name’s resolving website displays a message that the user’s access to their computer has been blocked along with a message that pirated software has been detected and requests the user to click a deny or allow button.
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”).
Complainant claims rights in the STATE FARM mark through its registration with the USPTO. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).”). Complainant provides copies of its registration in the STATE FARM mark with the USPTO (e.g., Reg. No. 4,211,626, registered September 18, 2012). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues the <statffarm.com> domain name is identical or confusingly similar to Complainant’s STATE FARM mark. Under Policy ¶ 4(a)(i), incorporating a protected mark in a misspelled form is generally not sufficient in distinguishing a domain name from a protected mark. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). Moreover, the addition of the gTLD “.com” is generally considered irrelevant when determining whether a disputed domain name is identical or confusingly similar to another’s trademark. The disputed domain name wholly incorporates the STATE FARM mark in a misspelled form, replacing the letter “e” in the word “state” with the letter “f”, along with the “.com” gTLD. Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name. 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. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). 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 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). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s STATE FARM mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant has provided a screenshot of the disputed domain name’s resolving website displaying a message the user’s access to their computer has been blocked along with a message that pirated software has been detected and requests the user to click a deny or allow button.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 name.
Complainant argues that Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. Under Policy ¶¶ 4(b)(iii) and (iv), a respondent’s registration and use of a confusingly similar domain name may demonstrate a bad faith attempt to attract users with a false impression of association with complainant. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). The disputed domain name incorporates the entirety of Complainant’s STATE FARM mark. The Panel recalls that the disputed domain name’s resolving website displays a message the user’s access to their computer has been blocked along with a message that pirated software has been detected and requests the user to click a deny or allow button. The Panel finds that Respondent registered and used the disputed domain name to take advantage of the goodwill and reputation associated with Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that the disputed domain name constitutes typosquatting. Registration and use of a domain name that capitalizes on a common typographical error is considered typosquatting and may be considered 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).”). The disputed domain name capitalizes on a common typographical error by replacing the letter “e” at the end of the word “state” with the letter “f”. The Panel finds that Respondent engaged in typosquatting, which supports a finding of bad faith registration of the disputed domain name under Policy ¶ 4(a)(iii).
Complainant contends that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the STATE FARM mark. While constructive notice is not sufficient for a finding of bad faith, under Policy ¶ 4(a)(iii), actual knowledge is enough in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark at the time of registering the disputed domain name, which supports a finding of bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statffarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: October 11, 2022
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