State Farm Mutual Automobile Insurance Company v. DERRICK HICKS
Claim Number: FA2303002034608
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar 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 <insurestatefarm.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on March 6, 2023; Forum received payment on March 6, 2023.
On March 7, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <insurestatefarm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2023 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@insurestatefarm.com. Also on March 8, 2023, 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 March 31, 2023, 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, provides insurance and financial services. Complainant has rights in the STATE FARM and related marks through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,271,354 registered on August 22, 2017). The disputed domain name is confusingly similar to the STATE FARM mark since it merely adds the term “insure,” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not associated with Complainant or authorized to use the STATE FARM mark. Nor is Respondent commonly known by the disputed domain name. Respondent also seeks to falsely associate itself with Complainant to trade off Complainant’s goodwill in the STATE FARM mark.
iii) Respondent registered and uses the disputed domain name in bad faith by intentionally causing confusion as to the source or affiliation of the disputed domain name. The disputed domain name’s resolving site is also a parked page with click-through hyperlinks which compete directly with Complainant. Respondent failed to comply with cease-and-desist letters and registered the disputed domain name with constructive and/or actual 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 September 29, 2022.
2. Complainant has established rights in the STATE FARM and related marks through numerous trademark registrations with the USPTO (e.g., Reg. No. 5,271,354 registered on August 22, 2017).
3. The disputed domain name’s resolving site is a parked page with click-through hyperlinks which compete directly 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”).
Complainant claims rights in the STATE FARM and derivative marks through multiple trademark registrations with the USPTO (e.g., Reg. No. 5,271,354 registered on August 22, 2017). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the STATE FARM mark with the USPTO, the Panel finds that Complainant has established rights in the STATE FARM marks per Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <insurestatefarm.com> is confusingly similar to its STATE FARM mark. When a disputed domain name wholly incorporates another’s mark, additional terms and gTLDs have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Complainant notes that the added term is related to Complainant’s insurance business. Panels have also considered the nature of added terms, particularly whether they relate to a complainant’s business under the mark at issue, when evaluating confusing similarity. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Given that the disputed domain name merely adds the descriptive term “insure” and the “.com” gTLD to the STATE FARM mark, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under 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 argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant is neither affiliated with Respondent nor has ever authorized Respondent to use the STATE FARM marks. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. 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)”); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (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 unmasked WHOIS information for the disputed domain name lists the registrant as “DERRICK HICKS.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise affiliated with Complainant or permitted to use the STATE FARM mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also contends that Respondent seeks to trade off the goodwill associated with the STATE FARM mark by falsely portraying an affiliation with Complainant to confuse users. Complainant believes that Respondent registered the disputed domain name to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about Complainant. Complainant provides a screenshot of the resolving parked page with the disputed domain name, which displays hyperlinks to, for example, “Car Insurance Quotes.” The Panel thus finds that Respondent intended the disputed domain name to cause confusion and to take advantage of the STATE FARM mark, and that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
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 registered and uses the disputed domain name in bad faith by intentionally causing confusion as to the ownership or affiliation of the disputed domain name. Complainant further contends that the disputed domain name’s resolving website is a parked page with click-through hyperlinks. Complainant also argues that Respondent, through the hyperlinks, competes directly with Complainant.
Registering a disputed domain name merely for a parked page that contains hyperlinks which presumably commercially benefit a respondent may show Policy ¶ 4(b)(iv) bad faith. See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA 1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). A respondent’s use of a disputed domain name to offer goods or services that compete with those of a complainant has also been found to show bad faith under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA 1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the disputed domain name’s resolving parked page, which displays hyperlinks to, for example, “Car Insurance Quotes.” Therefore, the Panel finds that Respondent’s use of the disputed domain name for commercial hyperlinks shows bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Complainant further claims that Respondent had constructive and/or actual knowledge of Complainant’s rights in the STATE FARM mark when registering the disputed domain name. To support this assertion, Complainant points to the use of the STATE FARM mark since 1995, when it registered the domain name <statefarm.com>, which was long before Respondent’s registration of the disputed domain name. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the STATE FARM mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain name in bad faith 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 <insurestatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 3, 2023
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