DECISION

 

State Farm Mutual Automobile Insurance Company v. Jeffrey Rosen

Claim Number: FA2311002071768

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Jeffrey Rosen Jeffrey Rosen ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsurance.help> ("Domain Name"), registered with Porkbun LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 20, 2023; Forum received payment on November 20, 2023.

 

On November 20, 2023, Porkbun LLC confirmed by e-mail to Forum that the <statefarminsurance.help> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 November 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@statefarminsurance.help. Also on November 21, 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.

 

A timely Response was received and determined to be complete on December 4, 2023.

 

On December 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a nationally known insurance 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. 5,271,354 registered August 22, 2017).  Respondent's <statefarminsurance.help> domain name is confusingly similar to Complainant's STATE FARM mark as it includes Complainant's entire mark with the added descriptive words "insurance" and the gTLD ".help."

 

Respondent lacks rights or legitimate interests in the <statefarminsurance.help> domain name.  Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the STATE FARM mark.  Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Name resolves to an inactive webpage.

 

Respondent registered and uses the <statefarminsurance.help> domain name in bad faith.  The Domain Name resolves to an inactive webpage.  Respondent failed to reply to Complainant's cease and desist letters.  Finally, Respondent had actual knowledge of Complainant's rights in the STATE FARM mark based on Complainant's long-term use of the mark and the registration of a domain name containing terms describing the services Complainant offers.

 

B. Respondent

Respondent, in its Response and in earlier e-mails sent to Forum on November 22, 2023 and November 30, 2023, states that it is agreeable and ready to transfer the Domain Name to the Complainant to comply with the specific remedy sought by Complainant. Respondent states that it registered the Domain Name unaware of the trademark law cited in the Complaint and has taken no action to publish, promote, commercialize or otherwise exploit the Domain Name.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

Respondent consents to transfer the <statefarminsurance.help> domain name to Complainant.  However, after the initiation of this proceeding, Porkbun LLC placed a hold on Respondent's account and therefore Respondent cannot transfer the Domain Name while this proceeding is still pending.

 

In a circumstance such as this, where Respondent has not contested the transfer of the Domain Name, but instead agrees to transfer the Domain Name to Complainant, the Panel is authorized to forego the traditional UDRP analysis. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <statefarminsurance.help> domain name.  See Boehringer Ingelheim Int'l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) ("In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy."); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) ("[U]nder such circumstances, where Respondent has agreed to comply with Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.").

 

DECISION

As the remedy of the Complainant and the request of the Respondent both sought to transfer the Domain Name from the Respondent to the Complainant, the Panel concludes that such relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarminsurance.help> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: December 4, 2023