DECISION

 

State Farm Mutual Automobile Insurance Company v. Domain Privacy / Domain Name Privacy Inc.

Claim Number: FA2402002085899

 

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 Domain Privacy / Domain Name Privacy Inc. ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <supportstatefarm.com>, registered with Tucows Domains Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 28, 2024; Forum received payment on February 28, 2024.

 

On February 28, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <supportstatefarm.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 February 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2024 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@supportstatefarm.com. Also on February 29, 2024, 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 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:

 

Complainant State Farm is a nationally known company that has been doing business under the name "State Farm" since 1930 and engages in business in both the insurance and the financial services industry.

 

The STATE FARM mark is registered with the USPTO and other registries worldwide as are other marks containing State Farm. STATE FARM has become a famous mark as acknowledged by prior panels.

 

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights. Respondent's domain name can only bring to mind the Complainant's mark and the addition of a related term or a generic term to a domain name is not sufficient to distinguish the disputed domain from the Complainant's mark.

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent is not affiliated with Complainant nor authorized to use its trademark. Respondent is not commonly known by the at-issue domain name nor does it have independent rights in the domain name.

 

Respondent's domain name initially resolved to a parked web page with click-through links to products and services unrelated to Complainant. The domain name now resolves to various pages, from the same parked web page with click-through links, to an error page with no content and to a known scam webpage for "Windows Defender."  

 

Respondent has acted in bad faith. Respondent has never been known by the domain name. Respondent is not authorized to sell Complainant's products. Respondent's <supportstatefarm.com> domain name sends various webpages, including a parked webpage with click-through links, to products/services unrelated to Complainant, to an error page with no content, to a known scam web page for "Windows Defender." In 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 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. Respondent has not made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent has no legitimate reason for registering the domain name. Respondent failed to respond to cease and desist notifications from Complainant. The Respondent knew or should have known of Complainant's long-term use of the trademark "State Farm," "State Farm Insurance" and the long-term use of the domain name "statefarm.com."

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the STATE FARM trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the STATE FARM trademark.

 

Respondent uses the at-issue domain name to send internet traffic to various webpages including a parked webpage with click-through links to products/services unrelated to Complainant, to an error page with no content and to a webpage related to "Windows Defender" activity.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has registered its STATE FARM trademark and other related marks that include STATE FARM with the USPTO as well as with other trademark agencies worldwide. Any of such registrations demonstrates Complainant's rights in a mark under the Policy. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's at-issue domain name consists of Complainant's STATE FARM trademark less its domain name impermissible space prefixed by the suggestive term "support" with all followed by the ".com" top-level domain name. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish the domain name from Complainant's STATE FARM mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's at-issue domain name is confusingly similar to Complainant's STATE FARM trademark. 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.")

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

Respondent lacks both rights and legitimate interests in respect the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the <supportstatefarm.com>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)").

 

The WHOIS information for the at-issue domain name identifies the domain name's registrant as "Domain Privacy" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <supportstatefarm.com>. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent used <supportstatefarm.com> to address a parking page hosting links to third-parties. Such use of the <supportstatefarm.com> domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering."). 

 

Likewise, Respondent has used the domain name to present other webpages which fail to indicate any bona fide  use of the domain name.  Respondent's passive holding of the at-issue domain name is not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website)  Respondent's domain name has addressed a webpage related to malware. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Respondent's domain name has also addressed an offer to sell the domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that "a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests" in a disputed domain name).

 

Given the forgoing, Complainant satisfies its burden under Policy ¶ 4(a)(ii) and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.

 

Respondent used its confusingly similar <supportstatefarm.com> domain name to address a webpage displaying what appear to be pay-per-click links. Using the domain name in such manner is disruptive to Complainant's business, takes unfair advantage of the confusion between the at-issue domain name and Complainant's trademark, and indicates Respondent's bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Respondent's other uses for the domain name, as mentioned above regarding rights and legitimate interests, such as holding the domain name passively, offering the domain name for sale, and using the domain name to reference malware further indicate Respondent's bad faith regarding with regard to <supportstatefarm.com>.

 

Moreover, Respondent had actual knowledge of Complainant's rights in STATE FARM when it registered <supportstatefarm.com> as a domain name. Respondent's actual knowledge is evident from the worldwide fame of Complainant's trademark. Respondent's registration and use of the confusingly similar domain name with knowledge of Complainant's trademark rights in STATE FARM additionally shows Respondent's bad faith registration and use of <supportstatefarm.com> under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

Paul M. DeCicco, Panelist

Dated: March 22, 2024