State Farm Mutual Automobile Insurance Company v. Brian Christiansen
Claim Number: FA1904001840727
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Brian Christiansen (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigstatefarmagent.com>, registered with FastDomain Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2019; the Forum received payment on April 26, 2019.
On April 26, 2019, FastDomain Inc. confirmed by e-mail to the Forum that the <bigstatefarmagent.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 April 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 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 firstname.lastname@example.org. Also on April 29, 2019, 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 May 21, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant asserts trademark rights in STATE FARM.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith.
Respondent has not filed a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a U.S. national insurance provider which since 1930 has offered its services by reference to the trademark STATE FARM;
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,979,585 registered June 11, 1996 for the word mark STATE FARM;
3. the disputed domain name was registered on May 22, 2018; and
4. the domain name does not resolve to an active website and there is no evidence of its use otherwise.
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.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant provides evidence of its USPTO trademark registration the Panel is satisfied that it has rights in STATE FARM.
The Panel notes that the Complaint carries no submissions with respect to the identity or confusing similarity of the terms. Another panel may have refused the Complaint for this reason alone. However, this Panel has made its evaluation and in so doing has followed the agreed principle that in most cases (including this case) the non-distinctive gTLD, “.com”, can be disregarded[iii]. The comparison then resolves to STATE FARM with the individually recognizable words, “big state farm agent”, of the disputed domain name. Clearly, the terms are not identical. As a broad principle, UDRP panelists are in agreement that the test of confusing similarity involves a side-by-side comparison of the domain name and the (textual) components of the relevant trademark to assess whether the trademark is recognizable within the disputed domain name[iv]. It is understood by UDRP panelists that, in general, where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive, geographical, pejorative, meaningless, or otherwise non-distinctive terms would not prevent a finding of confusing similarity[v]. That said, assessment is made on a case-by-case basis and here, in spite of the presence of the trademark with two ordinary words “big” and “agent”, the syntax of the domain name makes another reading more obvious to an Internet user, namely, “‘Big State’ farm agent”. The Panel finds that reading of the domain name intuitive and so finds that the primary perception of the domain name would not be that of trademark mixed with other terms.
The Panel finds that the disputed domain name is not confusingly similar to Complainant’s trademark. The Panel therefore finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bigstatefarmagent.com> domain name be REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: May 22, 2019
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; 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”).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Jurisprudential Overview 3.0”) at para. 1.11.
[iv] See, WIPO Jurisprudential Overview 3.0”) at para. 1.7.
[v] See, WIPO Jurisprudential Overview 3.0”) at para. 1.8.
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