State Farm Mutual Automobile Insurance Company v. Charles Kuchynka
Claim Number: FA2004001892324
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Bloomington, Illinois, United States of America. Respondent is Charles Kuchynka (“Respondent”), Phoenix, Arizona, United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <statefarmsuperbowl.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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name <statefarmsuperbowl.com> is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2020 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@statefarmsuperbowl.com. Also on April 17, 2020, 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 May 6, 2020.
On May 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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.
Complainant requests that the domain name be cancelled.
A. Complainant
a. Complainant engages in business in both the insurance and the financial services industry.
b. Complainant has rights in the STATE FARM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,271,354, registered Aug. 22, 2017) (Exhibit 1 to the Complaint).
c. Respondent’s disputed domain name <statefarmsuperbowl.com> is confusingly similar to Complainant’s mark as Respondent adds a third party’s mark “super bowl” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
d. Respondents has no rights or legitimate interests in the disputed domain name <statefarmsuperbowl.com> as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.
e. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely attempting to confuse Internet users as to the affiliation of the Respondent with Complainant and causing initial interest confusion.
f. Respondent registered and used the disputed domain name <statefarmsuperbowl.com> in bad faith.
g. Respondent is inactively holding the disputed domain name.
h. Additionally, Complainant sent cease and desist letters to Respondent that went unanswered.
B. Respondent
a. Respondent intends to use the disputed domain name <statefarmsuperbowl.com> as a page to keep family and friends informed about annual vacations they have together.
b. Respondent in no way discussed the sale of the disputed domain name and failed to respond to the cease and desist letters due to the threatening nature of the correspondences.
1. Complainant owns several trademark registrations including the expression State Farm. For example, in the United States of America, in international class 36 owns the Registrations Number Registration No. 4,211,626 of September 18, 2012, 4,227,731 of October 16, 2012, 5,271,354 of August 22, 2017, that is, since before the disputed domain name was registered by Respondent.
2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
3. Respondent is not affiliated with Complainant in any way.
4. Respondent registered and uses the disputed domain name in bad faith.
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.
Complainant contends to be the owner of the trademark State Farm in the United States of America to cover services within international class 36.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark State Farm (Exhibit 1 to the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with goods and services of international class 36. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark State Farm for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark State Farm.
In the first place, before establishing whether or not the disputed domain name <statefarmsuperbowl.com> is confusingly similar to Complainant’s trademark State Farm, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[ii].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:
“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
The Panel considers that the reproduction of the trademark State Farm, by the disputed domain name <statefarmsuperbowl.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iii], mainly since the disputed domain name reproduces entirely Complainant’s trademark. Consequently, consumers will assume that the owner of the disputed domain name is Complainant. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In addition, the Panel agrees with the Complainant on the conclusion that including the also registered trademark “Super Bowl” is not sufficient to make the disputed domain name different from the trademark State Farm.
In fact, as “Super Bowl”, besides being a trademark, is a sports event. Thus, in the consumer’s mind, it simply ties Complainant’s business to the well-known event. Hence, this addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the trademark. Therefore, the disputed domain name should be deemed as confusingly similar to the registered trademark[iv].
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark State Farm and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[v].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[vi]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <statefarmsuperbowl.com> because of the following: i) Complainant has not authorized Respondent to use Complainant’s trademarks for any purpose, neither has license them in any way to Respondent; ii) Respondent is not associated with, affiliated with or sponsored by Complainant; iii) Respondent is not known by the disputed domain name; and iv) The disputed domain name creates confusion among consumers looking for information concerning Complainant.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states the disputed domain name is going to be used as an information site for his family and friends. However, there is no evidence of the use or preparation of use on this regard.
Given the above, the Panel considers the following:
1. Respondent failed to prove that before receiving the written notice of the Complaint he was using or preparing a website to use the disputed domain name in connection with a bona fide offering of goods or services.
2. The use of the disputed domain name proved by Complainant, cannot be qualified as bona fide offering of goods or services as is inactive.
3. Respondent did not provide any evidence supporting the absence of a trademark violation, as Complainant’s trademarks remain within the disputed domain name, which create the risk of confusion.
4. Respondent use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
5. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.
6. Simply stating that the disputed domain names are going to be used as an information site is not evidence of Respondent’s rights or legitimate interest in them. Since its registration, Respondent has had enough time to prepare and use the website of the disputed domain name; notwithstanding, it has not use it or prove that it has been preparing it to be used.
7. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of Complainant’s trademark in the disputed domain name misleads visitors into thinking that Complainant is somehow connected to Respondent.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.
Furthermore, Respondent never explained the reason for choosing the expression STATE FARM to be part of its domain name.
Consequently, Respondent knew or should have known of Complainant’s trademarks STATE FARM since Complainant’s trademarks are included in the resolving website. Yet Respondent incorporated said trademarks in the disputed domain name. Thus, Respondent used the trademarks STATE FARM to create a likelihood of confusion aimed to divert consumers to Respondent’s offered products and services.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Respondent asserts to have registered the disputed domain name for an information site for his family and friends. Nonetheless, the fact that Respondent chose the expression “STATE FARM” to make up the disputed domain name is, in this Panel’s view, evidence per se of bad faith. In fact, the Panel finds this selection was deliberate and not product of chance. Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[vii]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
Moreover, as stated by the panel in State Farm Mut. Auto. Ins. Co. v. Sotelo, the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action. The mere failure to make an active use of the disputed domain name <statefarmsuperbowl.com> is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[viii].
In addition, Respondent’s intended use of the disputed domain names will disrupt Complainant’s business. Respondent’s intended use will falsely suggest sponsorship and/or endorsement by Complainant of Respondent’s website and use of the disputed domain name.
Since Complainant’s trademarks are used along with the trademark “SUPER BOWL” “it is reasonable to conclude that many Internet users would suppose that the website, to which the disputed domain name resolves, has a connection with the Complainant”[ix]. This conclusion might disrupt Complainant’s business, especially since Complainant.
Moreover, Respondent has the capacity to create an information site without using third party’s trademarks in the domain name.
Consequently, the disputed domain name incorporating Complainant’s trademarks along with the trademark “SUPR BOWL”, being currently inactive or used by third parties, such us, GoDaddy and the possible disruption of Complainant’s business, evidence bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).
In addition, the Panel considers that Respondent must have known that the word “reach” within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
Furthermore, after receiving a cease and desist letter, Respondent refused to cancel the domain name registration, despite of stating to have no intention of infringing Complainant’s trademarks.
Respondent included in his response the following:
“If you are interested in acquiring this domain I would be happy to discuss transacting that business”.
However, in his Response, Respondent asserts:
“At no point did I ever offer, or even imply, that I was seeking remuneration for this domain name. The claim that I have done so is entirely false”.
This seems contradictory as a transaction implies a remuneration.
Moreover, as the disputed domain name included a third party’s trademark, Complainant answered:
“We ask that because you have incorporated another party’s trademark in this domain name, you immediately contact your registrar, GoDaddy.com, LLC, and have the domain name registration cancelled and domain released back to the registry. We appreciate your attention in this matter”.
Referring to that communication, in his response, Respondent stated the following:
“I then began receiving emails from State Farm that had a (legally) threatening tone”.
This Panel does not find any threat within Complainant’s communication. However, Respondent’s assertion on this concern, could be understood as deceiving.
Consequently, Respondent intentionally attempted to attract Internet users to its website due to the inclusion of Complainant’s trademark in the disputed domain name. Hence, consumers would not able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s marks and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name <statefarmsuperbowl.com> be CANCELLED.
Fernando Triana, Esq., Panelist
[i] See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also The British Broadcasting Corporation v. Jamie Renteria, D2000-0050 (WIPO Mar. 27, 2000).
[ii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[iii] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[iv] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[v] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO Apr. 24, 2012).
[vi] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 1, 2000).
[vii] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
[viii] See State Farm Mut.Auto. Ins. Co. v. Sotelo, FA 1008269 (Forum July 17, 2007); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000).
[ix] See Forest Labs., Inc. v. candrug, D2008-0382 (WIPO April 24, 2008)
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