State Farm Mutual Automobile Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2008001907746
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mystatefarmfcu.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2020; the Forum received payment on August 10, 2020.
On August 11, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mystatefarmfcu.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 August 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@mystatefarmfcu.com. Also on August 11, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant offers insurance and financial services throughout the world. Complainant has rights in the STATE FARM mark through its registration with numerous trademark agencies throughout North America and the world. (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 4,211,626, registered Sep. 18, 2012; Canadian Intellectual Property Office (“CIPO”) Reg. TMA 559, 285, registered Mar. 15, 2002).
2. Respondent’s <mystatefarmfcu.com>[i] domain name is identical or confusingly similar as it incorporates the STATE FARM mark in its entirety and merely adds the generic terms “my” and “fcu”, along with the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <mystatefarmfcu.com> domain name as it is not commonly known by the domain name, and Complainant has not licensed or authorized Respondent to use the STATE FARM mark in its domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent attempts to create an impression of affiliation with Complainant and divert Internet users seeking Complainant’s services to the <mystatefarmfcu.com> domain name’s resolving website.
5. Respondent registered and uses the <mystatefarmfcu.com> domain name in bad faith. Respondent attempts to divert internet users seeking Complainant’s services for commercial gain to the domain name’s inactively held resolving website, where parked advertisements are the only content.
6. Respondent registered the <mystatefarmfcu.com> domain name with actual notice of Complainant’s rights in the mark, and failed to respond to Respondent’s multiple cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mystatefarmfcu.com> domain name and that Respondent registered and uses the 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.
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 argues that Respondent’s <mystatefarmfcu.com> domain name is identical and/or confusingly similar to Complainant’s STATE FARM mark, as it adds the generic word “my”, the generic acronym “fcu”, and the “.com” gTLD. Adding the generic term “my” along with generic acronyms and a “.com” gTLD are insufficient in differentiating the <mystatefarmfcu.com> domain name from the STATE FARM mark it incorporates under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, Respondent’s <mystatefarmfcu.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <mystatefarmfcu.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <mystatefarmfcu.com> as it is not commonly known by the domain name, and Complainant never authorized or licensed Respondent to use its STATE FARM mark in the domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information in the record identifies Respondent as “Carolina Rodrigues”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the STATE FARM mark in the <mystatefarmfcu.com> domain name. Therefore, the Panel finds Respondent is not commonly known by the <mystatefarmfcu.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the <mystatefarmfcu.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead trades off Complainant’s popularity by attempting to attract the many internet users interested in Complainant’s services to the <mystatefarmfcu.com> domain name’s resolving website, under the initial impression they are visiting Complainant’s site. Under Policy ¶¶ 4(c)(i) and (iii), it is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use to divert internet users to an identical or confusingly similar domain name’s resolving website, by making them initially believe they are visiting a complainant’s website. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the <mystatefarmfcu.com> domain name’s resolving website, and argues the Respondent registered the <mystatefarmfcu.com> domain name for the purpose of trading off Complainant’s good name. The Panel agrees and holds that Respondent lacks rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <mystatefarmfcu.com> domain name in bad faith by attempting to attract internet users for commercial gain. Attempting to divert internet users to a resolving website of a domain name incorporating the mark of another is considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The record contains a screenshot of the resolving website of the <mystatefarmfcu.com> domain name, which features parked hyperlinks to similar services as Complainant’s. Thus, the Respondent registered and uses the <mystatefarmfcu.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <mystatefarmfcu.com> in bad faith as it had notice of Complainant’s rights in the STATE FARM mark when it registered the domain name. Actual notice may be demonstrated under Policy ¶ 4(a)(iii) by registering a domain name with a mark that Complainant has used for a long time. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Complainant argues that its longstanding use and popularity of the STATE FARM mark demonstrates that Respondent had actual notice of Complainant’s rights in the mark when it registered the <mystatefarmfcu.com> domain name. The Panel agrees and finds that Respondent registered the <mystatefarmfcu.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <mystatefarmfcu.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 17, 2020
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