State Farm Mutual Automobile Insurance Company v. Patrick Moors
Claim Number: FA2103001935413
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Patrick Moors (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <workerscompstatefarm.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2021; the Forum received payment on March 4, 2021.
On March 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <workerscompstatefarm.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 March 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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@workerscompstatefarm.com. Also on March 8, 2021, 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 March 23, 2021.
On March 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 transferred from Respondent to Complainant.
Respondent requests that the Panel denies request to transfer the domain name.
A. Complainant
Complainant contends as follows:
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company providing insurance and financial services under the name “State Farm.” Complainant has been in business since 1930.
Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (USPTO).
The at-issue domain name, <workerscompstatefarm.com>, is identical or confusingly similar to the STATE FARM mark because it wholly incorporates the mark with the addition of generic or related terms, “Workers” and “Comp”, and a generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interested in the at-issue domain name because Respondent is not commonly known by the domain name nor was Respondent authorized to use Complainant’s mark. Respondent further was not making a bona fide offering of goods or services nor was using it for a legitimate noncommercial or fair use because of the likelihood individuals looking for information on Complainant’s services would be confused.
Respondent registered or is using the <workerscompstatefarm.com> in bad faith. Respondent’s domain name addresses a parked webpage comprised of click-through links. Respondent did not respond to Complainant’s cease and desist letter also indicating bad faith. Respondent was aware or should have known of Complainant’s trademark when it registered the at-issue domain name.
B. Respondent
Respondent contends as follows:
The at-issue domain name is not confusingly similar to Complainant’s mark since an insurance company would never use slang terms as used in Respondent’s domain name. Respondent has not acted in bad faith per Lamparello v. Falwell, 420F.3d 309. The at-issue domain name is a “gripe Domain.” Further, Respondent invokes its First Amendment rights [sic] to free speech. Respondent requests that the Panel does not transfer its domain name to Complainant.
Complainant has trademark rights in the STATE FARM mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in STATE FARM.
Respondent uses the at-issue domain name to address a parking page with click-through links.
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.
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its STATE FARM mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The at-issue domain name contains Complainant’s STATE FARM trademark less its space, prefixed with the term “workerscomp,” with all followed by the top level domain name “.com.” The differences between the <workerscompstatefarm.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). In fact, the term “workerscomp” is suggestive of Complainant’s insurance business and thus only adds to any confusion caused by Respondent’s inclusion of STATE FARM in the domain name. Further, Respondent’s unsupported assertion that its domain name is not confusingly similar to Complainant’s STATE FARM trademark is without merit. Respondent speculates that since no insurance company would use slang, there is no confusing similarity. Since there is no “slang” in the domain name the statement is, without more, wholly inapplicable to the at-issue domain name. Therefore, the Panel finds that the <workerscompstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of 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 at-issue domain name.
The WHOIS information for <workerscompstatefarm.com> indicates that “Patrick Moors” is the domain name’s registrant. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <workerscompstatefarm.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain name addresses a parking page with click-through links to third parties. Such use of the domain name in a 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 Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also, Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c )(i));
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <workerscompstatefarm.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interest, Respondent uses the domain name to address a parking page displaying third party links. The page displays links for “Worker Compensation”, “Insurance Adjuster”, “Claims Adjuster”, “Business Insurance Quotes”, “General Liability Insurance Business”, and “Commercial Insurance Quotes.” These links likely reach entities that compete with Complainant’s insurance business. Respondent’s use of the domain name in this manner, which misleads consumers to believe there is an association between Complainant and Respondent’s domain name where there is none, is disruptive to Complainant’s business and shows Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Moreover, Respondent registered the <workerscompstatefarm.com> domain name knowing that Complainant had trademark rights in STATE FARM. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of the suggestive term “workerscomp” into the domain name. Therefore, the Panel finds that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <workerscompstatefarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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 Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Like in its response particular to confusing similarity, Respondent’s makes no substantive legal argument that urges, contrary to the Panel’s findings, that Respondent has rights or legitimate interest in the at-issue domain name or that Respondent was acting in good faith in registering and using the domain name. Respondent merely proclaims that its domain name is a “gripe Domain” after citing Lamparello v. Falwell. Respondent’s seeming reliance on Lamparello is particularly obtuse since that case, inter alia, concerns trademark criticism and in our case there is no content associated with the at-issue domain name, critical or otherwise, except for a parking page displaying third-party links. The Panel also fails to divine the relevance of Respondent’s free speech rights.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <workerscompstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 29, 2021
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