State Farm Mutual Automobile Insurance Company v. Justin May
Claim Number: FA2104001942184
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Justin May (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drakefromstatefarm.com>, registered with Google 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 April 20, 2021; the Forum received payment on April 20, 2021.
On April 21, 2021, Google LLC confirmed by e-mail to the Forum that the <drakefromstatefarm.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@drakefromstatefarm.com. Also on April 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 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. 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
Complainant contends as follows:
Complainant, State Farm Mutual Automobile Insurance Company, operates an insurance and financial services company.
Complainant has rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <drakefromstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark, only differing by the addition of the name “Drake”, the generic term “from” along with adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <drakefromstatefarm.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the STATE FARM mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services nor for any legitimate noncommercial or fair use. Instead, Respondent fails to make any active use of the disputed domain name.
Respondent registered and uses the <drakefromstatefarm.com> domain name in bad faith. Respondent uses the domain to attract users for commercial gain by creating confusion as to the affiliation of the disputed domain name with Complainant. Also, Respondent registered the at-issue domain name shortly after Complainant released a commercial with the musical artist Drake and where the phrase “Drake from State Farm” was said. Respondent’s registration of the domain name displays opportunistic bad faith. Respondent’s inactive holding of the at-issue domain name further displays Respondent’s bad faith. Complainant also sent Respondent a cease and desist letter which Respondent failed to respond to. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the STATE FARM mark based on the registration and long-term use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 holds the at-issue domain name passively.
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”).
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 by the term “drake from” and with the resulting string followed by the “.com” top-level domain name. The differences between the <drakefromstatefarm.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Indeed, the phrase “Drake from State Farm” is spoken by musical artist Drake in one of Complainant’s recent television commercials and thus only adds to any confusing caused by Respondent’s inclusion of Complainant’s STATE FARM mark in the domain name. Therefore, the Panel finds that the <drakefromstatefarm.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, State Farm Mutual Automobile Insurance Company v. Christian Puckerin, FA1893193 (Forum May 17, 2020) (finding the “phrase ‘Jake from State Farm’ is a catch phrase used in Complainant’s product marketing and thus only adds to any confusing caused by Respondent’s inclusion of Complainant’s STATE FARM mark in the domain name.”)
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. 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 <drakefromstatefarm.com> indicates that “Justin May” is the domain name’s registrant. Further, there is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <drakefromstatefarm.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 is held inactively and does not address any internet object such as a website or webpage. Browsing to the <drakefromstatefarm.com> domain name thus predictably returns an error message. Likewise, there is nothing in the record indicating that the domain name is used for email or for any other legitimate function. Using the confusingly similar domain name simply by holding such domain name passively 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. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
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 <drakefromstatefarm.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.
First, without any possible good faith explanation indicated by the record the Panel Respondent must have registered the at-issue domain name because of the confusingly similar domain name’s ability to deceitfully attract internet users. Respondent’s corrupt motivation in registering and passively using the at-issue domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Next, Respondent registered the <drakefromstatefarm.com> domain name shortly after Complainant released a television commercial wherein the musical artist Drake spoke the phrase “Drake from State Farm.” Respondent’s timely registration of <drakefromstatefarm.com> on the day immediately following the public debut of Complainant’s commercial shows Respondent to be engaging in opportunistic bad faith under Policy ¶ 4(a)(iii). See Twitch Interactive, Inc. v. Jason Hardwick, FA1501001601323 (Forum Feb. 25, 2015) (finding that the respondent had engaged in opportunistic bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent registered the <twitchtv.net> domain name just two days after the complainant’s launch announcement for TwitchTV).
Moreover and as mentioned elsewhere herein, Respondent’s confusingly similar domain name is held passively and serves no discernable technical function or other legitimate purpose. Respondent’s failure to actively use the at-issue domain name in itself shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also, Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Finally, Respondent registered the <drakefromstatefarm.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 opportune incorporation of certain unique verbiage from one of Complainant’s television commercial into the <drakefromstatefarm.com> domain name. Respondent’s prior knowledge of Complainant's trademark independently indicates Respondent bad faith. 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 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 <drakefromstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 18, 2021
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