State Farm Mutual Automobile Insurance Company v. geosum
Claim Number: FA1511001649433
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is geosum (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurance.website>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2015; the Forum received payment on November 23, 2015.
On November 24, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <statefarminsurance.website> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@statefarminsurance.website. Also on November 24, 2015, 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 December 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is a nationally known company that uses the STATE FARM and STATE FARM INSURANCE marks in connection with its business in the insurance and financial services industry. Complainant’s rights in the STATE FARM INSURANCE mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,125,010, registered September 11, 1979). Respondent’s <statefarminsurance.website> domain is confusingly similar to Complainant’s STATE FARM INSURANCE mark as the domain includes the entire mark and only differs from the mark through addition of the generic top-level domain (“gTLD”) “.website.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known under the disputed domain, nor has Respondent owned or been a party to any arrangement with Complainant that would confer trademark rights. Further, Respondent registered the domain to create a false impression of association with Complainant.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s attempt to sell the disputed domain name for €274,567 demonstrates bad faith. Respondent’s bad faith is evident from Respondent failing to resolve the disputed domain to an active website. Respondent had knowledge of Complainant’s rights in the STATE FARM INSURANCE and STATE FARM marks based on longstanding use and prominence.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was created on June 25, 2015.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and famous trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
As the disputed domain name consists of the Complainant’s famous and registered trademark with the addition of the generic gTLD “website” and the Respondent has failed to file a response in this matter, the Panel finds that the disputed domain name is identical and/or confusingly similar to the Complainant’s famous and registered trademarks.
Complainant adequately establishes its rights in the STATE FARM INSURANCE mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,125,010, registered September 11, 1979).
The Panel, therefore, finds that Respondent’s disputed <statefarminsurance.website> domain is confusingly similar to the STATE FARM INSURANCE mark under Policy ¶ 4(a)(i). This disputed domain name is also confusingly similar to Complainant’s mark STATE FARM as the disputed domain name merely adds descriptive but generic terms to the famous trademark STATE FARM and the gTLD “website”. These are not additions that adequately distinguish the disputed domain name from the famous and registered marks of the Complainant.
The Panel finds that the Respondent is not commonly known under the disputed domain, nor has Respondent owned or been a party to any arrangement with Complainant that would confer trademark rights. WHOIS information associated with the disputed domain name indicates that Respondent registered the domain using the name “geosum” which does not appear to resemble the disputed domain name. See Compl., at Attached Ex. 2. There does not appear to be any other evidence indicating that Respondent has been known by the disputed domain name.
The Panel, therefore, concludes that Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent registered the domain to create a false impression of association with Complainant. Respondent currently does not appear to make any use of the disputed domain name. See Compl., at Attached Ex. 3. Panels have held that a respondent who appropriates another’s mark in a domain name that resolves to an inactive website has not used the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)).
The Panel thus finds that Respondent’s use of the disputed domain does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) and, therefore, the Respondent does not have rights or legitimate interests in or to the disputed domain name.
Complainant first contends that Respondent’s attempt to sell the disputed domain name for € 274,567 demonstrates bad faith. Respondent, in email correspondence between Complainant and Respondent, attempted to sell the disputed domain to Complainant for a price of €274,567 which is claimed to be the amount of money it cost Respondent to prepare a product related to the domain name. See Compl., at Attached Ex. 4. Panels have determined that a respondent acted in bad faith through attempting to sell a domain for an amount in excess of out-of-pocket costs. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000).
The Panel, therefore, finds that Respondent’s bad faith is shown through attempting to sell the domain for €274,567.
Complainant next asserts that Respondent’s bad faith is evident from Respondent failing to resolve the disputed domain to an active website. Respondent’s domain, as resolved for Complainant on November 23, 2015 displays the message “Network Error (dns_server_failure) Your request could not be processed because an error occurred contacting the DNS server. The DNS server may be temporarily unavailable, or there could be a network problem.” See Compl., at Attached Ex. 3. Panels have found bad faith where a confusingly similar domain does not resolve to an active website. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
For this reason as well, the Panel concludes that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant claims that in light of the fame, notoriety, and longstanding use of Complainant's STATE FARM and STATE FARM INSURANCE marks, it is inconceivable that Respondent could have registered the <statefarminsurance.website> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel disregards any arguments of bad faith based on constructive notice as irrelevant; however, because UDRP precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name based on the fame and longstanding use of Complainant’s marks.
Therefore, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be.
Accordingly, it is Ordered that the <statefarminsurance.website> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: December 23, 2015
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