State Farm Mutual Automobile Insurance Company v. Locker Domain c/o The Domain Locker LLC
Claim Number: FA1611001703964
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Locker Domain c/o The Domain Locker LLC (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <call-statefarm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 21, 2016; the Forum received payment November 21, 2016.
On November 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <call-statefarm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2016, 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@call-statefarm.com. Also on November 22, 2016, 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 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that engages in business under the STATE FARM mark in both the insurance and financial services industries. Complainant has rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). See Compl., at Attached Ex. 1. Respondent’s <call-statefarm.com> is confusingly similar to Complainant’s mark. The entire mark is incorporated, less the space, and adds the term “call,” a hyphen, and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <call-statefarm.com>. Respondent is not commonly known by the disputed domain. Complainant never authorized Respondent to use its STATE FARM mark in a domain name. The domain name resolves to a blank webpage that reads “Website Coming Soon.” See Compl., at Attached Ex. 3. No legitimate content is associated with the disputed domain name, and thus Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s registration and use of the disputed domain name was in bad faith under the Policy. Respondent registered the domain name with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Further, the disputed domain name resolves to an inactive website, further evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent’s Allegations in this Proceeding:
Respondent did not submit a Response to the Complaint. The Panel notes that Respondent registered the <call-statefarm.com> domain name April 15, 2016.
Complainant established that it has rights to and legitimate interests in the disputed domain name; Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Respondent did so and passively held 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant claims rights in the STATE FARM mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996). See Compl., at Attached Ex. 1. Registration of a mark with the USPTO establishes rights in the mark under the policy. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO) . The Panel therefore finds that Complainant’s registration of the STATE FARM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that <call-statefarm.com> is confusingly similar to Complainant’s mark. The Panel notes that the entire mark is incorporated, less the space, and the term “call” is added along with a hyphen, and the “.com” gTLD. Eliminating a space and adding the “.com” gTLD are irrelevant alterations under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Further, adding a hyphen and a generic term do not distinguish a disputed domain name. See Allstate Insurance Company v. Brian McFedries, FA 1601235 (Forum Feb. 25, 2015) (panel stating that “adding the hyphen to the domain name does nothing to distinguish the domain name from the trademark under Policy ¶4(a)(i).”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (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.). Therefore, the Panel finds that Respondent’s changes to the STATE FARM mark do not create a distinct domain name; <call-statefarm.com> is confusingly similar to Complainant’s mark pursuant to a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in <call-statefarm.com>. Complainant contends that Respondent is not commonly known by the disputed domain name and that Complainant never authorized Respondent to use the STATE FARM mark in a domain name or in any way. Where no response is on record, WHOIS information is reviewed in determining Policy ¶ 4(c)(ii) along with a complainant’s assertions. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel notes that the WHOIS lists “Locker Domain c/o The Domain Locker LLC” as registrant of record. Coupled with Respondent’s failure to Respond and Complainant’s assertions as to an absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by <call-statefarm.com> per Policy ¶ 4(c)(ii).
Additionally, Complainant argues <call-statefarm.com> resolves to a blank webpage that reads “Website Coming Soon.” See Compl., at Attached Ex. 3. Where no legitimate content is associated with a domain name, no rights or legitimate interests may exist. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant asserts that no legitimate content is associated with the disputed domain name, and the Panel agrees and finds that Respondent’s failure to use the site does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. Respondent registered the domain name with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Panels look to a totality of circumstances in making findings of actual knowledge and disregard contentions of constructive knowledge, which does not support bad faith findings. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent has incorporated Complainant’s mark entirely, and numerous panels have agreed that the STATE FARM mark is famous. See, e.g., State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is a very famous mark, and Complainant has clearly established rights in the [mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks and use in commerce since 1930). Accordingly, the Panel finds that Respondent had actual knowledge in the STATE FARM mark due to its well-known nature and Respondent’s use of the mark in the domain name. The Panel finds that Respondent knew about Complainant’s rights in its mark when registering the disputed domain name and this knowledge supports findings of bad faith registration under Policy ¶ 4(a)(iii).
Further, Complainant argues that <call-statefarm.com> resolves to an inactive website, further evidence of bad faith under Policy ¶ 4(a)(iii). See Compl., at Attached Ex. 3. Inactive or passive holding also supports a finding of bad faith use. See Pirelli & C.S.P.A. v. Tabriz, FA 9211798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Respondent registered <call-statefarm.com> April 15, 2016. Therefore, while Respondent has (presumably) inactively held <call-statefarm.com> for “over seven months”, the Panel’s determination aligns with Pirelli & C.S.P.A. in which Respondent’s period of inactive holding constituted bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <call-statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 28, 2016.
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