State Farm Mutual Automobile Insurance Company v. David Hibler
Claim Number: FA1611001703981
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is David Hibler (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, and <dearstatefarm.org>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2016; the Forum received payment on November 21, 2016.
On November 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, and <dearstatefarm.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 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@dearstatefarm.com, postmaster@dearstatefarm.net, postmaster@dearstatefarm.info, and postmaster@dearstatefarm.org. 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 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the STATE FARM mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). Respondent’s <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names are all confusingly similar to Complainant’s mark. Respondent has merely added the generic term “dear” to the entire STATE FARM mark (less the space), and that the four generic top-level domains (“gTLDs”) used by Respondent—“.com,” “.net,” “.info,” and “.org”—do nothing to differentiate the domain names from the mark.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or formed any sort of contract with Respondent to use its STATE FARM mark, and Respondent is not commonly known by “Dear State Farm”. Respondent has failed to make a bona fide offering of goods and services or a legitimate noncommercial or fair use, because Respondent has not made any demonstrable preparations to use the domain names aside from the “Website Coming Soon,” listed on their resolving pages.
Respondent has registered and is using the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names in bad faith. Respondent could not possibly use the disputed domain names for a purpose that does not infringe on Complainant’s STATE FARM mark, and Respondent is attempting to create confusion of the domain names with Complainant. Complainant’s STATE FARM mark has so much recognition that Respondent surely had actual notice of the mark when it registered the disputed domain names, and advertising that a website is coming soon is either commercial gain in bad faith or failure to make an active use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is State Farm Mutual Automobile Insurance Company (State Farm) of Bloomington, IL, USA. Complainant is the owner of domestic and international registrations for the mark STATE FARM, and related variations, which it has used continuously since at least as early as 1930, in connection with its provision of goods and services in the insurance industry.
Respondent is David Hibler of Omaha, NE, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names on or about June 14, 2015,
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 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.”).
Complainant contends that it has rights in the STATE FARM mark based on its registration with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996). Prior panels have found that such a registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has demonstrated rights in the STATE FARM mark.
Complainant additionally contends that Respondent’s domain names, <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org>, are all confusingly similar to its STATE FARM mark under Policy ¶ 4(a)(i). Complainant argues that Respondent has merely added the generic term “dear” to the entire STATE FARM mark (less the space), and that the four gTLDs used by Respondent do nothing to differentiate the domain name from the mark. Past panels have agreed that adding a generic term and a gTLD to a complainant’s mark can still make a disputed domain name and a complainant’s mark confusingly similar. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). The Panel here finds that the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names are all confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its STATE FARM mark in any fashion, and that Respondent is not commonly known by Dear State Farm or any of the disputed domain names. The Panel notes that the WHOIS information is identical for all of the disputed domain names, and lists “David Hibler” as the registrant. Previous panels have held that a respondent is not commonly known by a domain name where the WHOIS information is unsupportive and there is a lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel here finds that Respondent is not commonly known by the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names.
Complainant alleges that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is not making active use of any of the domain names and that Respondent is using the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names to divert Internet users looking for Complainant. The Panel notes screen shots of the resolving websites of the disputed domain names submitted by Complainant. Past panels have held that a general intent to divert Internet users or the failure to make demonstrable preparations to use a domain name can show that a Respondent lacks rights or legitimate interests in a domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel here finds that Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
While Complainant does not make any valid 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 failure to make an active use of the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, <dearstatefarm.org> domain names is evidence of bad faith under Policy ¶ 4(a)(iii). Complainant asserts that Respondent could not possibly use the disputed domain names for a purpose that does not infringe on its famous STATE FARM mark. The Panel again notes the asserted failure to make an active use by Respondent. Prior panels have held that merely holding an infringing domain name without using it can constitute bad faith, and that the motivation for bad faith in this context is greater with famous marks. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel here finds that Respondent’s failure to make an active use of any of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <dearstatefarm.com>, <dearstatefarm.net>, <dearstatefarm.info>, and <dearstatefarm.org> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 28, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page