State Farm Mutual Automobile Insurance Company v. Patrick Truax
Claim Number: FA1612001708144
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Patrick Truax (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stephfromstatefarm.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stephfromstatefarm.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 December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@stephfromstatefarm.com. Also on December 19, 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 January 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known insurance and financial services company. Complainant has rights to the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) as well as various other trademark agencies throughout the world (e.g., Reg. No. 1,979,585, registered June 11, 1996).
2. Respondent’s <stephfromstatefarm.com>[1] domain name is confusingly similar, as it contains the mark in its entirety—less the space—and merely adds the generic or descriptive phrase “steph from” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by <stephfromstatefarm.com>, nor has Complainant authorized Respondent to use the STATE FARM mark for Respondent’s business purposes.
4. The domain name resolves to a web page which states “Website Coming Soon!” and has no other content. This failure to make an active use of the domain name amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use per the Policy.
5. Respondent’s registration and use of the domain name is in bad faith. Respondent’s failure to make an active use of <stephfromstatefarm.com> is itself evidence of its bad faith.
6. Finally, Respondent is presumed to have had actual or constructive knowledge of Complainant’s right in the STATE FARM mark at the time of Respondent’s registration and subsequent use of the domain name.
B. Respondent
Respondent did not submit a Response to the Complaint.
Complainant holds trademark rights for the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <stephfromstatefarm.com> domain name and that Respondent registered and uses 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 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <stephfromstatefarm.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <stephfromstatefarm.com>, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the STATE FARM mark for Respondent’s business purposes. The WHOIS information of record identifies Respondent as “Patrick Truax.” See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (FORUM July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the Respondent has been authorized to register a domain name using the Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the <stephfromstatefarm.com> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (FORUM June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the domain name is shown by its failure to use the <stephfromstatefarm.com> name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <stephfromstatefarm.com> domain name resolves to a website which states “Website Coming Soon!” and no other content. Use of a domain name under the facts of this case, to link to an under-construction page, is not evidence of use that confers rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See 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 agrees that Respondent’s use of the <stephfromstatefarm.com> domain name is evidence of its lack or rights or legitimate interests in the domain name and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further argues that Respondent’s failure to make an active use of the domain name is evidence of Respondent’s bad faith. Inactive holding, or failure to make an active use of a domain name which is identical or confusingly similar to a mark in which a complainant has rights, can be evidence of a respondent’s bad faith. 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.) As noted above, the <stephfromstatefarm.com> domain name resolves to web page that states only “Website Coming Soon!” The Panel agrees that Respondent’s failure to make an active use of the domain name is evidence of its bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the STATE FARM mark prior to registration of the domain name due to Complainant's widespread use of the mark and its trademark registrations with the USPTO. Based on the record, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the <stephfromstatefarm.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <stephfromstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2017
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