DECISION

 

State Farm Mutual Automobile Insurance Company v. Jeffrey Payden

Claim Number: FA1701001711985

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Jeffrey Payden (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <statefarmwaukee.com> and <waukeestatefarm.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 11, 2017.

 

On January 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmwaukee.com> and <waukeestatefarm.com> 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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@statefarmwaukee.com, postmaster@waukeestatefarm.com.  Also on January 16, 2017, 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 February 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in STATE FARM and alleges that the disputed domain names are confusingly similar to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered the disputed domain names in bad faith.

 

B. Respondent

Respondent has not filed a Response.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant is a U.S. national insurance provider which since 1930 has offered its services by reference to the trademark STATE FARM;

2.    Complainant owns, inter alia, United States Trademark Reg. No. 1,979,585 registered June 11, 1996 for the word mark STATE FARM;

3.    the disputed domain names were registered on May 13, 2016;

4.    the domain names resolve to websites which state “website coming soon!”;

5.    there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark; and

6.    Respondent did not reply to pre-Complaint letters of demand from Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that proof of registration with a national authority is sufficient evidence of trademark rights.  Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for STATE FARM, the Panel is satisfied that it has trademark rights.[1]

 

Complainant makes a bald assertion that the disputed domain names are confusingly similar to its trademark but does not support that claim by further submission.  At one place Complainant states that “the domain names are confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.”  The Panel does not fully comprehend what was to be conveyed by that statement and has, in the circumstances, exercised its discretion to make its own assessment of confusing similarity.

 

For the purposes of comparison, the non-distinctive gTLD, “.com” can be disregarded.[2]  The disputed domain names take the whole of the trademark and add the word “waukee” as either a prefix or suffix to the trademark.

 

There is no submission as to how the word “waukee” should be treated.  The Panel’s enquiries show that Waukee is a name of a medium sized town in the State of Iowa, United States.  The Panel takes the view that a significant proportion of internet users would either know of the geographical place, or if they did not, would assume it to be a US place name given its linguistic similarity to other larger, better known place names in the United States.  As such, the term is non-distinctive when combined with the trademark.[3]

 

The Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark.  The additions do not distinguish the domain names from the trademark in any significant way so as to avoid confusion and the lack of punctuation is, in this case, inconsequential.[4]

 

Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to both disputed domain names. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[5]

 

The publicly available WHOIS information identifies Respondent as “Jeffrey Payden” and so there is no prima facie evidence that Respondent might be commonly known by either of the disputed domain names.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

The disputed domain names have not been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  They resolve to webpages stating “website coming soon!” but with no other content.[6]

 

Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names.  In the absence of a Response those prima facie cases are not met.  Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith. 

 

Further guidance on the requirement of registration and use in bad faith is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

The submissions do not rely on any of the scenarios of registration and use in bad faith set out in paragraphs 4(b)(i)-(iv) of the Policy but attempt to show bad faith registration and bad faith use in other ways.  The submissions are not easy to follow.  For example, Complainant submits that:

 

“While the Respondent registered the domain names StateFarmWaukee.com and WaukeeStateFarm.com, giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to web pages which state “Website Coming Soon,” and no other content. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.”

 

As stated, the disputed domain names are not in use.  There is no evidence that either name has previously been used.  Since there is essentially no use of the domain names, the Panel does not understand the reference to generating business in other fashions.  Nevertheless, the Complaint goes on to state that:

 

“Even if the Respondent did put information on its websites, its content along with the proposed domain names, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers.”

 

Although far from being clear, the Panel best understands this statement in light of the later information that:

 

“Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm.”

 

When read together, the Panel understands Complainant to mean that since Respondent is not an authorized agent or reseller of Complainant’s financial products, anything it came to put on the websites resolving from the disputed domain names would be in conflict with Complainant’s interests and would be done in bad faith.

 

Elsewhere, Complainant states:

 

“Failure to resolve the domain names to legitimate content indicates that the Respondent has no legitimate reason for having registered the names and demonstrates that it has registered and is using the names in bad faith.  See Bank of Am. Fork v. Shen, FA 699645 (FORUM June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c )(i); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (FORUM May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c )(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).”

 

The Panel assumes that the reference to “legitimate content” is a reference to content provided by, or somehow authorized by, Complainant.

 

The cited references[7] do not assist the Panel since they refer to instances where a respondent added material competitive with complainant’s interests under the trademark to the resolving site.  That is not the case here.

 

Ultimately, the Panel approaches this aspect of the Policy unaided by the Complaint and without evidence which would attract the operation of any of paragraphs 4(b)(i)-(iv) of the Policy, set out above.

 

The questions are therefore (i) were the domain names registered in bad faith, and (ii) were they used in bad faith?

 

Registration in bad faith

 

The single statement of value in this respect carried in the Complaint is that:

 

“The Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com.” The Respondent’s registration of the domain names was intended to be in bad faith.”

 

Earlier, in respect of paragraph 4(a)(i) of the Policy, the Complainant had stated that:

 

“State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930.  In 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank.  State Farm engages in business in both the insurance and the financial services industry.  State Farm also has established a nationally recognized presence on televised and other media.

…

For over 70 years State Farm has expended substantial time, effort and funds to develop the good will associated with the name “State Farm”…”.

…

State Farm developed its Internet web presence in 1995 using the domain name statefarm.com.  At its web site, State Farm offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents.  State Farm has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.” 

 

Further, under paragraph 4(a)(ii) of the Policy (albeit that the claim is not relevant to that aspect of the Policy) Complainant had stated that:

 

Because of the substantial efforts of State Farm, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning.  The domain names at issue are confusingly similar to the State Farm servicemark that it has been using since 1930 …”.

 

The Panel observes that the Complaint does not provide direct evidence of any of those claims.  Instead, Complainant relies on the many UDRP decisions which have preceded these administrative proceedings in which Complainant has prevailed.   Those earlier UDRP decisions are cited[8] after which Complainant states that “[a]s in [those] cases … the facts in evidence demonstrate that Respondent has registered and is using the names in bad faith.”  No single similar fact case is selected for the Panel’s particular attention and there is no reference to an earlier case where reputation in the trademark was acknowledged as shown.

 

However, the Panel takes note that United States Trademark Reg. No. 1,979,585 claims a first use in commerce date in 1930 and given that there has been no contest to Respondent’s claims, the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true.[9]  In the result, although it is not necessary to come to a finding about a common law reputation in the trademark, the Panel is satisfied that the trademark has been used continuously for many decades and is well known to the relevant public.

 

What then follows is that it is more likely than not that Respondent knew of Complainant’s business and trademark at the time of registration of the domain names and since Respondent has failed to show any right or interest of its own in the corresponding domain names the Panel finds registration in bad faith.

 

Use in bad faith

 

The bad faith use argument presented by Complainant is inchoate but, given the findings already made by the Panel, Respondent is faced by the obvious lack of any credible good faith reason to use the domain names, or possible good faith use of them in the absence of authorization from Complainant.  The disputed domain names combine Complainant’s trademark with a descriptor relevant to Complainant’s national business.  There being no Response and no other explanation why Respondent adopted the domain names or how they might be used, the Panel finds bad faith “use” in keeping with the reasoning first laid out in the case of Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).[10]

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarmwaukee.com> and <waukeestatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.

 

Debrett G. Lyons, Panelist

Dated:  February 24, 2017