State Farm Mutual Automobile Insurance Company v. darrell schwalbach
Claim Number: FA1701001712595
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is darrell schwalbach (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahastatefarm.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2017; the Forum received payment on January 16, 2017.
On January 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <omahastatefarm.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 January 17, 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@omahastatefarm.com. Also on January 17, 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 January 24, 2017, the Forum received an additional submission from Respondent claiming it would delete the domain name.
On February 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
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 numerous registrations 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).
Respondent’s <omahastatefarm.com> is confusingly similar to the STATE FARM mark.
Respondent has no rights or legitimate interests in the <omahastatefarm.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM mark for Respondent’s business purposes. The disputed domain name initially resolved to a website which stated “Coming Soon,” and now redirects to <www.nebraskaallstate.com>, a direct competitor of Complainant. Neither use amounts to a bona fide offering of goods or services nor a legitimate noncommercial or fair use per the Policy.
Respondent has registered and used the disputed domain name in bad faith. Respondent’s offer to sell the disputed domain name to Complainant for a profit evinces Respondent’s bad faith. Additionally, use of the disputed domain name to redirect to a direct competitor is further evidence of Respondent’s bad faith registration and use. Finally, Respondent had at least constructive knowledge of Complainant and Complainant’s rights in the STATE FARM mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However Respondent did contact the dispute resolution provider -mail, claiming that it would contact the domain name’s registrar and delete the disputed domain name.
Complainant has trademark rights in the STATE FARM mark.
Respondent registered the at-issue domain name after Complainant acquired rights in STATE FARM.
Respondent uses the at-issue domain name to ultimately address a website bearing the name of a competitor.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its STATE FARM mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i).See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. 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).
Respondent’s <omahastatefarm.com> domain name contains Complainant’s entire STATE FARM trademark less its space, prefixed with the geographic descriptor “omaha.” A top-level domain name, here “.com,” is added to complete the domain name. However, the differences between the domain name and Complainant’s STATE FARM mark are insufficient to materially distinguish one from the other under the Policy. Therefore, the Panel finds that Respondent’s <omahastatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM trademark. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “darrell schwalbach” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <omahastatefarm.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <omahastatefarm.com> domain name ultimately addresses a website at www.nebraskaallstate.com. The website contains the name of one of Complainant’s competitors. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent offered to sell the at-issue domain name to Complainant for an excess of Respondent’s out-of-pocket costs. Indeed, Respondent initially responded to the initiation of this proceeding by offering to negotiate a price for transferring the <omahastatefarm.com> domain name to Complainant. Respondent’s offering suggests Respondent’s bad faith registration and use of the confusingly similar domain name pursuant to Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Further, Respondent’s use of <omahastatefarm.com> to redirect to a domain name bearing the name of a direct competitor of Complainant is evidence of Respondent’s bad faith registration and use of the domain name per Policy ¶4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum February 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Finally, Respondent registered the <omahastatefarm.com> domain name knowing that Complainant had trademark rights in the STATE FARM trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from <omahastatefarm.com>’s direction to a domain name containing the name of one of Complainant’s competitors. It is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <omahastatefarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (FORUM Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omahastatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 16, 2017
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