State Farm Mutual Automobile Insurance Company v. Matthew Waldrop
Claim Number: FA1704001727844
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, Usa. Respondent is Matthew Waldrop (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmtulsa.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 April 19, 2017; the Forum received payment April 19, 2017.
On April 19, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmtulsa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@statefarmtulsa.com. Also on April 20, 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 May 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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 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). See Compl., at Attached Ex. 1. Respondent’s <statefarmtulsa.com> is confusingly similar to Complainant’s mark, because it incorporates the mark in its entirety merely inserting the geographic term “tulsa” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <statefarmtulsa.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the BLOOMBERG mark in any way. Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and 4(c)(iii), respectively.
Respondent registered and used the domain name <statefarmtulsa.com> in bad faith. The disputed domain name resolves to an inactive, parked webpage. Domain ‘parking’ and non-use as evidenced here supports findings of bad faith under Policy ¶ 4(b)(iv). Additionally, failure to make an active use or show evidence of preparations to use the disputed domain name also supports findings of bad faith registration pursuant to Policy ¶ 4(a)(iii). The fame associated with the STATE FARM mark also evidences Respondent’s actual or constructive knowledge of Complainant’s rights in the mark. Although constructive knowledge will not support bad faith findings, Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use relative to Policy ¶ 4(a)(iii).
B. Respondent’s Contentions in Response in this
Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered the <statefarmtulsa.com> domain name October 20, 2016.
Complainant established rights and legitimate interests in its well-known mark some twenty-one years before Respondent created this disputed domain name containing that protected mark.
Respondent has no such rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s well-known protected mark.
It is inconceivable that Respondent did not know that Respondent was registering a domain name containing the protected mark of another and one that was confusingly similar to that protected mark.
The Panel finds that Respondent’s registration and use and/or passive holding of the disputed domain name containing Complainant’s protected mark was 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, State Farm Mutual Automobile Insurance Company, is a nationally known insurance and financial services company. Complainant showed rights in the STATE FARM mark by its 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 is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel finds that Complainant’s registration of the STATE FARM mark with the USPTO establishes rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefarmtulsa.com> is confusingly similar to the STATE FARM mark. Complainant does not expand on this argument, but the Panel notes that the disputed domain contains the STATE FARM mark in its entirety, merely inserting the geographic term “tulsa” and a “.com” gTLD. Omission of a space and addition of a gTLD are irrelevant in a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Likewise, addition of a geographically descriptive term does not distinguish a domain name from a complainant’s mark in an analysis for confusing similarity. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Accordingly, this Panel agrees that the disputed domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that 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 <statefarmtulsa.com> because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the STATE FARM mark in a domain name or for Respondent’s business purposes. Where no response is filed, Panels look to WHOIS information to support findings of whether or not a respondent is commonly known by the disputed domain name. 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). The WHOIS information of record identifies Respondent as “Matthew Waldrop.” Additionally, no evidence in the record shows any permission to Respondent to register a domain name using Complainant’s mark and this absence of information may be used to support a finding that Respondent does not have rights or legitimate interests in a disputed 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 is not commonly known by the disputed domain name.
Complainant argues that Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Holding a domain name passively, and failing to show a demonstrable intention to make use of the disputed domain name is not a use in connection with 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). 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 contends that the disputed domain name currently resolves to an inactive page indicating that the site is “Coming Soon”. See Compl., at Attached Ex. 3. The Panel therefore agrees that Complainant met its prima facie burden under Policy ¶¶ 4(c)(i) and 4(c)(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 containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims Respondent registered and used and/or passively held the domain name <statefarmtulsa.com> in bad faith. Panels have found bad faith to exist where a disputed domain resolves to a parked web page. Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page). Complainant argues that the disputed domain name resolves to a parked webpage. See Compl., at Attached Ex. 3. The Panel finds that domain ‘parking’ as evidenced here supports findings of bad faith under Policy ¶ 4(b)(iv).
Complainant argues that a failure to make an active use or show evidence of preparations to use the disputed domain name suggests bad faith registration pursuant to Policy ¶ 4(a)(iii). Previous Panels have determined that failure to make active use of a domain name following its registration indicates that the respondent registered the disputed domain name in bad faith. See Hewlett-Packard Co. v. Martineau, FA 95359 (Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”). Here again, Complainant alleges that Respondent has made no meaningful effort to make an active use of the domain. See Compl., at Attached Ex. 3. Therefore, the Panel finds that Respondent is failing to make any demonstrable active use of the disputed domain and thus satisfies the Policy ¶ 4(a)(iii) requirement.
Complainant further asserts that its long-term use of the STATE FARM mark and the legitimate <statefarm.com> domain name means that Respondent knew or should have known of Complainant and Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds here that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel may hold that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held the disputed domain name containing Complainant’s protected mark 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 <statefarmtulsa.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 26, 2017.
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