State Farm Mutual Automobile Insurance Company v. Paul Yoshimoto
Claim Number: FA1704001727869
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Paul Yoshimoto (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fromstatefarm.net>, registered with 1&1 Internet SE.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2017; the Forum received payment on April 19, 2017.
On April 21, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <fromstatefarm.net> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 April 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@fromstatefarm.net. Also on April 24, 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.
Respondent did not submit a formal response. He did however send an e-mail to the Forum, see below. Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a nationally known insurance and financial services company. It has been doing business under the name “State Farm” since 1930. In 1999 it opened a Federally Chartered Bank known as State Farm Bank. Complainant engages in business in both the insurance and the financial services industry. It also has established a nationally recognized presence on televised and other media, including the Internet. Complainant has rights to the STATE FARM mark based upon registration in the United States in 1996.
According to Complainant, the disputed domain name is confusingly similar to its STATE FARM mark because it incorporates the mark in its entirety and merely inserts the generic term “from” and the generic top-level domain (“gTLD”) “.net.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the STATE FARM mark in any respect. Respondent registered the disputed domain name to create the impression of association with State Farm in order to trade off the good will associated with the STATE FARM mark. Such a use does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii).
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. The disputed domain name resolves to an inactive, parked webpage, which indicates bad faith under Policy ¶ 4(b)(iv). Additionally, Respondent registered the disputed domain name in order to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, presumably for future commercial gain of sorts. Further, Respondent failed to respond to the three cease and desist letters Complainant sent to Respondent in order to resolve the matter amicably. Finally, Respondent must have had actual or constructive knowledge of Complainant’s STATE FARM mark because of the longstanding fame associated with the mark.
Complainant states that it sent three cease-and-desist letters to Respondent via e-mail, but received no response.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. In an e-mail, he stated:
I'm sure you hear this all the time, but I never received these cease and desist letters. I was working with State Farm Agent Ron Martinez to participate in State Farm's Aspirant program. I saw that other agents had vanity e-mail address, so I registered one in anticipation of one day opening my own agency. That’s why it links to an under construction page and not any other page trying to sell the domain or direct the traffic to other sites.
I apologize for the issues I have caused. And upon further directions I will comply with what needs to be done.
Attached is a copy of my insurance license that can be accessed through the State of California's Department of Insurance showing I work in a State Farm office.
The attachment to Respondent’s e-mail appears to be a license to sell Complainant’s insurance products.
Complainant owns the mark STATE FARM and uses it to market insurance products. The mark is well known.
Complainant’s rights in its mark date back to 1996.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used.
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 disputed domain name is confusingly similar to the STATE FARM mark: it contains the mark in its entirety and inserts the generic term “from” and the gTLD “.net.” 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 generic term does not distinguish a domain name from a complainant’s mark in an analysis for confusing similarity. See 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.). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the STATE FARM mark for any purpose. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not 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 “Paul Yoshimoto.” Further, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports 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 has not been commonly known by the disputed domain name.
Respondent has not yet made any use of or made any demonstrable preparations to use the disputed domain name. The disputed domain name currently resolves to an inactive page indicating that the site is “UNDER CONSTRUCTION”. Such lack of use of a confusingly similar domain name does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or 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).”). The Panel therefore finds that Respondent’s failure to make an active use of the disputed domain name does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent states that he registered the disputed domain name in anticipation of one day opening his own agency to sell Complainant’s products. But, as a State Farm Aspirant, he should have known that he could not use Complainant’s well known trademark in a domain name without authorization, and that authorization had not been granted.
The disputed domain name is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no formal response to the Complaint and the domain name was registered with a privacy service. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fromstatefarm.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 23, 2017
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