State Farm Mutual Automobile Insurance Company v. Sherry Nickels / Insurance
Claim Number: FA1804001780857
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Sherry Nickels / Insurance (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houstonstatefarminsurance.com>, registered with Tucows Domains Inc.
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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2018; the Forum received payment on April 9, 2018.
On April 9, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <houstonstatefarminsurance.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2018 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@houstonstatefarminsurance.com. Also on April 9, 2018, 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.
A timely Response was received and determined to be complete on April 9, 2018.
On April 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a large insurance and finance company doing business under the name “State Farm” since 1930. In 1999 Complainant opened a Federally Chartered Bank known as State Farm Bank.
Complainant is the owner of multiple registrations of the STATE FARM trademarks, including United States trademark registration number 4,211,626 for State Farm (figurative) in class 36, registered on 18 September 2012; and United States trademark registration number 4,227,731 for State Farm (figurative) in class 36, registered on 16 October 2012; United States trademark registration number 2,319,867 for STATE FARM BANK in class 36, registered on 15 February 2000.
Complainant has a significant Internet presence and is using the domain name <statefarm.com> to offer its products and services, consumer information and information about its independent contractor agents.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s registered trademarks. Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the STATE FARM trademarks for any reason. Complainant argues that Respondent’s registration and use of the disputed domain name has been in bad faith. That Respondent registered the disputed domain name giving the impression that interested individuals will receive information regarding Complainant but the disputed domain name resolves to a blank web page. Complainant also argues that by using the disputed domain name, Respondent has intentionally attempted to attract, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the site or location. Complainant also argues that Respondent’s use of a trademark in direct conflict with Complainant’s interest reflects that Respondent has acted in bad faith. Finally, Complainant also argues that Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services and that as of the date of the Complaint, there was no legitimate content associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming.
The disputed domain name was registered on 02 April 2017 and resolves to an empty page.
B. Respondent
A Response was filed on behalf of a person having the same last name as Respondent. The Response filed is a short statement providing that Respondent has filed a response to State Farm in other domain cases and that Respondent has elected to have them reversed from our holding to State Farm. Respondent also provided that it “would like to be released of this domain as well.”
Preliminary Issue: Consent to Transfer
Respondent appears to consent to transfer the disputed domain name to Complainant. However, the consent provided, as part of the Response was not made by Respondent herself and appears to be an attempt to avoid a decision on the merits. The apparent consent to transfer identifies previous responses, but those were not attached nor explained. The Panel is of the opinion that Respondent wishes to avoid a decision on the merits in view of prior adverse decisions and would therefore procced to provide an opinion on the merits. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
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.
Complainant is the owner of multiple registrations of the STATE FARM trademarks, including United States trademark registration number 4,211,626 for State Farm (figurative) in class 36, registered on 18 September 2012; and United States trademark registration number 4,227,731 for State Farm (figurative) in class 36, registered on 16 October 2012 in which the words “State” and “Farm” are the dominant parts of the marks. Complainant claims rights in the STATE FARM mark are based upon its registrations with the USPTO. See Amend. Compl. Ex. 1. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel may find that Complainant has rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant asserts that the <houstonstatefarminsurance.com> domain name is confusingly similar to the STATE FARM mark as it contains the mark in its entirety, less the space and adds the descriptive term “insurance”, the geographic term “Houston” as well as the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.”)
The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
As a result, this Panel rules that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM mark in any way. WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Sherry Nickels / Insurance.” See Amend. Compl. Ex 2. Additionally, lack of evidence in the record to indicate that a respondent has 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 the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel 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 disputed domain name is evidenced by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Moreover, Complainant contends that Respondent is attempting to create the impression of association with Complainant to trade off the good will associated with Complainant. Attempting to create a false affiliation to divert Internet users seeking complainant’s website is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”). Complainant asserts that Respondent is intending to attract individuals looking for information about Complainant. Under the specific circumstances of this case, the Panel agrees with Complainant and find that Respondent has does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel therefore rules that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent has registered and uses the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that Respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and Complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s STATE FARM mark, and giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a blank web page. See Amend. Compl. Ex. 3. The Panel finds that these actions by Respondent are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent has failed to make an active use of the disputed domain name. Failure to actively use a domain name may be considered as evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because Respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” Respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots of Respondent’s inactive website. See Amend. Compl. Ex. 3. Under the particular circumstances of this case, the Panel finds that such behavior by Respondent is additional evidence of bad faith registration and uses the disputed domain name.
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts, given the global reach of the Internet, the fact that Complainant is widely known indicates Respondent must have been aware of Complainant when it registered the domain name. See Amend. Compl. Ex. 5. The Panel concurs. Respondent resides in Texas where it is inconceivable that Respondent would have no knowledge of Complainant, its trademarks and activities. Complainant evidence shows that it has been active in the United States for the past 85 odd years and is widely known. It has had Internet presence since at least 1995, some 22 years before the disputed domain name was registered by Respondent. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when it registered the disputed domain name, thereby supporting a finding of bad faith under 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 <houstonstatefarminsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: April 24, 2018
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