State Farm Mutual Automobile Insurance Company v. dwight jones / statefarmagent
Claim Number: FA1603001665206
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, United States. Respondent is dwight jones / statefarmagent (“Respondent”), Michigan, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dwjones-statefarm.com>, registered with Register.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2016; the Forum received payment on March 11, 2016.
On April 11, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <dwjones-statefarm.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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@dwjones-statefarm.com. Also on April 11, 2016, 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 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the STATE FARM mark in connection with its business in both the insurance and the financial services industry. Complainant has registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996), which establishes rights in the mark. Respondent’s <dwjones-statefarm.com> disputed domain name is confusingly similar to the STATE FARM mark as it wholly incorporates the STATE FARM mark.
Respondent has no rights or legitimate interests in the <dwjones-statefarm.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant did not give Respondent permission to use the STATE FARM mark. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <dwjones-statefarm.com> domain name. Rather, the domain name previously resolved to a web page with click-through links to various insurance companies and products, some of which were in direct competition with Complainant. The domain name now resolves to a page which states “This site has exceeded the allotted bandwidth.”
Respondent is using the <dwjones-statefarm.com> domain name in bad faith. Respondent’s former use of the domain to display links to products and services that were in direct competition with Complainant’s business competed with and disrupted Complainant’s business. Respondent’s former use of the domain attempted to attract Internet users to its domain for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent’s current use of the domain name to resolve to an inactive webpage constitutes bad faith. Respondent did not respond with legitimate information to any cease and desist letter that was sent to it by Complainant. Because of the fame, notoriety, and multiple trademark registrations of the STATE FARM mark, Respondent had at least constructive knowledge of the STATE FARM mark and Complainant’s rights therein at the time the domain was registered.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <dwjones-statefarm.com> domain name.
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 (Nat. Arb. 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.”).
Complainant uses the STATE FARM mark in connection with its business in both the insurance and the financial services industry. Complainant purports it has registered the STATE FARM mark with the USPTO (e.g., Reg. No 1,979,585, registered June 11, 1996) and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the STATE FARM mark. Panels have held that registration with the USPTO is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the STATE FARM mark.
The disputed domain name wholly incorporates Complainant’s mark, and merely eliminates the spacing between the words of Complainant’s mark, and adds “DWJones,” a hyphen, and the gTLD “.com.” Panels have found such alterations to a mark to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <dwjones-statefarm.com> domain name is confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 the <dwjones-statefarm.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, Respondent is not associated with State Farm, and Respondent was not given authorization to register the domain name or use the STATE FARM mark. The WHOIS information regarding the disputed domain name, lists “dwight jones/statefarmagent” as registrant of record. Respondent has failed to submit a response in this proceeding to refute Complainant’s allegations. While Respondent seems to be commonly known by the terms of the disputed domain name, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <dwjones-statefarm.com> domain name. Complainant contends that the domain name formerly resolved to a web page with click-through links to various insurance companies and products, some of which were in direct competition with Complainant, such as, “Farmers Health Insurance,” “Compare Care Insurance Quotes,” and “Auto Insurance Plans.” Complainant contends that the domain name now resolves to a page which states “This site has exceeded the allotted bandwidth.” Panels have found neither competitive links nor inactive use by a respondent to constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent’s use of the <dwjones-statefarm.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent’s use of the <dwjones-statefarm.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the initial inclusion of competing hyperlinks. Panels have agreed that where a respondent has attempted to divert Internet users to competitors of a complainant via hyperlinks that are in competition with a complainant’s legitimate business, the respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and used the <dwjones-statefarm.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant argues that the domain name initially resolved to an active website displaying competing click-through links to various insurance companies and products. The Panel agrees with Complainant and holds that Respondent attempted to create Internet user confusion for financial gain by displaying the aforementioned hyperlinks and using the STATE FARM mark in the domain name, and finds this use of the domain constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant further contends that the current inactive use of the domain name is further evidence of bad faith. Past panels have held that a respondent’s inactive use of a domain name constitutes bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Therefore, the Panel agrees that Respondent’s use of the <dwjones-statefarm.com> domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that it sent a cease and desist letter for notification of Respondent’s unauthorized use, and Respondent failed to respond with legitimate information and comply with the cease and desist request. Panels have found that the failure of a respondent to respond to a cease and desist letter is evidence of bad faith under Policy ¶ 4(a)(iii). See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). Therefore, the Panel finds Respondent’s failure to respond to the cease and desist letters is further evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had at least constructive knowledge of Complainant's rights in the STATE FARM mark. Complainant argues that its long-term use of the trademark and the domain name “statefarm.com” indicates that Respondent had at least constructive knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <dwjones-statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 10, 2016
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