State Farm Mutual Automobile Insurance Company v. Michael Looby
Claim Number: FA2212002023632
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois. Respondent is Michael Looby (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmcandiharris.com>, <candiharrisstatefarm.com>, <candiharristatefarm.com>, <andykellystatefarm.com>, <statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>, and <daytonstatefarm.net>, registered with Google 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 Forum electronically on December 12, 2022; Forum received payment on December 12, 2022.
On December 12, 2022, Google LLC confirmed by e-mail to Forum that the <statefarmcandiharris.com>, <candiharrisstatefarm.com>, <candiharristatefarm.com>, <andykellystatefarm.com>, <statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>, and <daytonstatefarm.net> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 December 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@statefarmcandiharris.com, postmaster@candiharrisstatefarm.com, postmaster@candiharristatefarm.com, postmaster@andykellystatefarm.com, postmaster@statefarmandykelly.com, postmaster@rheacountystatefarm.com, postmaster@daytontennesseestatefarm.com, postmaster@daytonstatefarm.net. Also on December 13, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, State Farm Mutual Automobile Insurance Company offers insurance and financial services.
Complainant asserts rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s
<statefarmcandiharris.com>, <candiharrisstatefarm.com>,
<candiharristatefarm.com>, <andykellystatefarm.com>,
<statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>,
and <daytonstatefarm.net> are confusingly similar to Complainant’s STATE FARM trademark because they include the mark in its
entirety and add the generic words or names and the generic top-level domain
names (“gTLD”) “.com” and “.net”.
Respondent does not have rights or legitimate interests in the at-issue domain names. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by any of the at-issue domain names. Respondent also does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to offer competing insurance products or services.
Respondent registered and uses the at-issue domain names in bad faith. Respondent uses the domain
names to offer competing insurance services. Respondent’s inactive use of the at-issue
domain names evidences bad faith. Respondent also failed to respond to
Complainant’s cease and desist letter. Additionally, Respondent had actual
and/or constructive knowledge of Complainant’s rights. Furthermore, Respondent engages in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the STATE FARM mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain names after Complainant acquired rights in STATE FARM.
Respondent holds the at-issue domain names passively.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the STATE FARM mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <statefarmcandiharris.com>, <candiharrisstatefarm.com>, <candiharristatefarm.com>, <andykellystatefarm.com>, <statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>, and <daytonstatefarm.net> domain names each contain Complainant’s STATE FARM trademark, less its domain name impermissible space, accompanied by generic geographic terms or names, and with each domain name followed by the “.com” or “.net” top-level domain name. The differences between each at-issue domain name and Complainant’s STATE FARM trademark are insufficient to distinguish any of the at-issue domain names from STATE FARM for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <statefarmcandiharris.com>, <candiharrisstatefarm.com>, <candiharristatefarm.com>, <andykellystatefarm.com>, <statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>, and <daytonstatefarm.net> domain names are each confusingly similar to Complainant’s STATE FARM trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.)
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, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each 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 any at‑issue domain name.
The WHOIS information for the at-issue domain names ultimately identifies their registrant as “Michael Looby” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain names are all inactive and do not address any internet content. Instead, browsing to each of the at-issue domain names returns an error message. Likewise, there is nothing in the record indicating that the domain names are used for email or for any other substantive function. Respondent’s passive holding of the at-issue domain names is not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent holds each at-issue domain name passively. Respondent’s passive holding of the confusingly similar at-issue domain names indicates Respondent’s bad faith registration and use of such domain names under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Next, Respondent’s passive use of the domain names may be characterized as a deliberate effort by Respondent to misdirect internet users seeking Complainant to inactive webpages. Such use disrupts Complainant’s business and is indicative of bad faith under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
Moreover, Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when it registered <statefarmcandiharris.com>, <candiharrisstatefarm.com>, <candiharristatefarm.com>, <andykellystatefarm.com>, <statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>, and <daytonstatefarm.net> as domain names. Respondent’s actual knowledge is evident given the notoriety of Complainant and its trademark, as well as given Respondent’s inclusion of the real names of two of Complainant’s agents in the domain names. Respondent’s registration of the at-issue confusingly similar domain names with knowledge of Complainant’s trademark rights in STATE FARM further shows Respondent’s bad faith registration and use 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
While Complainant asserts that Respondent is using the at-issue domain names to offer life insurance products in direct competition with Complainant thereby further indicating Respondent’s bad faith registration and use of the domain names, Complainant does not evidence or explain how Respondent is using the at-issue domain names to do so given Complainant’s claim that the domains fail to address any content.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcandiharris.com>, <candiharrisstatefarm.com>, <candiharristatefarm.com>, <andykellystatefarm.com>, <statefarmandykelly.com>, <rheacountystatefarm.com>, <daytontennesseestatefarm.com>, and <daytonstatefarm.net> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 4, 2023
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