DECISION

 

State Farm Mutual Automobile Insurance Company v. Tommy Brooks

Claim Number: FA2405002096979

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Tommy Brooks ("Respondent"), Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tommystatefarm.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 8, 2024; Forum received payment on May 8, 2024.

 

On May 8, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the domain name <tommystatefarm.com> is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 14, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2024 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, as well as to the attention of postmaster@tommystatefarm.com. Also on May 14, 2024, 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 June 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Over the period since 1930, Complainant has become and remains a prominent marketer of insurance products and financial services.

 

Complainant holds a registration for the service mark STATE FARM, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 5,271,354, registered August 22, 2017.

 

Complainant has done business online at the address <statefarm.com> since 1995.

 

Respondent is an independent contractor agent for Complainant.

 

Respondent registered the domain name <tommystatefarm.com> on February 9, 2024.

 

The domain name is confusingly similar to Complainant's STATE FARM service mark.

 

Complainant has never authorized Respondent to register the domain name or to use Complainant's STATE FARM mark for purposes other than those specifically permitted under the agency agreement between them, and the domain name is not so permitted.

 

The domain name resolves to a parked web page featuring click-through links to other web pages offering for sale various products and services, some of which are in competition with the business of Complainant.

 

Respondent has neither rights to nor legitimate interests in the domain name. 

 

Respondent has registered and now uses the domain name in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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:

 

i.                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.                      Respondent has no rights to or legitimate interests in respect of the domain name; and

iii.                      the domain name has been registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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").

 

FINDINGS

The pivotal facts alleged in the Complaint are that Complainant has never authorized Respondent to register the disputed <tommystatefarm.com> domain name or to use Complainant's STATE FARM mark for purposes other than as specifically permitted under the agency agreement between them, and the domain name is not so permitted. Importantly, the document(s) constituting that agency agreement are not attached to the Complaint.

 

We are thus left with the guidance provided by Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), which 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."

 

From our review of the exceptionally spare contentions set out in the Complaint and accompanying papers, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of "cyber-squatting," by which is meant the abusive registration and use of Internet domain names.  Rather, this is a dispute as to the proper interpretation and application of a business agreement, which should be confided to the jurisdiction of the appropriate local or national courts. See, for example, Nintendo of America Inc. v. Alex Jones, D2000-0998 (WIPO November 17, 2000):

 

It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters beyond the narrow purview of the Policy are for the courts ….

 

Further see Love v. Barnett, FA 944826 (Forum May 14, 2007):

 

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy …. [T]he present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty.  Thus, the … subject matter is outside the scope of the UDRP and [the panel] dismisses the Complaint.

 

Finally, see Schneider Electronics GmbH v. Schneider UK Ltd., D2006-1039 (WIPO October 21, 2006):

 

In situations such as the present case, where the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries.  At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise…. It is also important to bear in mind that the Policy was designed to prevent cases of cybersquatting and it cannot be used as a means to litigate broader disputes involving domain names (citations omitted).

* * * * *

The Panel is aware that this dispute may now be brought before the appropriate court, and believes that it is prudent to leave the decision on its merits to such a decision-maker, with the benefit of a full evidentiary record and the ability to construe and interpret the contractual terms which will ultimately govern this dispute.

 

DECISION 

 

For the reasons herein indicated, it is hereby Ordered that the Complaint is DISMISSED.

 

 

 

Terry F. Peppard, Panelist

Dated: June 17, 2024