State Farm Mutual Automobile Insurance Company v. Michael Mayer
Claim Number: FA2012001923474
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Michael Mayer (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsuranceagentnearme.com>, 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.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2020; the Forum received payment on December 1, 2020.
On December 1, 2020, Google LLC confirmed by e-mail to the Forum that the <statefarminsuranceagentnearme.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. 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 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2020 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@statefarminsuranceagentnearme.com.
Also, on December 2, 2020, 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 December 18, 2020.
On December 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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
1. Complainant states in its Complaint and provides evidence in the respective annexes attached in support of the following contentions:
2. State Farm is a nationally known company in the United States and Canada that has been doing business in both the insurance and the financial services industry under the trademark “State Farm” (the “STATE FARM Mark”) since at least as early as 1930 in the United States and 1939 in Canada.
3. Complainant has established a nationally recognized presence for its services using the STATE FARM Mark on television and other media.
4. Complainant owns exclusive rights to the STATE FARM Mark through trademark registrations in the United States and Canada for insurance and financial services, including: United States Trademark Registration No. 5,271,354 for STATE FARM, registered on August 22, 2017, for insurance underwriting and administration services and claiming a first use date of January 1, 1956; United States Trademark Registration No. 2,319,867 for STATE FARM BANK, registered on February 15, 2000 for banking services and claiming a first use date of March 12, 1999; Canada Trademark Registration No. TMA 559,285 for STATE FARM, registered on March 15 2002, for range of insurance and related loss control and claim handling services and claiming a first use date of at least as early as 1939.
5. As a result of Complainant’s longstanding, prominent use nationally, Complainant’s STATE FARM Mark is well-known and exclusively associated with Complainant in the United States where Respondent is located.
6. The disputed domain name was registered on September 16, 2020 and is and has been passively held, resolving to an inactive website showing an error page with no other content.
7. The disputed domain name is identical or confusingly similar to Complainant’s State Farm Mark.
8. Respondent has no rights or legitimate interests in respect of the disputed domain name.
9. The disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent provided no contentions in direct response to Complainant’s arguments in its Complaint. The response consisted of two separate but similar emails. The first, sent to the Forum’s Case Coordinator of record December 17, 2020 in reply to their email serving the Complaint to Respondent on December 2, 2020, stated, “if State Farm wants the URL I own, then do what everybody else on this planet does and purchase the URL from the owner, thanks Michael Mayer”. The second email, sent the following day, provided, “My formal response: to have somebody buy the URL as it cost money to purchase and maintain, thanks Mike Mayer”.
After reviewing both Complainant's and Respondent's submissions, this Panel finds the following:
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has established trademark rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See Citigroup Inc. v. Philip Morrish, FA 1600832 (Forum 2015).
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 argues the disputed domain name is identical or confusingly similar to Complainant’s STATE FARM Mark as it contains the STATE FARM mark in its entirety and merely adds the descriptive terms “insurance” “agent” “near” “me” and the “.com” gTLD.
Prior UDRP panels have found that the addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
The Panel finds therefore, that the disputed domain name is confusingly similar because it incorporates Complainant’s registered STATE FARM Mark in its entirety and the addition of the descriptive terms forming the phrase “insurance agent near me” is insufficient to negate confusing similarity between the disputed domain name and the mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Panel notes that under the Policy Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name to meet the requirements of Policy ¶ 4(a)(ii), and 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); 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 contends Respondent lacks rights or legitimate interests in the disputed domain name because Respondent does not conduct any business under the STATE FARM Mark, nor has Complainant authorized Respondent to register the domain name or to use the STATE FARM Mark for Respondent’s business purposes or licensed to Respondent any rights in the STATE FARM Mark.
Prior UDRP panels have found that a respondent has no rights or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information can be relied upon to show the respondent is not commonly known by the domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018); see also, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information submitted by Complainant for the disputed domain name lists the registrant as “Michael Mayer,” and there is no evidence to suggest that Respondent was authorized to use the STATE FARM Mark. The Panel finds therefore, that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii) and use of the disputed domain name or the STATE FARM Mark has not been authorized by Complainant.
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name because, as Complainant’s evidence shows, the disputed domain name is passively held, resolving to an inactive website. Prior UDRP panels have held that non-use of a domain name is not sufficient basis to support rights or legitimate interests in the disputed domain name. See, Walmart Inc. v. Marie Nelson, Forum Claim No. FA2011001920215 (Forum Dec. 8, 2020). Similarly, prior UDRP panels have found that the non-use of a domain name is not a legitimate noncommercial or fair use. See, CrossFirst Bankshares, Inc. v. Yu-HSIEN Huang, Forum Claim No. FA1785415, June 6, 2018.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent created the disputed domain name to give the impression that interested individuals will receive information regarding Complainant, while in fact is consumers are sent to an error page with no other content. This disrupts Complainant’s business and attempts to attract Internet users to Respondent’s website for commercial gain. Use of a disputed domain name to can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel finds Respondent makes use of Complainant’s STATE FARM Mark in the disputed domain name in an attempt to disrupt Complainant’s business and attract internet users and, therefore, that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Given the nationally known and over 90 years of use of the STATE FARM Mark in the jurisdiction where Respondent resides, Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the STATE FARM Mark at the time of registering the domain name. Prior UDRP panels have held a respondent’s actual knowledge of a complainant's rights in its trademark prior to registering the disputed domain name can serve as evidence of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) Based on the record the Panel finds that Respondent had actual knowledge of Complainant’s rights in the STATE FARM Mark sufficient to have registered the disputed domain name in bad faith in violation of Policy ¶ 4(a)(iii).
Complainant has provided evidence that the disputed domain name resolves to an error page with no other content, and thus fails to resolve to an active website. Inactive holding of a disputed domain name can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Accordingly, considering all of the circumstances here, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
Complainant has met its burden 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 <statefarminsuranceagentnearme.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: January 8, 2021
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