State Farm Mutual AutomobileInsurance Company v. Robert Goldman / A4M
Claim Number: FA2207002003300
Complainantis State Farm Mutual Automobile Insurance Company(“Complainant”),represented byNathan Vermillion ofState Farm Mutual AutomobileInsurance Company, Illinois, USA. Respondent is Robert Goldman / A4M(“Respondent”),represented byWesley J. PaulofPaul Law Group, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAINNAME
Thedomain name at issue is <meta-statefarm.com>, registered withGoDaddy.com,LLC.
Theundersigned certifies that he has acted independently and impartially and tothe best of his knowledge has no known conflict in serving as Panelist in thisproceeding.
JeffreyJ. Neuman as Panelist.
Complainantsubmitted a Complaint to theForumelectronically on July 7, 2022; theForumreceived payment on July 7, 2022.
OnJuly 8, 2022, GoDaddy.com, LLC confirmed by e-mail to theForum that the <meta-statefarm.com>domain name is registered with GoDaddy.com, LLC and that Respondent is thecurrent registrant of the name. GoDaddy.com, LLC has verified that Respondentis bound by the GoDaddy.com, LLC registration agreement and has thereby agreedto resolve domain disputes brought by third parties in accordance with ICANN’sUniform Domain Name Dispute Resolution Policy (the “Policy”).
OnJuly 13, 2022, theForum servedthe Complaint and all Annexes, including a Written Notice of the Complaint,setting a deadline of August 22, 2022 by which Respondent could file a Responseto the Complaint, via e-mail to all entities and persons listed on Respondent’sregistration as technical, administrative, and billing contacts, and to postmaster@meta-statefarm.com. Also on July 13, 2022, the Written Notice of the Complaint, notifyingRespondent of the e-mail addresses served and the deadline for a Response, wastransmitted to Respondent via post and fax, to all entities and persons listedon Respondent’s registration as technical, administrative and billing contacts.
Atimely Response was received and determined to be complete on August 22, 2022.
OnAugust 25, 2022, an Additional Submission was submitted by the Complainantunder Supplemental Rule 7. Respondent replied to Complainant’s AdditionalSubmission on September 6, 2022.
OnAugust 25, 2022, pursuant to Complainant's request to have the dispute decidedby a single-member Panel, theForumappointed Jeffrey J. Neuman as Panelist. Due to the receipt of additionaldocumentation, the Panel issued a Decision Extension Order extending thetimeframe for the Panel to issue its decision.
Havingreviewed the communications records, the Administrative Panel (the "Panel")finds that theForum hasdischarged its responsibility under Paragraph 2(a) of the Rules for UniformDomain Name Dispute Resolution Policy (the "Rules") "to employreasonably available means calculated to achieve actual notice toRespondent" through submission of Electronic and Written Notices, asdefined in Rule 1 and Rule 2.
Complainantrequests that the domain name betransferred from Respondent toComplainant.
Under theForum’s Supplemental Rules, it is withinthe discretion of the Panel to accept or consider additional unsolicitedsubmission(s). See Supplemental Rule 7.
Panels are generally reluctantto accept additional unsolicited submissions especially when those submissionscontain arguments that could have been foreseen and should have been includedin the original Complaint. However, Panels can accept additional submissionswith respect to new allegations or evidence presented by the Respondent whichmay not have been able to have been foreseen.
Inthis case, the Panel views will accept both Complainant’s and Respondent’sadditional submissions. Given the lack of content on the Disputed Domain Name,the Panel does not believe that it could have foreseen the arguments being madeby Respondent regarding its intended use of the Disputed Domain Name. Therefore, it was fair to allow Complainant to address that aspect of thecase. Having given the Complainant an opportunity to respond to the argumentsof the Respondent, in the spirit of fairness it is also accepting Respondent’sreply to Complainant’s additional submission.
A. Complainant
Complainant,State Farm Mutual Automobile Insurance Company, is a leading provider ofinsurance services. Complainant has rights in the STATE FARM mark through itsregistration of the mark with the United States Patent and Trademark Office(“USPTO”) (e.g.,Reg. No. 5,271,354 registered August 22, 2017). SeeCompl.Ex. 1. Respondent’s<meta-statefarm.com>domain name is virtually identical and confusingly similar to Complainant’smark because it incorporates the STATE FARM mark in its entirety and adds ahyphen, the term “meta”, and the “.com” generic top-level domain (“gTLD”).
Respondenthas no legitimate interests in the<meta-statefarm.com>domain name. Respondent is not commonly known by the disputed domain name andComplainant has not authorized or licensed Respondent any rights in the STATEFARM mark. Additionally, Respondent does not use the disputed domain name foranybona fide offering of goods or services or legitimate noncommercial orfair use. Instead, the disputed domain name resolves a page with third-partycompeting pay-per-click links.
Respondentregistered and uses the<meta-statefarm.com>domain name in bad faith. Respondent registered the disputed domain name inorder to disrupt business and divert customers for commercial gain, redirectingusers to competing hyperlinks. Respondent failed to respond or comply withcease-and-desist letters.
B.Respondent
Respondent,Robert Goldman, is a medical professional and advocate of longevity, wellnessand fitness industries. In addition to setting Guinness-certified worldstrength records, he founded the largest certification organization of fitnesstrainers in the world. He is also the co-founder of the American Academy ofAnti-Aging Medicine (“A4M”) which is the second largest medical organization inthe world (only behind the American Medical Association).
Respondenthas entered partnerships to develop with other medical professionals, atelehealth programming designed to assist patients with various mental healthtreatments. An important component of these initiatives is the use of virtualreality which has been dubbed by many as the “metaverse.” Respondent intendsto use this technology to transform mental health care by “using real life constructsto more accurately mimic scenarios patients face in the real world.” Compl. atp. 5. By using real-world names, treatment of the patient is significantlyheightened. “Thus, the use of actual names of companies and/or products duringcourse of treatment reinforces good treatment practice and creates a treatmentmodality that is more consistent with a typical mental patient’s perception ofthe real world.” Comp. at p. 5-6.
Respondentregistered the<meta-statefarm.com>domainon April 23, 2022.SeeCompl. Ex. 2. The Disputed Domain Name is not confusingly similar toComplainant’s mark and should be construed as “Meta-State Farm”, with “meta”acting as a term descriptive of Respondent’s business using virtual reality. “Meta”is not a generic term, but rather one that “has a specialized and distinctivemeaning on modern technological nomenclature.” Response at p. 7.
Ithas rights and legitimate interests in the Disputed Domain Name becauseRespondent has made more than demonstrable preparations to use it in connectionwith abone fide offering of goods or services. Respondent has alsountaken other preparations for its intended venture by entering into agreementswith medical providers, banking, and advisor agreements. He has already spentmore than “$100,000 in furtherance of these objectives” and intends to spend“at least $10 million in order to develop the initial platformed designed toprovide adjunctive and primary treatments for certain mental health disorders.” Response at p. 8.
Thisis not a cybersquatting case. If Complainant is alleging that the domain nameis infringing the rights of the Complainant or that it is diluting the Complainant’smark, the appropriate venue for that dispute is in federal court and not theUDRP. He did not register or use the domain name in bad faith. He has notattempted to sell the domain name to the Complainant or to anyone else. Respondenthas not registered the domain name for the purpose of preventing Complainantfrom registering a domain name and that he does not compete with theComplainant.
Respondentconcedes that the domain name is at a GoDaddy parking page that does containlinks to insurance-related sites, but he receives no financial benefit from theparking page. When he registered the domain name, GoDaddy’s registrationprocess gave him a choice of whether to point his domain name to existingcontent or if it didn’t have such content, “[GoDaddy] will display a parkedpage on your domain to let visitors know the domain is taken.” Respons. at p.11. Considering it has only been four months since the registration of thename, Respondent and its partners are still “Laying the groundwork for theirventure and intended website.”Id.
C.Additional Submissions
1. Complainant
Complainant contends thatbackground information provided by the Respondent is irrelevant to this case. Inaddition, Complainant cites a previously decided case involving the sameparties dated July 7, 2022, involving a similar domain name,<metaverse-statefarm.com>, whereby the Panel found that Complainant had provenall three elements required under the UDRP and ordered that domain name to betransferred to the Complainant.
Complainant also asserts thatthe Respondent has not presented any plausible explanation for their use of thefull mark “STATE FARM.” More specifically, Respondent offers no explanationfor the use of the term “FARM”. Respondent only uses the full mark to benefitfrom State Farm’s goodwill. Complainant distinguishes this case from twoprevious cases where it was unable to succeed in a UDRP action: State Farmv. Kephart, FA2003001887692 (ForumApr. 17, 2020);State Farm v. Christensen, FA2005001840727 (Forum May 22, 2019). In those cases, thepanels did not find that the domain names <thestatefarmbowl.com> and<bigstatefarmagent.com> were confusing similar to Complainant’s STATEFARM mark because they could easily be parsed as “the state” “farm bowl” and“big state” “farm agent” respectively. However, these prior decisions areeasily distinguishable from this case because they involved domain names that didnot include any punctuation and, as a result, could be parsed differently sonot to include Complainant’s mark. The Disputed Domain Name, however, includesa dash. The inclusion of a dash in the Disputed Domain Name clearly parses thedomain into two parts “Meta-” and “State Farm” bringing to mind Complainant’s famousmark STATE FARM inthe metaverse context.
Further Complainant argues thatbecause its mark is famous, any use of the mark in a domain name in the “healthcare field” would create a likelihood of confusion with Complainant’s mark. Thefact that Respondent has not offered the domain name for sale to theComplainant or anyone else is not enough to show a lack of bad faith.
2. Respondent
Respondent argues thatComplainant mischaracterized Respondent’s arguments and claims that its use ofthe mark in the domain name is nominative fair use.
It states that the intended useof the mark is only to “create accurate real-world representations of treatmentsimulations in a virtual reality format. Within the context of such simulation,the use of the marks serves only to identify Complainant’s likeness for thepurpose of depicting visual cues as they would ordinarily appear in real life.“The URLs obtained by the Respondents directly correspond with various mentalhealth treatment simulations that will be offered to patients.”
Respondent claims that theComplainant has not demonstrated how Respondent’s registration of the DisputedDomain Name is intended to divert Internet users for commercial gain or for thepurposes of preventing Complainant from registering the domain name. Respondenthas no history of a pattern of this type of conduct as required under thePolicy.
1. Complainant is a well-knowncompany in the United States that has been doing business under the name “StateFarm” since 1930 in connection with underwriting auto, homeowners, life andfire insurance. It has numerous trademark registrations in the United Statesincluding Registration No. 5,271,354 dated August 22, 2017 with a first usedate in 1956.
2. The Disputed Domain Name <meta-statefarm.com>is identical or confusingly similar to the Mark under the Policy.
3. Complainant has not licensed orotherwise authorized Respondent to use its Mark, nor is Respondent commonlyknown by the Mark.
4. Respondent makes severalarguments as to why it believes it is using the domain name in connection withabonafide offering of services under the Policy. However, regardlessof the preparations it has alleged to have made, even assumingarguendothat it has, Respondent fails to tie those services to the domain name itselfand therefore does not establish the requiredbona fide offering ofservices to qualify as having a right or legitimate interest in the DisputedDomain Name under the Policy.
5. Complainant has established thatthe Disputed Domain Name has been registered and used in bad faith under thePolicy Para. 4(b)(iv) by registering and using Complainant’s mark in an attemptto take advantage of the goodwill and reputation of Complainant’s marks in the proposedoffering of its own services.
Paragraph15(a) of the Rules instructs this Panel to "decide a complaint on thebasis of the statements and documents submitted in accordance with the Policy,these Rules and any rules and principles of law that it deems applicable."
Paragraph4(a) of the Policy requires that Complainant must prove each of the followingthree elements to obtain an order that a domain name should be cancelled ortransferred:
(1) the domain name registered byRespondent is identical or confusingly similar to a trademark or service markin which Complainant has rights; and
(2) Respondent has no rights orlegitimate interests in respect of the domain name; and
(3) the domain name has beenregistered and is being used in bad faith.
Complainant asserts rights inthe STATE FARM mark based upon the registration of the mark with the USPTO(e.g.,Reg. No. 5,271,354registered August 22, 2017). SeeCompl. Ex. 1.. Registration of a markwith the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i).SeeDIRECTV, LLC v. The Pearline Group, FA 1818749(Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTOregistration for DIRECTV demonstrate its rights in such mark for the purposesof Policy ¶ 4(a)(i).”).Since Complainant provides evidence ofregistration of the STATE FARM mark with the USPTO, the Panel may find that theComplainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s<meta-statefarm.com> domain name is identical orconfusingly similar to Complainant’sSTATEFARM mark. The addition of a gTLD and a generic term fails to sufficientlydistinguish a Disputed Domain Name from a mark per Policy¶ 4(a)(i).See Ant Small andMicro Financial Services Group Co., Ltd. v. Ant Fin,FA 1759326(Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com>Domain Nameis confusingly similar to Complainant’s ANT FINANCIALmark. It incorporates the mark entirely. It adds a hyphen, the descriptiveterms “investor relations,” and the “.com” gTLD, but these additions areinsufficient to distinguish the Domain name from complainant’s mark for thepurposes of Policy ¶ 4(a)(i).”).
Here, the disputed domain containstheSTATE FARM markin its entirety while adding in a hyphen, the term “meta”, and the “.com” gTLD.Respondent argues that the Disputed Domain Name is not confusingly similar toComplainant’s mark because it is intended to be parsed as “Meta-State” and“Farm.” Respondent also argues that Complainant has not provided sufficientinformation for why the word “meta” is a generic term. The Panel disagreeswith Respondent.
Other Panels havealready had the opportunity to address whether a trademark preceded by the term“meta”, even with a hyphen in between the word “meta”, and the Complainant’smark is confusingly similar to the Complainant’s mark. See Advance MagazinePublishers Inc. v. Privacy service provided by Withheld for Privacy ehf /Herman Leman, Contact Privacy Inc. Customer 7151571251 / House of Dreams ShopLLC, Alexandr Shishkin, Whois Privacy Protection Foundation / Yanis B., WelcomeFormation, Vogue Meta, Mrs Bilkish / Air Ticket Bangladesh, Souleymen Bardai,D2022-2046 (WIPO August 15, 2022)(“the addition of such terms as “meta”,“themeta”, or “nft” in the Domain Names does not prevent a finding ofconfusing similarity between the Domain Names and the Complainants’trademark.”); See alsoGuess? IP Holder L.P. and Guess?, Inc. v. leiheng,FA1811001815028 (Forum Dec. 4, 2018)(finding that <meta-guess.com>is confusingly similar to GUESS), and Calvin Klein Inc. and Calvin KleinTrademark Trust v. Won Sop Lee,D2022-0312 (WIPO March 30, 2022) (findingthat <meta-calvinklein.com> was confusingly similar to CALVIN KLEIN).
In addition, thiscase is notably different than the cases cited by Respondent in which Panelshave found that domain names containing the mark “STATE FARM” were notconfusingly similar to the Complainant’s mark. Those cases specifically found that<thestatefarmbowl.com> and <bigstatefarmagent.com> were notconfusingly similar to the Complainant’s marks because they could each beparsed differently as “the state” “farm bowl” and “big state” “farm agent”. SeeState Farmv. Kephart, FA2003001887692 (Forum Apr. 17,2020);State Farm v. Christensen, FA 2005001840727 (Forum May 22, 2019). As correctlypointed out by the Complainant those two prior decisions are distinguishablefrom this case because they involved domain names which did not include anypunctuation and, as a result, could be parsed differently so not to includeComplainant’s mark. The Disputed Domain Name here, however, included a hyphenin between the terms “meta” and “State Farm.” The inclusion of this form ofpunctuation only allows the domain name to be parsed into either “Meta-State”and “Farm”, or “Meta-“ and “State Farm.”
In attempting to explain why itchose to use the Disputed Domain Name, the Respondent presents twocontradictory arguments, neither of which the Panel believes successfullysupports its case as to why the Disputed Domain name should not be viewed asconfusingly similar to the Complainant’s STATE FARM mark. Respondent initiallyclaims that the Disputed Domain Name should actually be parsed as “Meta-State”and “Farm.” Respondent sets forth that parsing the name in this mannerreflects the name’s intended use -- namely using virtual reality and themetaverse (“Meta”) to assist with improving the mental state (“State”) of itspatients. See Response at p. 5. But if that were the case, the Panelis left to question why the term “Farm” was needed in the domain name. In fact,the Respondent offers no plausible explanation for the use of the term “farm.” Moreover, just two paragraphs later the Respondent discusses the benefits ofmental health treatments that use “real-world names and nomenclature.” Clearlyas conceded by Respondent in its own Response and Reply to the Complainant’sadditional submission, Respondent wanted to use the term “STATE FARM” toreflect one of the “real-world names” in its proposed virtual realitysimulations to assist in the treatment of mental health issues.
Therefore, the Panel finds thatthe only way to parse the domain name is with the Complainant’s mark in itsentirety and as such the Disputed Domain Name is confusingly similar to theComplainant’s mark per Policy ¶ 4(a)(i).
In addition to demonstrating that that the Disputed Domain Name isidentical or confusingly similar to a trademark or service mark in whichComplainant has rights, the Complainant must demonstrate that the Respondentlacks rights or legitimate interests in the Disputed Domain Name under Policy ¶4(a)(ii). While the overall burden of proof in UDRP proceedings is onthe complainant, panels have recognized that proving a respondent lacks rightsor legitimate interests in a domain name may result in the “often impossibletask of ‘proving a negative’, requiring information that is often primarilywithin the knowledge or control of the respondent.See WIPO Overview of WIPO PanelViews on Selected UDRP Questions, Third Overview (“WIPO JurisprudentialOverview 3.0”)at Section 2. Therefore, in order to satisfy itsprima facie case underthe Policy the Complainant must proffer evidence to show that (a) theRespondent is not commonly known by the Disputed Domain Name nor has it beenauthorized to use the Complaint’s mark, and (b) the Respondentis not using the Disputed Domain Name for anybonafideofferings of goods or services, nor any legitimate noncommercial orfair uses.
Complainantcontends that Respondent lacks rights or legitimate interests in the<meta-statefarm.com>domain namesince Respondent is not commonly known by the Disputed Domain Name andComplainant has not authorized or licensed to Respondent any rights in the STATEFARM mark. WHOIS information may be used todetermine whether a respondent is commonly known by the Disputed Domain NameunderPolicy ¶ 4(c)(ii).See Coppertown Drive-Thru Sys., LLC v.Snowden, FA715089(Forum July 17, 2006) (concluding thatthe respondent was not commonly known by the <coppertown.com> domain namewhere there was no evidence in the record, including the WHOIS information,suggesting that the respondent was commonly known by the Disputed Domain Name.In addition, a lack of authorization to use a complainant’s mark may alsoindicate that a respondent is not commonly known by the Disputed Domain Name.SeeDeutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815(Forum Sept. 17, 2018) (“The WHOIS lists“Mohamed elkassaby” as registrant of record. Coupled with Complainant’sunrebutted assertions as to absence of any affiliation between the parties, thePanel finds that Respondent is not commonly known by the Domain Name inaccordance with Policy ¶ 4(c)(ii).”).The WHOIS information for the DisputedDomain Name lists the registrant as “Robert Goldman/ A4M”.SeeRegistrarEmail Verification. Complainant further asserts it has not licensed orotherwise authorized Respondent to use Complainant’s STATE FARM mark. Therefore,the Panel finds Respondent is not commonly known by the Disputed Domain Nameper Policy ¶ 4(c)(ii).
Complainantalso argues that Respondent fails to use the Disputed Domain Name in connectionwith abona fide offering of goods or services or legitimatenoncommercial or fair use as the Disputed Domain Name instead resolves to apage displaying links related to the goods and services associated withComplainant and its competitors.
Respondent,however, argues that it does have a right or legitimate interest in theDisputed Domain Name because he has made demonstrable preparations to use theDisputed Domain Name in connection with its virtual reality programming toassist in the treatment of mental health issues. Respondent concedes that theDisputed Domain Name does redirect to a default parking page hosted by itsregistrar, GoDaddy. He also argues that he neither controls the content of theparking page or the links contained therein. He claims that he does not getany benefit, financial or otherwise, from the pay-per-click ads displayed byhis registrar.
Previouspanels have held that Respondent’s use of a domain to redirect users tocompeting services fails to make abona fide offering of goods orservices or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or(iii).SeeMcGuireWoods LLP v. MykhailoLoginov / Loginov Enterprises d.o.o, FA1412001594837(Forum Jan. 22, 2015) (“The Panel findsRespondent’s use of the Disputed Domain Names to feature parked hyperlinkscontaining links in competition with Complainant’s legal services is not abonafide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it isnot a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In addition, as the owner of the Disputed Domain Name, Panelshave held registrants responsible for the content, including parked content, atthe resolving webpage.SeePark ‘N Fly Service Corporation v.Kevin Lanzillo,FA 1554365 (ForumMay13, 2014) (holding that it is ultimately “the Registrant responsible for thecontent of the material appearing on the webpage associated with the domainname in [a] dispute”).
However, the Panel agrees herewith the Respondent – namely that registrants, especially those that do not buyor sell domain names for a living, should not be held responsible for parkingpages that are stood up by default by its domain name registrar, especiallywhere registrants derive no financial or other benefit from the content orlinks contained on the website other than letting others know that the domainname has been registered. The Panel notes that it is an unfortunate commonpractice of registrars to place advertising on the landing pages of itscustomers’ domain name where its customers have not published any content ofits own on the domain. Most registrants are likely unaware of this practiceand like the Respondent receive no benefit, financial or otherwise, from such alanding page. Nor are most registrants aware that they can change theirsettings at a registrar to not allow this to happen. It would be unfair tohold registrants that are unaware of this practice accountable for the actionsof its registrar.
Thatsaid, it is the view of this panel that the Respondent has not demonstratedrights or a legitimate interest to the Disputed Domain Name. Respondent arguesthat it intends to use the Disputed Domain Name in connection with abonefide offering of goods or services. It claims to have undertaken otherpreparations for its intended venture by entering into agreements with medicalproviders, banking, and advisor agreements. Although the declaration of theRespondent states the to date $100,000 has already been spent to develop theprogramming of its virtual reality application, the Respondent’s carefullycrafted declaration does not state that this money or any other partnerships hehas created is dependent on the Disputed Domain Name. Nor does it stateanywhere in the Response or its Reply to Complainant’s Additional Submission,that this program has any ties to this domain name in any way. In fact,Respondent states that “One of my intended domain names for this new venture is<meta-statefarm.com>. . .” The fact that it has raised $100,000 infunds for its venture could very well establish abona fide offering ofservices, but not necessarily in connection with this very domain name. Otherthan the Respondent’s own declaration stating that one of the intended namesfor the venture is the Disputed Domain Name, there is no other evidencepresented that connects the virtual reality venture to the domain name itselfwhich is a predicate for establishing a right or legitimate interest in thedomain name.
Asthis element is also inextricably tied to the third element, the Panel willdiscuss this further below.
Underthe third requirement of the Policy, the Complainant must establish that eachof the Disputed Domain Names have been registered and are being used in badfaith by the Respondent. “These are conjunctive requirements; both must besatisfied for a successful complaint.” Warner Bros. Entertainment Inc. v.Karl AllbergFA2002001881913 (ForumFeb. 19, 2020).
Complainantargues that Respondent registered and uses the<meta-statefarm.com>domain name in bad faith becauseRespondent has “intentionally attempted toattract, for commercial gain, internet users to Respondent’s website or otheron-line location, by creating a likelihood of confusion with Complainant’s markas to the source, sponsorship, affiliation, or endorsement of the Respondent’swebsite or location or of a product or service on the site or location.” Compl.at p.5.
Complainant also points to a previous UDRP involvingthese same parties over the registration and use of the domain name <metaverse-statefarm.com>where the Panel there found that the Complainant had found in favor of theComplainant and ordered the transfer of the domain name. Further, theComplainant argues that its mark is famous and that it is “simply inconceivableto imagine any use of the Disputed Domain Name by Respondents without creatinga false impression of association with Complainant.”
Respondent, however, argues that it was unaware of theprevious case filed against it and that even if it did not have a right orlegitimate interest in the domain name, its intended use of the domain name isa “textbook example of nominative fair use.” Respondent’s SupplementalResponse at p. 2. It states that the intended use of the marks is only tocreate accurate real-world representations of treatment simulations in avirtual reality format. “Within the context of such simulation, the use of themarks serves only to identify Complainant’s likeness for the purpose ofdepicting visual cues as they would ordinarily appear in real life.” Id. Finally, it argues that unlike other cybersquatting cases, the domain name isnot for sale to the Complainant or any other third party, nor is Respondentintending to provide competing services on the website for the Disputed DomainName.
The Panel believes that both sides have made some goodarguments, but at the end of the day, on balance, the Panel believes that basedon a balance of the probabilities, Complainant has successfully established thethird required element – namely, that the domain name has been registered andis being used in bad faith.
The Panel notes that indeed there was a previous caseinvolving these same two parties over a very similar domain name, <metaverse-statefarm.com>.See State Farm Mutual Automobile Insurance Company v. Robert Goldman / A4M,FA2206002000247 (Forum July 7, 2022). In that case the Respondent failed toRespond and absent such a response the Panel understandably found in favor ofthe Complainant and ordered the transfer of the domain name. However, thisPanel is not obliged to use that previous case as precedent for this one. Whateverthe reason for the lack of response by the Respondent in that case, each caseis adjudicated on its own merits under its unique facts and circumstances. Ifthe Respondent had in fact responded in that case, then perhaps the previouscase could be instructive to this case, but given the lack of response, thisPanel is presented with a very different case to consider.
Turning to the substance, Complainant’s mark STATE FARMhas been found in a number of UDRP actions to be a famous or well-known mark inthe United States. See State Farm Mutual Automobile Insurance Company v.Dusty Jones, FA 2206002002147 (Forum July 21, 2022),State Farm Mutual Insurance Companyv. Lu Lan,FA 1001001303630 (Forum Mar. 3, 2010). The Panel agrees that Complainant’smarks are well-known, and it would be inconceivable to imagine that Respondentwas unaware of Complainant’s mark when registered the domain name. In fact, Respondentacknowledges that he had actual knowledge of Complainant’s marks at the time heregistered the Disputed Domain Name.
In fact, Respondent essentially concedes that itintended to register a domain name that resembled the Complainant’s markbecause the very nature of the service. His service is intended to present mentalhealth patients with “accurate real-world representations of treatmentsimulations in a virtual reality format.” Thus he admits that he intended touse the goodwill of the Complainant’s marks to create real-life simulations ina virtual reality world. Under the Policy Para. 4(b)(iv) states that evidenceof bad faith may include, “using the domain name, . . . to attract, for commercial gain,Internet users to your web site or other on-line location, by creating alikelihood of confusion with the complainant's mark as to the source,sponsorship, affiliation, or endorsement of your web site or location or of a productor service on your web site or location.”
In Respondent’s additional submission, Respondent makes anargument that even if it intended to use Complainant’s marks in a manner totake advantage of its Goodwill, he is not intending to use the site forcommercial gain. Rather, he believes that using Complainant’s mark in themanner he proposes should be considered nominative fair use. The Panel,however, disagrees with Respondent and does not believe the intended use can beconsidered nominative fair use under the Policy.
The Panel takes note of a somewhat similar caseAtena Inc.v,. On behalf of help-aetna.com owner / Whois Privacy Service / Manager /Knowbe4, D2021-1565 (WIPO August 3, 2021). In that case, the Registrantregistered the domain name <help-artna.com> to use in simulated phishingattacks on behalf of its clients. The Respondent would send e-mails from thataddress to its corporate customers in a simulated phishing attack to test assesswhether its clients’ employees were susceptible to a socially-engineeredphishing attack. In other words, like here, the Respondent claimed it wasusing the domain name to simulate a real word situation as a tool to assist itsclients. However, in that case, the Respondent took many precautions to ensurethat its use of the domain name in connection with computer security trainingwould not result in commercial harm to the Complainant. For example, trainingmaterials that referenced the domain name were not available to the generalpublic. Respondent also made sure that when third parties outside of theregistrant’s services attempted to access the domain name, they were directedto an error page that contained no content. E-mails sent by those outside ofthe Respondent’s simulation would bounce back indicating that the e-mailaddress did not exist. If a user within the Respondent’s training system triedto access the domain name by clicking on the link in the test phishing e-mail,he or she would be provided with an training-related landing page letting themknow they have responded to a simulated phishing test. Considering all thosefactors, the three-member panel concluded
“. . . in thiscase, where Respondent reasonably believed that what it was doing constitutedlegitimate fair use, and where this intention was backed up by precautionarymeasures and a unique and restricted form of use, it cannot be said that theregistration of the Domain Name was in bad faith. See e.g., Human Resource CertificationInstitute v. Tridibesh Satpathy, Edusys, WIPO Case No. D2010-0291. Again, asnoted above, this case presents a close call on the question of fair use, butthat “close call” only serves to underpin that there is no obvious bad faithregistration, which Complainant has the burden of demonstrating.”
In this case, however, other than a general statement by the Respondentthat it intended to use the domain name in connection with real lifesimulations, Respondent does not explain in any detail exactly how the domainname would be used in the delivery of Respondent’s services. In simulatingphishing attacks, it is quite evident how domain names need to be used. Butthe Respondent fails to connect the domain name to its business venture in anyway to establish whether its use would be nominative fair use or not. Moreover, unlike the Aetna case, there is no discussion of any precautionarymeasures that would be taken by the Respondent to prevent any commercial harmto the Complainant. Although the Complainant argues that the inclusion ofComplainant’s mark in its treatments could have a positive impact onComplainant’s services, it is equally plausible that it could actually tarnishthe reputation of Complainant’s services and its well-known mark. This isprecisely why the doctrine of fair use, as cited by the Respondent, under USLaw requires that a Plaintiff prove that (i) the service in question must beone not readily identifiable without the use of the trademark, (ii) only somuch of the mark or marks may be used as is reasonably necessary to identifythe complainant’s product or service, and (iii) the user must do nothing thatwould, in conjunction with the mark, suggest sponsorship or endorsement by thetrademark holder. Even assumingarguendo that Respondent hasdemonstrated the first two elements of nominative fair use, it has failed toaddress the third critical element.
For all of the reasons set forth above, the Panel believes thatusing the domain name in the manner proposed by the Respondent would likelycreate a false impression of association with Complainant. In addition, use ofthe Complainant’s well-known mark in the health care field, even if theservices it provides are arguable not competing with the Complainant, would either(i) create a likelihood of confusion as to source, sponsorship,affiliation, or endorsement of the Disputed Domain Name by the Complainant, or(ii) would attract for commercial gain Internet users to its website bycreating a likelihood of confusion with Complainant’s mark as to the source,sponsorship, affiliation, or endorsement of Respondents’ website or of aproduct or service thereon. Therefore, based on the evidence submitted, thePanel finds that Respondent did register, and is using the domain name in badfaith in contravention of Policy Para. 4(b)(iv).
Havingestablished all three elements required under the ICANN Policy, the Panelconcludes that relief shall beGRANTED.
Accordingly,it is Ordered that the <meta-statefarm.com>domain name beTRANSFERREDfrom Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: September 13, 2022
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