A lot of traction on the “meta” and “metaverse” trends have created ample demonstrated interest from global companies. Some are famously pushing forward with such entrance into the Web3 space, others are still holding off.
Lack of action does not mean, however, that anyone can hop in and squat on famous marks, such as that of State Farm.
In a case involving the domain name Meta-StateFarm.com, the Respondent denied that the domain infringes on the State Farm mark. Instead, the Respondent alleged that due to their $100,000 fund raising they are demonstrating “fair use” of the domain.
Respondent registered the meta-statefarm.com domain on April 23, 2022. […] The Disputed Domain Name is not confusingly similar to Complainant’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 distinctive meaning on modern technological nomenclature.”
Respondent has also untaken other preparations for its intended venture by entering into agreements with medical providers, banking, and advisor agreements. He has already spent more than “$100,000 in furtherance of these objectives” and intends to spend “at least $10 million in order to develop the initial platformed designed to provide adjunctive and primary treatments for certain mental health disorders.”
The response’s meta-baloney would not convince the sole panelist at the Forum (NAF) who also received notice of a prior UDRP involving the same Complainant and Respondent, that of the domain Metaverse-StateFarm.com, which resulted in a transfer.
Not surprisingly, the panelist ordered Meta-StateFarm.com to be transferred to the Respondent.
State Farm Mutual Automobile Insurance Company v. Robert Goldman / A4M
Claim Number: FA2207002003300
PARTIES
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Robert Goldman / A4M (“Respondent”), represented by Wesley J. Paul of Paul Law Group, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is meta-statefarm.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 known conflict in serving as Panelist in this proceeding.
Jeffrey J. Neuman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 7, 2022; the Forum received payment on July 7, 2022.
On July 8, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the meta-statefarm.com domain name 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 July 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2022 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@meta-statefarm.com. Also on July 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.
A timely Response was received and determined to be complete on August 22, 2022.
On August 25, 2022, an Additional Submission was submitted by the Complainant under Supplemental Rule 7. Respondent replied to Complainant’s Additional Submission on September 6, 2022.
On August 25, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist. Due to the receipt of additional documentation, the Panel issued a Decision Extension Order extending the timeframe for the Panel to issue its decision.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: SUPPLEMENTAL FILINGS
Under the Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). See Supplemental Rule 7.
Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint. However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.
In this case, the Panel views will accept both Complainant’s and Respondent’s additional submissions. Given the lack of content on the Disputed Domain Name, the Panel does not believe that it could have foreseen the arguments being made by Respondent regarding its intended use of the Disputed Domain Name. Therefore, it was fair to allow Complainant to address that aspect of the case. Having given the Complainant an opportunity to respond to the arguments of the Respondent, in the spirit of fairness it is also accepting Respondent’s reply to Complainant’s additional submission.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, State Farm Mutual Automobile Insurance Company, is a leading provider of insurance services. Complainant has rights in the STATE FARM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,271,354 registered August 22, 2017). See Compl. Ex. 1. Respondent’s meta-statefarm.com domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the STATE FARM mark in its entirety and adds a hyphen, the term “meta”, and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the meta-statefarm.com domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the STATE FARM mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page with third-party competing pay-per-click links.
Respondent registered and uses the meta-statefarm.com domain name in bad faith. Respondent registered the disputed domain name in order to disrupt business and divert customers for commercial gain, redirecting users to competing hyperlinks. Respondent failed to respond or comply with cease-and-desist letters.
B. Respondent
Respondent, Robert Goldman, is a medical professional and advocate of longevity, wellness and fitness industries. In addition to setting Guinness-certified world strength records, he founded the largest certification organization of fitness trainers in the world. He is also the co-founder of the American Academy of Anti-Aging Medicine (“A4M”) which is the second largest medical organization in the world (only behind the American Medical Association).
Respondent has entered partnerships to develop with other medical professionals, a telehealth programming designed to assist patients with various mental health treatments. An important component of these initiatives is the use of virtual reality which has been dubbed by many as the “metaverse.” Respondent intends to use this technology to transform mental health care by “using real life constructs to more accurately mimic scenarios patients face in the real world.” Compl. at p. 5. By using real-world names, treatment of the patient is significantly heightened. “Thus, the use of actual names of companies and/or products during course of treatment reinforces good treatment practice and creates a treatment modality that is more consistent with a typical mental patient’s perception of the real world.” Comp. at p. 5-6.
Respondent registered the meta-statefarm.com domain on April 23, 2022. See Compl. Ex. 2. The Disputed Domain Name is not confusingly similar to Complainant’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 distinctive meaning on modern technological nomenclature.” Response at p. 7.
It has rights and legitimate interests in the Disputed Domain Name because Respondent has made more than demonstrable preparations to use it in connection with a bone fide offering of goods or services. Respondent has also untaken other preparations for its intended venture by entering into agreements with medical providers, banking, and advisor agreements. He has already spent more than “$100,000 in furtherance of these objectives” and intends to spend “at least $10 million in order to develop the initial platformed designed to provide adjunctive and primary treatments for certain mental health disorders.” Response at p. 8.
This is not a cybersquatting case. If Complainant is alleging that the domain name is infringing the rights of the Complainant or that it is diluting the Complainant’s mark, the appropriate venue for that dispute is in federal court and not the UDRP. He did not register or use the domain name in bad faith. He has not attempted to sell the domain name to the Complainant or to anyone else. Respondent has not registered the domain name for the purpose of preventing Complainant from registering a domain name and that he does not compete with the Complainant.
Respondent concedes that the domain name is at a GoDaddy parking page that does contain links to insurance-related sites, but he receives no financial benefit from the parking page. When he registered the domain name, GoDaddy’s registration process gave him a choice of whether to point his domain name to existing content or if it didn’t have such content, “[GoDaddy] will display a parked page 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 the name, Respondent and its partners are still “Laying the groundwork for their venture and intended website.” Id.
C. Additional Submissions
1. Complainant
Complainant contends that background information provided by the Respondent is irrelevant to this case. In addition, Complainant cites a previously decided case involving the same parties dated July 7, 2022, involving a similar domain name, metaverse-statefarm.com, whereby the Panel found that Complainant had proven all three elements required under the UDRP and ordered that domain name to be transferred to the Complainant.
Complainant also asserts that the Respondent has not presented any plausible explanation for their use of the full mark “STATE FARM.” More specifically, Respondent offers no explanation for the use of the term “FARM”. Respondent only uses the full mark to benefit from State Farm’s goodwill. Complainant distinguishes this case from two previous cases where it was unable to succeed in a UDRP action: State Farm v. Kephart, FA2003001887692 (Forum Apr. 17, 2020); State Farm v. Christensen, FA2005001840727 (Forum May 22, 2019). In those cases, the panels did not find that the domain names thestatefarmbowl.com and bigstatefarmagent.com were confusing similar to Complainant’s STATE FARM mark because they could easily be parsed as “the state” “farm bowl” and “big state” “farm agent” respectively. However, these prior decisions are easily distinguishable from this case because they involved domain names that did not include any punctuation and, as a result, could be parsed differently so not to include Complainant’s mark. The Disputed Domain Name, however, includes a dash. The inclusion of a dash in the Disputed Domain Name clearly parses the domain into two parts “Meta-” and “State Farm” bringing to mind Complainant’s famous mark STATE FARM in the metaverse context.
Further Complainant argues that because its mark is famous, any use of the mark in a domain name in the “health care field” would create a likelihood of confusion with Complainant’s mark. The fact that Respondent has not offered the domain name for sale to the Complainant or anyone else is not enough to show a lack of bad faith.
2. Respondent
Respondent argues that Complainant mischaracterized Respondent’s arguments and claims that its use of the mark in the domain name is nominative fair use.
It states that the intended use of the mark is only to “create accurate real-world representations of treatment simulations in a virtual reality format. Within the context of such simulation, the use of the marks serves only to identify Complainant’s likeness for the purpose of depicting visual cues as they would ordinarily appear in real life. “The URLs obtained by the Respondents directly correspond with various mental health treatment simulations that will be offered to patients.”
Respondent claims that the Complainant has not demonstrated how Respondent’s registration of the Disputed Domain Name is intended to divert Internet users for commercial gain or for the purposes of preventing Complainant from registering the domain name. Respondent has no history of a pattern of this type of conduct as required under the Policy.
FINDINGS
1. Complainant is a well-known company in the United States that has been doing business under the name “State Farm” since 1930 in connection with underwriting auto, homeowners, life and fire insurance. It has numerous trademark registrations in the United States including Registration No. 5,271,354 dated August 22, 2017 with a first use date 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 or otherwise authorized Respondent to use its Mark, nor is Respondent commonly known by the Mark.
4. Respondent makes several arguments as to why it believes it is using the domain name in connection with a bona fide offering of services under the Policy. However, regardless of the preparations it has alleged to have made, even assuming arguendo that it has, Respondent fails to tie those services to the domain name itself and therefore does not establish the required bona fide offering of services to qualify as having a right or legitimate interest in the Disputed Domain Name under the Policy.
5. Complainant has established that the Disputed Domain Name has been registered and used in bad faith under the Policy Para. 4(b)(iv) by registering and using Complainant’s mark in an attempt to take advantage of the goodwill and reputation of Complainant’s marks in the proposed offering of its own services.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the STATE FARM mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 5,271,354 registered August 22, 2017). See Compl. Ex. 1.. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the STATE FARM mark with the USPTO, the Panel may find that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s meta-statefarm.com domain name is identical or confusingly similar to Complainant’s STATE FARM mark. The addition of a gTLD and a generic term fails to sufficiently distinguish a Disputed Domain Name from a mark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s antfinancial-investorrelations.com Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”).
Here, the disputed domain contains the STATE FARM mark in 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 to Complainant’s mark because it is intended to be parsed as “Meta-State” and “Farm.” Respondent also argues that Complainant has not provided sufficient information for why the word “meta” is a generic term. The Panel disagrees with Respondent.
Other Panels have already 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’s mark is confusingly similar to the Complainant’s mark. See Advance Magazine Publishers Inc. v. Privacy service provided by Withheld for Privacy ehf / Herman Leman, Contact Privacy Inc. Customer 7151571251 / House of Dreams Shop LLC, Alexandr Shishkin, Whois Privacy Protection Foundation / Yanis B., Welcome Formation, 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 of confusing similarity between the Domain Names and the Complainants’ trademark.”); See also Guess? IP Holder L.P. and Guess?, Inc. v. leiheng, FA 1811001815028 (Forum Dec. 4, 2018) (finding that meta-guess.com is confusingly similar to GUESS), and Calvin Klein Inc. and Calvin Klein Trademark Trust v. Won Sop Lee, D2022-0312 (WIPO March 30, 2022) (finding that meta-calvinklein.com was confusingly similar to CALVIN KLEIN).
In addition, this case is notably different than the cases cited by Respondent in which Panels have found that domain names containing the mark “STATE FARM” were not confusingly similar to the Complainant’s mark. Those cases specifically found that thestatefarmbowl.com and bigstatefarmagent.com were not confusingly similar to the Complainant’s marks because they could each be parsed differently as “the state” “farm bowl” and “big state” “farm agent”. See State Farm v. Kephart, FA 2003001887692 (Forum Apr. 17, 2020); State Farm v. Christensen, FA 2005001840727 (Forum May 22, 2019). As correctly pointed out by the Complainant those two prior decisions are distinguishable from this case because they involved domain names which did not include any punctuation and, as a result, could be parsed differently so not to include Complainant’s mark. The Disputed Domain Name here, however, included a hyphen in between the terms “meta” and “State Farm.” The inclusion of this form of punctuation only allows the domain name to be parsed into either “Meta-State” and “Farm”, or “Meta-“ and “State Farm.”
In attempting to explain why it chose to use the Disputed Domain Name, the Respondent presents two contradictory arguments, neither of which the Panel believes successfully supports its case as to why the Disputed Domain name should not be viewed as confusingly similar to the Complainant’s STATE FARM mark. Respondent initially claims that the Disputed Domain Name should actually be parsed as “Meta-State” and “Farm.” Respondent sets forth that parsing the name in this manner reflects the name’s intended use — namely using virtual reality and the metaverse (“Meta”) to assist with improving the mental state (“State”) of its patients. See Response at p. 5. But if that were the case, the Panel is 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 of mental health treatments that use “real-world names and nomenclature.” Clearly as conceded by Respondent in its own Response and Reply to the Complainant’s additional submission, Respondent wanted to use the term “STATE FARM” to reflect one of the “real-world names” in its proposed virtual reality simulations to assist in the treatment of mental health issues.
Therefore, the Panel finds that the only way to parse the domain name is with the Complainant’s mark in its entirety and as such the Disputed Domain Name is confusingly similar to the Complainant’s mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In addition to demonstrating that that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must demonstrate that the Respondent lacks rights or legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii). While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the “often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Overview (“WIPO Jurisprudential Overview 3.0”) at Section 2. Therefore, in order to satisfy its prima facie case under the Policy the Complainant must proffer evidence to show that (a) the Respondent is not commonly known by the Disputed Domain Name nor has it been authorized to use the Complaint’s mark, and (b) the Respondent is not using the Disputed Domain Name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses.
Complainant contends that Respondent lacks rights or legitimate interests in the meta-statefarm.com domain name since Respondent is not commonly known by the Disputed Domain Name and Complainant has not authorized or licensed to Respondent any rights in the STATE FARM mark. WHOIS information may be used to determine whether a respondent is commonly known by the Disputed Domain Name under 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. In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the Disputed Domain Name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the Disputed Domain Name lists the registrant as “Robert Goldman/ A4M”. See Registrar Email Verification. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s STATE FARM mark. Therefore, the Panel finds Respondent is not commonly known by the Disputed Domain Name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the Disputed Domain Name instead resolves to a page displaying links related to the goods and services associated with Complainant and its competitors.
Respondent, however, argues that it does have a right or legitimate interest in the Disputed Domain Name because he has made demonstrable preparations to use the Disputed Domain Name in connection with its virtual reality programming to assist in the treatment of mental health issues. Respondent concedes that the Disputed Domain Name does redirect to a default parking page hosted by its registrar, GoDaddy. He also argues that he neither controls the content of the parking page or the links contained therein. He claims that he does not get any benefit, financial or otherwise, from the pay-per-click ads displayed by his registrar.
Previous panels have held that Respondent’s use of a domain to redirect users to competing services fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the Disputed Domain Names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In addition, as the owner of the Disputed Domain Name, Panels have held registrants responsible for the content, including parked content, at the resolving webpage. See Park ‘N Fly Service Corporation v. Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) (holding that it is ultimately “the Registrant responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute”).
However, the Panel agrees here with the Respondent – namely that registrants, especially those that do not buy or sell domain names for a living, should not be held responsible for parking pages that are stood up by default by its domain name registrar, especially where registrants derive no financial or other benefit from the content or links contained on the website other than letting others know that the domain name has been registered. The Panel notes that it is an unfortunate common practice of registrars to place advertising on the landing pages of its customers’ domain name where its customers have not published any content of its own on the domain. Most registrants are likely unaware of this practice and like the Respondent receive no benefit, financial or otherwise, from such a landing page. Nor are most registrants aware that they can change their settings at a registrar to not allow this to happen. It would be unfair to hold registrants that are unaware of this practice accountable for the actions of its registrar.
That said, it is the view of this panel that the Respondent has not demonstrated rights or a legitimate interest to the Disputed Domain Name. Respondent argues that it intends to use the Disputed Domain Name in connection with a bone fide offering of goods or services. It claims to have undertaken other preparations for its intended venture by entering into agreements with medical providers, banking, and advisor agreements. Although the declaration of the Respondent states the to date $100,000 has already been spent to develop the programming of its virtual reality application, the Respondent’s carefully crafted declaration does not state that this money or any other partnerships he has created is dependent on the Disputed Domain Name. Nor does it state anywhere 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 in funds for its venture could very well establish a bona fide offering of services, but not necessarily in connection with this very domain name. Other than the Respondent’s own declaration stating that one of the intended names for the venture is the Disputed Domain Name, there is no other evidence presented that connects the virtual reality venture to the domain name itself which is a predicate for establishing a right or legitimate interest in the domain name.
As this element is also inextricably tied to the third element, the Panel will discuss this further below.
Registration and Use in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
Complainant argues that Respondent registered and uses the meta-statefarm.com domain name in bad faith because Respondent has “intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the site or location.” Compl. at p.5.
Complainant also points to a previous UDRP involving these 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 the Complainant and ordered the transfer of the domain name. Further, the Complainant argues that its mark is famous and that it is “simply inconceivable to imagine any use of the Disputed Domain Name by Respondents without creating a false impression of association with Complainant.”
Respondent, however, argues that it was unaware of the previous case filed against it and that even if it did not have a right or legitimate interest in the domain name, its intended use of the domain name is a “textbook example of nominative fair use.” Respondent’s Supplemental Response at p. 2. It states that the intended use of the marks is only to create accurate real-world representations of treatment simulations in a virtual reality format. “Within the context of such simulation, the use of the marks serves only to identify Complainant’s likeness for the purpose of depicting visual cues as they would ordinarily appear in real life.” Id. Finally, it argues that unlike other cybersquatting cases, the domain name is not for sale to the Complainant or any other third party, nor is Respondent intending to provide competing services on the website for the Disputed Domain Name.
The Panel believes that both sides have made some good arguments, but at the end of the day, on balance, the Panel believes that based on a balance of the probabilities, Complainant has successfully established the third required element – namely, that the domain name has been registered and is being used in bad faith.
The Panel notes that indeed there was a previous case involving these same two parties over a very similar domain name, metaverse-statefarm.com. See State Farm Mutual Automobile Insurance Company v. Robert Goldman / A4M, FA 2206002000247 (Forum July 7, 2022). In that case the Respondent failed to Respond and absent such a response the Panel understandably found in favor of the Complainant and ordered the transfer of the domain name. However, this Panel is not obliged to use that previous case as precedent for this one. Whatever the reason for the lack of response by the Respondent in that case, each case is adjudicated on its own merits under its unique facts and circumstances. If the Respondent had in fact responded in that case, then perhaps the previous case could be instructive to this case, but given the lack of response, this Panel is presented with a very different case to consider.
Turning to the substance, Complainant’s mark STATE FARM has been found in a number of UDRP actions to be a famous or well-known mark in the United States. See State Farm Mutual Automobile Insurance Company v. Dusty Jones, FA 2206002002147 (Forum July 21, 2022), State Farm Mutual Insurance Company v. Lu Lan, FA 1001001303630 (Forum Mar. 3, 2010). The Panel agrees that Complainant’s marks are well-known, and it would be inconceivable to imagine that Respondent was unaware of Complainant’s mark when registered the domain name. In fact, Respondent acknowledges that he had actual knowledge of Complainant’s marks at the time he registered the Disputed Domain Name.
In fact, Respondent essentially concedes that it intended to register a domain name that resembled the Complainant’s mark because the very nature of the service. His service is intended to present mental health patients with “accurate real-world representations of treatment simulations in a virtual reality format.” Thus he admits that he intended to use the goodwill of the Complainant’s marks to create real-life simulations in a virtual reality world. Under the Policy Para. 4(b)(iv) states that evidence of 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 a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In Respondent’s additional submission, Respondent makes an argument that even if it intended to use Complainant’s marks in a manner to take advantage of its Goodwill, he is not intending to use the site for commercial gain. Rather, he believes that using Complainant’s mark in the manner he proposes should be considered nominative fair use. The Panel, however, disagrees with Respondent and does not believe the intended use can be considered nominative fair use under the Policy.
The Panel takes note of a somewhat similar case Atena Inc. v,. On behalf of help-aetna.com owner / Whois Privacy Service / Manager / Knowbe4, D2021-1565 (WIPO August 3, 2021). In that case, the Registrant registered the domain name help-artna.com to use in simulated phishing attacks on behalf of its clients. The Respondent would send e-mails from that address to its corporate customers in a simulated phishing attack to test assess whether its clients’ employees were susceptible to a socially-engineered phishing attack. In other words, like here, the Respondent claimed it was using the domain name to simulate a real word situation as a tool to assist its clients. However, in that case, the Respondent took many precautions to ensure that its use of the domain name in connection with computer security training would not result in commercial harm to the Complainant. For example, training materials that referenced the domain name were not available to the general public. Respondent also made sure that when third parties outside of the registrant’s services attempted to access the domain name, they were directed to an error page that contained no content. E-mails sent by those outside of the Respondent’s simulation would bounce back indicating that the e-mail address did not exist. If a user within the Respondent’s training system tried to 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 them know they have responded to a simulated phishing test. Considering all those factors, the three-member panel concluded
“. . . in this case, where Respondent reasonably believed that what it was doing constituted legitimate fair use, and where this intention was backed up by precautionary measures and a unique and restricted form of use, it cannot be said that the registration of the Domain Name was in bad faith. See e.g., Human Resource Certification Institute v. Tridibesh Satpathy, Edusys, WIPO Case No. D2010-0291. Again, as noted above, this case presents a close call on the question of fair use, but that “close call” only serves to underpin that there is no obvious bad faith registration, which Complainant has the burden of demonstrating.”
In this case, however, other than a general statement by the Respondent that it intended to use the domain name in connection with real life simulations, Respondent does not explain in any detail exactly how the domain name would be used in the delivery of Respondent’s services. In simulating phishing attacks, it is quite evident how domain names need to be used. But the Respondent fails to connect the domain name to its business venture in any way to establish whether its use would be nominative fair use or not. Moreover, unlike the Aetna case, there is no discussion of any precautionary measures that would be taken by the Respondent to prevent any commercial harm to the Complainant. Although the Complainant argues that the inclusion of Complainant’s mark in its treatments could have a positive impact on Complainant’s services, it is equally plausible that it could actually tarnish the reputation of Complainant’s services and its well-known mark. This is precisely why the doctrine of fair use, as cited by the Respondent, under US Law requires that a Plaintiff prove that (i) the service in question must be one not readily identifiable without the use of the trademark, (ii) only so much of the mark or marks may be used as is reasonably necessary to identify the complainant’s product or service, and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Even assuming arguendo that Respondent has demonstrated the first two elements of nominative fair use, it has failed to address the third critical element.
For all of the reasons set forth above, the Panel believes that using the domain name in the manner proposed by the Respondent would likely create a false impression of association with Complainant. In addition, use of the Complainant’s well-known mark in the health care field, even if the services 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 by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service thereon. Therefore, based on the evidence submitted, the Panel finds that Respondent did register, and is using the domain name in bad faith in contravention of Policy Para. 4(b)(iv).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the meta-statefarm.com domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: September 13, 2022
