State Farm Mutual Automobile Insurance Company v. Zhichao
Claim Number: FA2202001985719
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statearminsurance.com>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2022; the Forum received payment on February 24, 2022.
On February 24, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <statearminsurance.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@statearminsurance.com. Also on February 25, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant engages in the businesses of insurance and financial services. Complainant asserts 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. 4,211,626, registered on September 18, 2012). Respondent’s <statearminsurance.com>[i] domain name is identical or confusingly similar to Complainant’s STATE FARM mark as it incorporates the mark, removing the letter “f” and adding the generic term “insurance” and the “.com” generic top-level domain (gTLD).
2. Respondent has no rights or legitimate interests in the <statearminsurance.com> domain name. Complainant has not authorized or licensed Respondent to use the STATE FARM mark, nor is Respondent commonly known by the domain name.
3. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the domain name confuses users into believing there is an association or affiliation between Respondent and Complainant.
4. Respondent registered and uses the <statearminsurance.com> domain name in bad faith. Respondent attempts to attract users for commercial gain by using a confusingly similar domain name to redirect users to a website with third-party hyperlinks.
5. Further, the resolving website lacks any substantive content.
6. Respondent had actual and/or constructive notice of Complainant’s rights in the STATE FARM mark, evidenced by the fame and notoriety of the mark.
7. Respondent also engages in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <statearminsurance.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the STATE FARM mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,211,626, registered on September 18, 2012). When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, Complainant has sufficiently established rights in the STATE FARM mark.
Complainant argues Respondent’s <statearminsurance.com> domain name is identical or confusingly similar to Complainant’s STATE FARM mark, as it incorporates a misspelled version of the mark, removing the letter “f” and adding the term “insurance” and adding the “.com” gTLD. Misspelling a mark and adding a generic term and a gTLD is not sufficient to differentiate a domain name from a mark. 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 therefore finds the <statearminsurance.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <statearminsurance.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights and legitimate interests in the <statearminsurance.com> domain name because Respondent is not authorized to use the STATE FARM mark, nor is Respondent commonly known by the domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by a domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by a domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “Zhichao” and there is no evidence to suggest Complainant authorized Respondent to use the STATE FARM mark. Therefore, Respondent is not commonly known by the <statearminsurance.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <statearminsurance.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because both the domain name and resolving website attempt to confuse users into believing there is an association or affiliation between Respondent and Complainant. Using a domain incorporating the mark of a complainant to deceive users about the affiliation between a resolving website and a complainant’s business is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of both Complainant and Respondent’s websites which shows the confusing similarity between the two. Thus, the Panel concludes that Respondent is not using the <statearminsurance.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent registered and uses the <statearminsurance.com> domain name in bad faith because Respondent attempts to attract users for commercial gain, redirecting users to a website that hosts third-party hyperlinks. Using a domain name incorporating the mark of another to attract users for commercial gain by hosting third-party links indicates bad faith. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As the resolving website hosts third-party hyperlinks that potentially financially benefit Respondent, the Panel holds that Respondent has acted in bad faith.
Complainant also states Respondent had actual notice of Complainant’s rights in the STATE FARM mark and therefore acted in bad faith. The record supports Complainant’s contention that the STATE FARM mark has been used for many years and is well-known throughout the United States. Thus, the Panel holds that Respondent had actual knowledge of Complainant's mark and rights and therefore that Respondent registered the <statearminsurance.com> domain name in bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds Complainant has satisfied 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 <statearminsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 29, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page