State Farm Mutual Automobile Insurance Company v. Guiyan Wang
Claim Number: FA1202001432120
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Guiyan Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmdollars.mobi>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2012; the National Arbitration Forum received payment on February 28, 2012.
On March 1, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <statefarmdollars.mobi> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2012 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@statefarmdollars.mobi. Also on March 5, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 deficient on March 27, 2012 because the Response was submitted in Chinese while the language of the proceedings under Rule 11 is English.
On April 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Siew Ling Tan as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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
The Complainant has been using the STATE FARM mark in relation to the business of insurance and financial services since 1930 and has established a recognized presence in the United States via televised and other media.
The STATE FARM trade mark was registered with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996; the STATE FARM INSURANCE trade mark was registered on September 11, 1979. Other variations of STATE FARM marks have also been registered with the USPTO.
The Complainant developed its Internet web presence in 1995 using the <statefarm.com> domain name which was registered on May 24, 1995.
Substantial time, effort and money have been expended by the Complainant to develop the goodwill associated with the STATE FARM trade mark and business, as well as to develop the said website as a primary source of online information for its products and services.
The Respondent registered the disputed domain name on February 10, 2012 which resolves to a pay-per-click website containing banner advertisements and links to various products and companies.
The disputed domain name is confusingly similar to the Complainant’s STATE FARM trade marks. The disputed domain name containing the word “dollars” is also confusingly similar to products, services or information that the Complainant offers generally to the public.
The Respondent has no rights or legitimate interests in respect of the disputed domain name: the Respondent is not associated or affiliated with, or sponsored by the Complainant; the disputed domain name was registered without the Complainant’s authorization; the Complainant did not authorize the Respondent to use the STATE FARM trade mark for the Respondent’s business purposes; and the Respondent is not commonly known under the disputed domain name. It is the Complainant’s belief that the Respondent has never been known by or performed business under the disputed domain name, and that the disputed domain name had been registered to (i) create the impression of association with the Complainant, its agents, products and services, (ii) trade off the goodwill associated with the Complainant’s name and reputation, and/or (iii) to create initial interest confusion for individuals looking for informing about the Complainant or its products/services.
The Respondent has registered and used the disputed domain name in bad faith, and this contention is supported by, inter alia, the fact that (a) the Respondent lacks rights to the disputed domain name, never having been known by, and not having acquired a trade mark or other intellectual property right to, the name STATE FARM; (b) the disputed domain name gives the impression to interested individuals that the website to which the disputed domain name resolves will provide information regarding the Complainant and its products/services whereas what happens is individuals are directed to a website apparently “hosted by GIW - Global Interactive Works Pte Ltd”, containing banner advertisements with links for various products and companies; (c) the Respondent’s multiple registrations of domain names incorporating the Complainant’s trade marks; (d) the Respondent's registration of the disputed domain name after the Complainant succeeded in another UDRP proceeding instituted against him (State Farm Mutual Auto. Ins. Co.. v. Guiyan Wang, FA 1412890 (Nat. Arb. Forum Dec. 6, 2011); (e) the Respondent registered the disputed domain name when he knew or should have known of the Complainant’s long-term use of the STATE FARM trade marks and the <statefarm.com> domain name.
B. Respondent
The Respondent filed a Response but which was entirely in the Chinese language.
Preliminary Issue
On the preliminary issue relating to the Response that was filed, the Panel finds that the Response was not filed in accordance with Rule 11 of the UDRP as it should have been submitted in English. Accordingly, the Response is considered by the Panel deficient and has not been considered by the Panel in these proceedings. The Panel is mindful of its obligation under paragraph 10(c) of the Policy to ensure that the administrative proceedings take place with due expedition.
Substantive Issues
(a) The disputed domain name is confusingly similar to the STATE FARM trademarks in which the Complainant has rights.
(b) The Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used 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 the Panel’s view, the disputed domain name <statefarmdollars.mobi> is confusingly similar to the trade mark “STATE FARM” in which the Complainant has rights.
It is a well-established principle that the top-level suffix (in this case “.mobi”) is to be disregarded when considering the issue of identity or confusing similarity, as it is a technical requirement of registration. In this case, the Complainant’s trade mark STATE FARM is clearly identifiable within the disputed domain name and the addition of “dollars” (which is a generic or descriptive word, particularly in the context of the Complainant’s sphere of business), does not serve to remove the confusing similarity.
The Panel therefore finds that Paragraph 4(a)(i) of the Policy has been established.
Paragraph 4(c) of the Policy sets out how one may demonstrate one’s rights to and legitimate interests in domain name in dispute. “Any of the following circumstances . . . if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Notwithstanding the Respondent’s failure to file a Response in accordance with the Policy, the Complainant is still obliged to make a prima facie case that the Respondent lacks rights and legitimate interests in relation to the disputed domain name. This principle has been established in earlier UDRP panel decisions such as Hanna-Babera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006), and is also captured in paragraph 2.1 of the WIPO Panel Views on Selected UDRP Questions (2nd ed.). Thereafter, the burden shifts to the Respondent to establish that he has rights and legitimate interests in the disputed domain name.
The Panel is of the view that the Complainant has established a prima facie case. There does not appear to be a bona fide offering of goods or services on the Respondent’s website and neither is there evidence that the Respondent is commonly known by the disputed domain name. Given the long prior use of the STATE FARM trade mark, the Panel is persuaded that the choice of the disputed domain name incorporating the Complainant’s trade mark was deliberate and intended to create initial interest confusion amongst Internet users looking for information relating to the Complainant.
The Complainant having established a prima facie case and in the absence of a Response that the Panel is able to take into consideration and which would prove that the Respondent has rights or legitimate interests, the Panel therefore finds in favor of the Complainant on this issue.
Accordingly, paragraph 4(a)(ii) of the Policy has been established.
In this case, the Panel has no difficulty in finding that the registration and use of the disputed domain name has been in bad faith. The fact that the Respondent registered the disputed domain name soon after the Complainant had succeeded in another UDRP proceeding against him demonstrates a clear disregard for the rights of the Complainant in the trade mark. The Respondent had actual knowledge of the Complainant and of its rights in the STATE FARM trade mark, but proceeded nonetheless to register and use it in relation to a website with pay-per-click links. The intention must have been to attract, for commercial gain, Internet users to his site, by causing confusion with the Complainant’s mark. Such conduct constitutes evidence of bad faith registration and use.
Accordingly, paragraph 4(a)(iii) of the Policy has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmdollars.mobi> domain name be TRANSFERRED from the Respondent to the Complainant.
FRANCINE TAN, Panelist
Dated: April 24, 2012
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