State Farm Mutual Automobile Insurance Company v. Zhichao Yang
Claim Number: FA1607001683240
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, United States. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <experiancestatefarm.com>, registered with NameSilo, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically July 11, 2016; the Forum received payment July 11, 2016.
On July 12, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <experiancestatefarm.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC verified that Respondent is bound by the NameSilo, LLC registration agreement and 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, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2016, 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@experiancestatefarm.com. Also on July 13, 2016, 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 August 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contention in this Proceeding:
Complainant uses the STATE FARM mark in connection with its business in both the insurance and the financial services industry. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Exhibit 1. The <experiancestatefarm.com> domain is confusingly similar to Complainant’s STATE FARM mark.
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain and Respondent is not associated with, affiliated with, or sponsored by Complainant. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to a website that contains links to various insurance companies and/or products, some of which are in direct competition with Complainant. See Compl., at Attached Exhibit 3.
Respondent registered and is using the domain in bad faith. First, Respondent’s use of the domain to host competing hyperlinks disrupts and competes with Complainant’s business. Second, Respondent’s use of the domain to display competing hyperlinks violates Policy ¶ 4(b)(iv). Third, Complainant sent Respondent cease and desist letters and Respondent failed to respond. See Compl., at Attached Exhibit 4. Fourth, because of Complainant’s long-standing and well-known STATE FARM mark, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and its rights therein.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain on September 19, 2015.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name contained in it in its entirety.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant uses the STATE FARM mark in connection with its business in both the insurance and the financial services industry. Complainant registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996), which Complainant argues demonstrates its rights in the mark. See Compl., at Attached Exhibit 1. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Thus, the Panel finds that Complainant demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <experiancestatefarm.com> domain is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the domain contains the STATE FARM mark in its entirety, adding just the term “experiance,” a misspelling of the word “experience,” and the generic top-level domain (“gTLD”) “.com.” The domain also eliminates the spaces between the words of Complainant’s mark. Panels have held that neither the addition of a generic term, nor the elimination of the spaces between the words of a complainant’s mark, adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Further, the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). For these reasons, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panels finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the domain, and that Respondent is not associated with, affiliated with, or sponsored by Complainant. The Panel notes that the WHOIS information merely lists “Zhichao Yang” as registrant and that Respondent failed to provide any evidence for the Panel’s consideration. The Panel notes that Attached Exhibit 2 provides additional WHOIS information. Therefore, the Panel finds no basis in the available record to find Respondent commonly known by the domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent’s domain resolves to a website that contains links to various insurance companies and/or products, some of which are in direct competition with Complainant. See Compl., at Attached Exhibit 3. Panels have held that a respondent lacks rights and legitimate interests where it uses a domain to host competing hyperlinks. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name or Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s use of the domain to host competing hyperlinks disrupts and competes with Complainant’s business. A respondent’s use of a domain to host competing hyperlinks constitutes bad faith registration and use per Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). For this reason, the Panel finds that Respondent engaged in bad faith registration and use pursuant to a Policy ¶ 4(b)(iii) analysis.
Complainant argues that Respondent’s use of the domain to display competing hyperlinks violates Policy ¶ 4(b)(iv). A respondent’s use of a domain to host competing hyperlinks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that it sent Respondent cease and desist letters and Respondent failed to respond. See Compl., at Attached Exhibit 4. A respondent’s failure to respond to a complainant’s cease and desist letter indicates bad faith. See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). The Panel agrees with Complainant’s argument and finds that Respondent acted in bad faith through its registration and use of the disputed domain name.
Finally, Complainant argues that because of its long-standing and well-known STATE FARM mark, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and its rights therein. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds here that, given the fame of Complainant’s mark, and the use that Respondent makes of the disputed domain name, Respondent had actual knowledge of the mark and Complainant’s rights. For that reason, the Panel holds that Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <experiancestatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 22, 2016
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