State Farm Mutual Automobile Insurance Company v. RenLin Xia
Claim Number: FA1607001684672
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is RenLin Xia (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmlifecloud.com> and <statefarmlifehealth.com>, registered with GoDaddy.com, LLC.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2016; the Forum received payment on July 20, 2016.
On July 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarmlifecloud.com> and <statefarmlifehealth.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@statefarmlifecloud.com, postmaster@statefarmlifehealth.com. Also on July 21, 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.
A timely Response was received and determined to be complete on August 10, 2016.
On August, 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it is a nationally known company that has been doing business in insurance and financial services industry under the name “State Farm” since 1930, and in 1999 opened a Federally Chartered Bank known as State Farm Bank.
Complainant states that it registered the “State Farm” trademark with the Patent and Trademark Office in 1996 and registered the “State Farm Insurance” trademark, among others, in 1979, and also registered the State Farm 3 oval logo in Canada.
Complainant defends that it has expended substantial time, effort and funds to develop its trademarks for over 70 years, which are distinctive and have acquired secondary meaning, and that it does not allow unauthorized parties to use its marks as part of their Internet domain names.
Complainant argues that it developed its Internet web presence in 1995 using the domain name <statefarm.com> to offer information relating to insurance and financial services.
Complainant affirms that it sent a cease and desist letter to Respondent on June, 19, 2015, and that Respondent renewed the disputed domain names after receiving the cease and desist communication.
Complainant alleges that Respondent has no legitimate interest in the domain names, as it has not been authorized, licensed, or associated with Complainant in any manner to register the domain names or to use the State Farm trademark, and as Respondent is not commonly known under the domain names, while it does not have any intellectual property rights and has not performed business under the domain names.
Complainant also states that the disputed domain names are confusingly similar to the STATE FARM mark because the disputed domains relate to the “products, services or information that State Farm offers generally to the public as well as on its websites, and affirms that it has filed numerous complaints and the arbitrators have consistently found that the use of a “State Farm” trademark in a domain name, whether or not additional language is added, is confusingly similar to State Farm trademarks and that such registrations have been done in bad faith.
Complainant argues that Respondent registered the disputed domain names to create the impression of association with State Farm, its agents, products, sponsorships, and services, creating confusion to the consumers.
Finally, Complainant alleges that Respondent has registered and is using the disputed domain names in bad faith, as it has never been known by the name “State Farm”, it is not authorized to sell products, engage in sponsorships or services for or on behalf of Complainant, it used the Complainant’s trademark to generate business in other fashions, it is not using the domain names with a bona fide offering of goods or services, while individuals are sent to webpages with no content, it failed to comply with Complainant’s cease and desist request, and it knew or should have known of Complainant’s long-term use of its trademark.
B. Respondent
Respondent agrees that neither website is in use.
Respondent also states that “There is a lot of Farms in the State and they all need healthcare.”
Respondent requests compensation for “cost plus changes in rebranding.”
Complainant is a nationally known company that has been doing business in the insurance and financial services industry under the name STATE FARM since 1930, and in 1999 opened a Federally Chartered Bank known as State Farm Bank.
Complainant registered the STATE FARM trademark with the Patent and Trademark Office in 1996 and registered the STATE FARM INSURANCE trademark in 1979, among other trademarks, and also registered the State Farm 3 oval logo in Canada.
Complainant registered the domain name <statefarm.com> in 1995 to offer information relating to insurance and financial services.
Respondent registered the disputed domain names on June, 14, 2015.
In its attached annexes, Respondent includes only blurry pictures, and does not provide information about them. Respondent includes no evidence regarding its “first rights” to the disputed domain names, or why Respondent’s profession as a practicing physician is of any relevance in this case.
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.
First, the Panel notes that Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that Complainant has rights to the STATE FARM mark through its registrations of the mark with the USPTO and extensive and longstanding use of the mark in commerce since 1930. Complainant’s use and registration predate Respondent’s June 14, 2015 registration of the disputed domain names.
The Panel agrees that registration with the USPTO suffices to demonstrate a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The Panel also notes that previous panels have conferred rights to the STATE FARM mark to Complainant based upon its trademarks registrations. See State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is a very famous mark, and Complainant has clearly established rights in the [mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks and use in commerce since 1930); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).
Furthermore, the Panel finds that the disputed domain names are confusingly similar to Complainant's registered trademarks because it incorporates the term STATE FARM in its entirety and merely adds: (i) the generic word “life”, and inclusion of either the term “cloud” or “health”, which can be associated with the products and services provided by the Complainant (ii) the gTLD “.com”. See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 3, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
For the purposes of testing confusing similarity, the generic Top-Level Domain “.com” can be ignored.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is 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.
After analyzing the case, including the content of the websites under the disputed domain names, the Panel notes that there is no evidence that Respondent has any trademark rights related to STATE FARM nor that Respondent provides a bona fide offering of goods or services or that there is a legitimate noncommercial or fair use of the disputed domain names.
Complainant alleges that Respondent is not associated with, affiliated with or sponsored by State Farm, and that Respondent is not commonly known under the disputed domain names.
The Panel also notes that the WHOIS information identifies Respondent as “RenLin Xia”.
Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Furthermore, the Panel finds that Respondent has failed to provide corroborating support demonstrating it is commonly known by the disputed domain name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
In addition, the Panel verifies that Complainant argues that Respondent is not using, nor are there any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. In response, Respondent agrees that neither website is in use. Respondent’s registration and passive holding of the disputed domain names fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to the Policy. See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see alsoTMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
In fact, Respondent includes no evidence regarding its “first rights” related to the disputed domain names, or why Respondent’s profession as a practicing physician is of any relevance here. In this regard, the Panel notes that Respondent includes only blurry pictures, and does not provide any information about them.
In view of the above, the Panel finds that Respondent does not have legitimate rights or interests in the disputed domain names.
The Panel finds that the Respondent has intentionally registered the disputed domain names, which are confusingly similar to Complainant’s registered marks and resolve to inactive websites. Based on all the above facts, it is highly unlikely that the Respondent was not aware of the Complainant’s trademark rights when the disputed domain names were registered.
In fact, there are no facts set out in the available record which could conceivably justify the registration of the disputed domain names by the Respondent.
In light of this, considering Complainant’s numerous trademark registrations and its extensive and longstanding use of the mark in commerce, the Panel finds that Respondent’s passive holding of the disputed domain names is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Malayan Banking Berhad v. Beauty, Success & Truth International, D2008-1393 (WIPO Dec. 8, 2008) (finding that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name).
Also, in its response, Respondent affirms that if Complainant wants the disputed domain names, Respondent needs to be compensated for his cost plus changes in rebranding. Respondent’s offer to Complainant to transfer the disputed domain names under compensation can be also consider an evidence of bad faith pursuant to the Policy. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Services, FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Deutsche Telekom AG v. Domain Admin, D2008-0625 (WIPO June, 10, 2008) (Respondent’s offer to sell the disputed domain name, which is confusingly similar to Complainant’s mark, is evidence of bad faith.)).
In view of the above, and considering the totality of the circumstances of the case, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Complainant has therefore satisfied the third and final requirement of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmlifecloud.com> and <statefarmlifehealth.com> domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: August, 31, 2016.
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