DECISION

 

State Farm Mutual Automobile Insurance Company v. Domain Administrator / China Capital Investments Limited

Claim Number: FA1709001748943

 

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 Domain Administrator / China Capital Investments Limited (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 14, 2017; the Forum received payment on September 14, 2017.

 

On September 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.com> 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 September 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017 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@statefarmneighborhoodofgood.com, postmaster@statefarmceter.com, postmaster@statefarmcwnter.com, postmaster@state-farmcenter.com, postmaster@statefarmsneighborhoodofgood.com, and postmaster@statefarmneighborhood.com.  Also on September 18, 2017, 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 October 13, 2017, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that engages in business under the STATE FARM mark in both the insurance and financial services industries. Complainant has rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered Sept. 18, 2012).

2.    Respondent’s <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.com>[1] domain names are confusingly similar to Complainant’s mark because the entire mark is incorporated, less the space, and adds the generic/descriptive term “neighborhood,” “center” (or a misspelled version of “center”), or the phrase “neighborhood of good”  is incorporated along with the “.com” generic top-level domain (“gTLD”).

3.    Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized Respondent to use the STATE FARM mark in a domain name.

4.    The domain names resolve to a blank webpage that reads “Coming Soon.”  There is no legitimate content associated with the domain names; thus Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.

5.    Respondent’s registration and use of the domain names are in bad faith under the Policy. Respondent registered the domain names with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Further, the domain names resolve to inactive websites, further evidence of bad faith under Policy ¶ 4(a)(iii).

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the STATE FARM mark.  Respondent’s domain names are confusingly similar to Complainant’s STATE FARM mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.com>domain names and that Respondent registered and uses the domain names in bad faith.

 

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.

 

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 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 and/or Confusingly Similar

 

Complainant has rights in the STATE FARM mark based upon registration with the USPTO (e.g., Reg. No. 4,211,626, registered Sept. 18, 2012).  “Registration of a mark with the USPTO sufficiently establishes the required rights in [a] mark for purposes of the Policy.” Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017).

 

Next, Complainant contends Respondent’s <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.com> domain names are confusingly similar to Complainant’s mark because the entire mark is incorporated, less the space, with a hyphen or an additional “s” added.  Other additions include the generic/descriptive term “neighborhood,” “center” (or a misspelled version of “center”), or the phrase “neighborhood of good.” All of the domain names incorporate the “.com” gTLD. In Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016), it was determined that confusing similarity existed where a domain name contained a complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and top-level domain. See also PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds confusing similarity exists between Respondent’s domain names and the STATE FARM mark.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.com> domain names. 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.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant argues that Respondent has no rights or legitimate interests in the domain names. Complainant contends that Respondent is not commonly known by the domain names, nor has Complainant authorized Respondent to use the STATE FARM mark in a domain name. Where no response is in the record, WHOIS information is looked to in determining Policy ¶ 4(c)(ii) along with a complainant’s assertions. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS lists “Domain Administrator / China Capital Investments Limited” as registrant of record. Coupled with Respondent’s lack of a Response and Complainant’s assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the domain names in accordance with Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues the domain names resolve to a blank webpage that reads “Coming Soon.” Where no legitimate content is associated with a domain name, no rights or legitimate interests may exist. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Complainant has shown that there is no legitimate content associated with the domain names; thus the Panel agrees that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s registration and use of the domain names is in bad faith under the Policy. Specifically, Respondent registered the domain names with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Panels look to a totality of circumstances in making findings of actual knowledge, while disregarding contentions of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent has incorporated Complainant’s mark entirely, and numerous panels have agreed that the STATE FARM mark is famous. See, e.g., 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”). Accordingly, the Panel agrees that Respondent must have had actual knowledge of the STATE FARM mark and Complainant’s rights when registering the domain names, thus establishing bad faith per Policy ¶ 4(a)(iii).

 

Further, Complainant has provided evidence that the domain names resolve to an inactive website, which is further evidence of bad faith under Policy ¶ 4(a)(iii). Inactive holding may lead to a finding of bad faith. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Because Respondent continues to hold the domain names without using them, the Panel agrees Respondent has registered and used the domain names in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that <statefarmneighborhoodofgood.com>, <statefarmceter.com>, <statefarmcwnter.com>, <state-farmcenter.com>, <statefarmsneighborhoodofgood.com>, and <statefarmneighborhood.com> be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  October 19, 2017