State Farm Mutual Automobile Insurance Company v. Ready Asset Limited
Claim Number: FA1312001532401
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Ready Asset Limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tstatefarm.com>, registered with Key-Systems GmbH.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2013; the National Arbitration Forum received payment on December 2, 2013. The Complaint was received in both Chinese and English.
On December 23, 2013, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <tstatefarm.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 23, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 13, 2014 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@tstatefarm.com. Also on December 23, 2013, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds:
State Farm Trademark Rights to the Name “State Farm” and “State Farm Insurance”
State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank. State Farm engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
State Farm first began using the “State Farm” trademark in 1930 and registered it with the Patent and Trademark Office on June 11, 1996 and registered “State Farm Insurance” on September 11, 1979. State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm” including, but not limited to,:
the State Farm Insurance 3 oval logo; State Farm, State Farm Bank, State Farm Bank logo, State Farm Bayou Classic, State Farm Catastrophe Services, State Farm Companies Foundation, State Farm Mutual Funds, State Farm Dollars, State Farm Green Space, State Farm Red Magazine
In Canada State Farm has registered the State Farm 3 oval logo; State Farm; State Farm Companies Foundation; State Farm Insurance, StateFarm.com, StateFarm.ca, and others. In the European Community State Farm and the State Farm 3 oval logo is registered. In Mexico the State Farm 3 oval logo, State Farm and State Farm Insurance are registered. The domain name registered by the Respondent incorporates the State Farm registered trademark, “State Farm” and is confusingly similar to State Farm registered marks.
For over 70 years State Farm has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
State Farm on the Internet
State Farm developed its Internet web presence in 1995 using the domain name statefarm.com. At its web site, State Farm offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents. State Farm has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.
Conduct on Part of Respondent
In July of 2013 it was brought to the attention of State Farm that Complainant’s trademark "State Farm" had been registered as part of the domain name “TStateFarm.com.” The domain name resolves to a parked web page containing click-through ads and links to products and services in direct competition of the Complainant.
On July 26, 2013, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent at bAno8GrX1h4iMtaQapFj5CCTtCJABYDVB5RFBiUA@tstatefarm.com.whoisproxy.org. On August 30, 2013, another cease and desist letter was sent to the Respondent via email at bAno8GrX1h4iMtaQapFj5CCTtCJABYDVB5RFBiUA@tstatefarm.com.whoisproxy.org; however, there was no response from the Respondent. On October 16, 2013 a cease and desist letter was sent, along with a draft arbitration complaint. (See Attachment 4)
Respondent Has No Legitimate Interest in the Domain Name
Because of State Farm’s substantial efforts, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning. The domain name at issue is confusingly similar to the State Farm servicemark that it has been using since 1930 and to other State Farm registered marks. Moreover, the domain name is confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.
The Respondent has no right or legitimate interest in the disputed domain name. The Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the servicemark "State Farm." State Farm did not authorize the Respondent to register the domain name or to use the State Farm trademark for the Respondent’s business purposes.
Respondent is not commonly known under the domain name “TStateFarm.com.” It is believed that the Respondent has never been known by or performed business under the domain name at issue. The Respondent does not possess independent intellectual property rights in the name. In addition, State Farm does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name.
State Farm believes that the Respondent registered the name to create the impression of association with State Farm, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm.
Respondent Has Acted in Bad Faith
It is clear that the name registered by Respondent is confusingly similar to State Farm trademarks. Indeed, the name includes the State Farm registered mark "State Farm.” This domain is clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the site.
State Farm has filed numerous complaints relating to its domain names under the ICANN Uniform Dispute Resolution Process. The arbitrators have consistently found that the use of a State Farm trademark in a domain name, whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm trademarks and that such registrations have been done in bad faith. (See State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc., FA94662 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA94427 (Nat. Arb. Forum, May 27, 2000), State Farm Mut. Auto. Ins. Co. v. I & B, FA94719 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA94335 (Nat. Arb. Forum April 24, 2000), State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA94663 (Nat. Arb. Forum June 1, 2000), State Farm Mut. Auto. Ins. Co. v. Try Harder & Company, FA94730 (Nat. Arb. Forum June 15, 2000), State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA94802 (Nat. Arb. Forum June 13, 2000), State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA94808 (Nat. Arb. Forum June 6, 2000), State Farm Mut. Auto. Ins. Co. v. HPR, FA94829 (Nat. Arb. Forum June 22, 2000), State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA0710001087389 (Nat. Arb. Forum, November 16, 2007), State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FAFA0710001087458 (Nat. Arb. Forum, November 20, 2007), State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FAFA0710001092410 (Nat. Arb. Forum, November 20, 2007). (Decisions can be viewed at www.icann.org)
As in the cases above, Respondent has no legitimate claim in the domain name at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the name in bad faith.
In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed domain name was in bad faith in that:
a) Respondent has never been known by the name “State Farm.” The Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain name in question. This obvious lack of right to use the name in question shows bad faith registration and use.
b) Despite having registered the domain name “TStateFarm.com,” Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm. Registering a domain name for products and services that it does not have authority to offer, shows that the Respondent has acted in bad faith.
c) While the Respondent registered the domain name “TStateFarm.com,” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to a parked web page containing click-through ads and links to products and services in direct competition of the Complainant. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
d) The Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming. Even if the Respondent did put information on its website, its content along with the proposed domain name, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers. Failure to resolve the domain name to legitimate content indicates that the Respondent has no legitimate reason for having registered the name and demonstrates that it has registered and is using the name in bad faith.
See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c )(i); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c )(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
e) Respondent has been sent Complainant’s cease and desist letter for notification of Respondent’s unauthorized use of the name in question. Failure to respond with legitimate information for use or intention to use the name and then failure to comply with Complainant’s cease and desist request demonstrates it has registered and is using the name in bad faith.
f) Respondent’s use of “TStateFarm.com” domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
g) Respondent’s use of “TStateFarm.com” domain name constitutes typosquatting and is evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting…is the intentional misspelling of words with intent to intercept and siphon traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”); National Geographic Soc. v. Stoneybrook Inv., FA96263 (Nat. Arb. Forum Jan. 11, 2001) finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark; see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000); eBay, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000).
h) The Respondent registered its domain name on June 30, 2013. (See Attachment 2) State Farm registered its domain name “statefarm.com” on May 24, 1995. (See Attachment 5) The Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com.” The Respondent’s registration of the domain name was intended to be in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 the following three elements to obtain an order canceling or transferring a domain name:
(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(e), 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 (Nat. Arb. 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.”).
Complainant has rights in the STATE FARM mark, which it uses in connection with insurance and other financial services. Complainant owns registrations for the STATE FARM mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996). Respondent resides or operates outside the United States (namely China). However, a complainant need not own a trademark registration in a respondent’s country of operation. It is sufficient a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). All Complainant must do is demonstrate it has SOME rights, not that it has superior rights over Respondent. Therefore, the Panel finds Complainant has satisfactorily proven its rights in the STATE FARM mark under Policy ¶4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Respondent’s <tstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The disputed domain name includes Complainant’s mark in its entirety while adding the letter “t” to the beginning of Complainant’s mark and adding the generic top-level domain (“gTLD”) “.com.” The disputed domain name also removes the space between the two words in Complainant’s STATE FARM mark.
First, the addition of a letter to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”).
Next, the addition of a gTLD and removal of a space does not sufficiently distinguish a disputed domain name from a complainant’s trademark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. 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)). Therefore, the Panel finds Respondent’s <tstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 claims Respondent does not have rights or legitimate interests in the <tstatefarm.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STATE FARM mark in any way. The WHOIS record for the disputed domain name now lists “Ready Limited” as the domain name registrant. Before this UDRP proceeding was brought, the disputed domain name was registered using a privacy service. Panels look to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds Respondent is not commonly known by the <tstatefarm.com> domain name under Policy ¶4(c)(ii) because Respondent was not authorized by Complainant to use the STATE FARM mark, and neither the WHOIS information nor the other evidence on record indicates otherwise.
The <tstatefarm.com> domain name resolves to a parked web page containing click-through ads and links to products and service that directly compete with Complainant. The links include “Cheap Auto Insurance Florida,” “Farm Bureau Insurance,” and “Allstate Auto Insurance Quote.” Using a confusingly similar domain name to display links of a complainant’s competitors does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Therefore, the Panel finds Respondent is not making a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii) because Respondent is using the <tstatefarm.com> domain name to promote links of Complainant’s competitors.
Finally, Respondent registered the disputed domain name using a privacy service. This means the owner of record (a bare trustee) acquires no rights to the disputed domain name. The beneficial owner likewise has acquired no rights because it has not publicly associated its name with the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <tstatefarm.com> domain name in bad faith. Respondent’s use of the disputed domain name is disrupting Complainant’s business because the resolving website features links to Complainant’s competitors. The links include “Cheap Auto Insurance Florida,” “Farm Bureau Insurance,” and “Allstate Auto Insurance Quote.” In previous cases, panels have found that disrupting a complainant’s business by using a confusingly similar domain name to promote links of a complainant’s competitors demonstrates bad faith under Policy ¶4(b(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)). Therefore, the Panel finds Respondent registered and is using the <tstatefarm.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because the resolving website features links of Complainant’s competitors.
Finally, Respondent registered the disputed domain name using a privacy service. In a commercial context, this raises a rebuttable presumption Respondent has registered and is using the disputed domain name in bad faith. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 20, 2014
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