State Farm Mutual Automobile Insurance Company v. Zhichao Yang
Claim Number: FA1612001708147
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Zhichao Yang (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmsclaims.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <statefarmsclaims.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 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@statefarmsclaims.com. Also on December 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the STATE FARM mark to conduct its business of providing insurance and financial services.
Complainant holds a registration for the STATE FARM service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,979,585, registered June 11, 1996).
Respondent registered the domain name <statefarmsclaims.com> on or about January 19, 2016.
The domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent has not been commonly known by the domain name.
Respondent is not associated with Complainant in any way, and Complainant has not licensed or otherwise authorized Respondent to use the STATE FARM mark in any manner.
Respondent is not making either a bona fide offering of goods or services by means of, or a legitimate non-commercial or fair use of, the domain name.
The domain name resolves to a webpage with click-through links to insurance-related websites and to those of companies operating in competition with the business of Complainant, presumably for Respondent’s profit.
Respondent has no rights to or legitimate interests in the domain name.
The domain name and its resolving web page serve to confuse Internet users.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the STATE FARM mark when it registered the domain name.
Respondent registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015), finding that:
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark ....
This is so without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <statefarmsclaims.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The domain name contains the mark in its entirety, eliminating the space between “State” and “Farm,” while adding an extraneous letter “s” and the descriptive term “claims,” which relates to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum April 30, 2007), a panel there finding that:
[T]he elimination of spaces between terms [of the mark of another in creating a domain name based on that mark] and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
See also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the addition to a UDRP complainant’s mark of the term “batteries,” which described that complainant’s products, and of the generic top-level domain “.com,” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark). Further, see Kohler Co. v. Curley, FA 890812 (Forum March 5, 2007) (finding confusing similarity where the domain name <kohlerbaths.com> contained a UDRP complainant’s mark in its entirety, merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Finally, it is well established that adding an extra letter to the mark of another in forming a domain name does not alleviate confusing similarity. On the point, see OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum August 10, 2015: “Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ ....”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <statefarmsclaims.com> domain name, that Respondent is not associated with Complainant in any way, and that Complainant has not licensed or otherwise authorized Respondent to use the STATE FARM mark in any manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Administrator” of “PrivacyGuardian.org.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum September 21, 2006) (finding that a respondent was not commonly known by a disputed domain names where the relevant WHOIS information identified their registrant by a name other than the domain name while there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute). See also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015):
The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that the <statefarmsclaims.com> domain name resolves to a webpage with click-through links to insurance-related websites and to those of companies operating in competition with the business of Complainant, presumably for Respondent’s profit. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum September 14, 2006), finding that:
the respondent’s use of the complainant’s … mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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).
See also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <statefarmsclaims.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Independent Insurance Agents & Brokers of America, Inc. v. Liqian, FA1409001582252 (Forum November 10, 2014) (concluding, under Policy ¶ 4(b)(iii), that because a UDRP complainant operated in the insurance business while a respondent used a disputed domain name to display hyperlinks promoting insurance companies and quote rates, that respondent disrupted that complainant’s business, thus demonstrating bad faith registration and use of the domain name).
We are also convinced by the evidence that Respondent’s registration and use of the <statefarmsclaims.com> domain name, which is confusingly similar to Complainant’s STATE FARM service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See, for example, Staples, Inc. v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the … domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
See also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014):
The Panel observes that … Respondent’s … domain name leads to a website that features links to products that … compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the … domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, it is evident from the record that Respondent knew of Complainant and its rights in the STATE FARM mark when it registered the <statefarmsclaims.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012):
[T]he Panel [finds] that, …, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO April 24, 2002), the panel there finding bad faith registration of a contested domain name where a respondent “must have known about the Complainant's mark when it registered the subject domain name."
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <statefarmsclaims.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 1, 2017
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