State Farm Mutual Automobile Insurance Company v. shi lei
Claim Number: FA2001001879252
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwstatefarm529.com>, registered with NameSilo, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2020; the Forum received payment on January 16, 2020.
On January 16, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <wwwstatefarm529.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 January 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2020 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@wwwstatefarm529.com. Also on January 17, 2020, 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 February 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a famous business that engages in both the insurance and financial services industry. Complainant claims rights in the STATE FARM trademark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). Respondent’s <wwwstatefarm529.com> domain name is confusingly similar to Complainant’s STATE FARM trademark as it incorporate the trademark in its entirety, less the space, merely adding the letters “www”, the numbers “529” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <wwwstatefarm529.com> domain name. Respondent is not licensed or authorized to use Complainant’s STATE FARM trademark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users away from Complainant to Respondent’s parked webpage.
Respondent has registered and uses the <wwwstatefarm529.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. In addition, Respondent fails to make an active use of the disputed domain name. Furthermore, Complainant sent a cease and desist letter to Respondent, to which Respondent failed to respond or comply. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the STATE FARM trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,211,626 StateFarm (logo), registered September 18, 2012 for services in class 36;
No. 4,227,731 StateFarm (logo), registered October 16, 2012 for services in class 36;
No. 5,271,354 STATE FARM (word), registered August 22, 2017 for services in class 36;
No. 2,319,867 STATE FARM BANK (word), registered February 15, 2000 for services in class 36;
No. 4,211,628 StateFarmBank (logo), registered September 18, 2012 for services in class 36;
No. 4,211,629 StateFarmBank (logo), registered September 18, 2012 for services in class 36;
No. 2,444,342 STATEFARM.COM (word), registered April 17, 2001 for services in class 36;
No. 2,444,341 STATEFARM.COM (word), registered April 17, 2001 for services in class 38;
No. 2,450,890 STATEFARM.COM (word), registered May 15, 2001 for services in class 42;
No. 2,198,246 STATE FARM BAYOU CLASSIC (word), registered October 20, 1998 for services in class 35;
No. 2,617,951 STATE FARM CATASTROPHE SERVICES (word), registered September 10, 2002 for services in class 36;
No. 2,617,950 STATE FARM CATASTROPHE TEAM (word), registered September 10, 2002 for services in class 36;
No. 4,492,572 STATE FARM CENTER (word), registered March 4, 2014 for services in class 43;
No. 4,492,573 StateFarm CENTER (fig), registered March 4, 2014 for services in class 43;
No. 4,335,809 State Farm Companies Foundation (logo), registered May 14, 2013 for services in class 36;
No. 4,273,289 State Farm Companies Foundation (logo), registered January 8, 2013 for services in class 36;
No. 2,544,840 STATE FARM DOLLARS (word), registered March 5, 2002 for services in class 35;
No. 4,590,399 STATE FARM FEDERAL CREDITUNION (fig), registered August 19, 2014 for services in class 36;
No. 4,441,297 STARE FARM HOMEINDEX (word), registered November 26, 2013 for services in class 42;
No. 3,368,928 STATE FARM LEARNING AND TEACHING EXCHANGE (word), registered January 15, 2008 for services in class 41;
No. 2,591,039 STATE FARM MUTUAL FUNDS (word), registered July 9, 2002 for services in class 36;
No. 4,407,111 State Farm Neighborhood Assist (word), registered September 24, 2013 for services in class 36;
No. 4,641,334 State Farm Neighborhood Sessions (word), registered November 18, 2014 for services in class 36;
No. 4,641,336 State Farm Neighborhood Sessions (fig), registered November 18, 2014 for services in class 36;
No. 4,641,349 State Farm Neighborhood Sessions (fig), registered November 18, 2014 for services in class 41; and
No. 2,381,383 STATE FARM PREMIER SERVICE (word), registered August 29, 2000 for services in class 36.
The Complainant is also the owner of STATE FARM trademark registrations in Canada and the European Union.
The disputed domain name <wwwstatefarm529.com> was registered on August 10, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the STATE FARM trademark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides copies of its STATE FARM registrations with the USPTO (e.g., Reg. No. 4,211,626, registered on Sep. 18, 2012). Therefore, the Panel find that Complainant has rights in the STATE FARM trademark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <wwwstatefarm529.com> domain name is confusingly similar to the STATE FARM trademark as it contain the trademark in its entirety, merely adding letters, numbers and the “.com” gTLD. Additions of random letters and/or numbers along with a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ 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.”). The Panel notes that in the rpesent case, the Respondent has used the Cpoomplainant’s distinctive terademark, written the same in one word, and adding the non-distinctive and/or descriptive letters “www,” the numbers “529,” along with a “.com” gTLD. The Panel agree with Complainant and find that the <wwwstatefarm529.com> domain name is confusingly similar to Complainant’s STATE FARM trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant argues that Respondent has no rights or legitimate interests in the <wwwstatefarm529.com> domain name. Specifically, Complainant argues that Respondent is not licensed or authorized to use the STATE FARM trademark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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.). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record in the present case identifies Respondent as “shi lei,” and there is no other evidence to suggest that Respondent was authorized to use the STATE FARM trademark or is commonly known by the disputed domain name. The Panel therefore find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <wwwstatefarm529.com> domain name is evinced by its failure to use the disputed domain name for a bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent is attempting to create the impression of association with Complainant to trade off the good-will associated with Complainant. Attempting to create a false affiliation to divert Internet users seeking complainant’s website is not a bona fide offering or legitimate use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”). Here, Complainant asserts that Respondent is intending to attract individuals looking for information about Complainant, where instead Respondent hosts a parked webpage with click through links for college savings plans similarly offered by Complainant. Therefore, the Panel agree with Complainant and find that Respondent has does not have rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and uses the <wwwstatefarm529.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims that Respondent created a likelihood of confusion with Complainant and its trademarks by registering the domain name that incorporate—in its entirety—Complainant’s STATE FARM trademark, and giving the impression that interested individuals will receive information regarding Complainant, the fact is that individuals are sent to a parked webpage with click through links for college savings plans similarly offered by Complainant. The Panel agree with Complainant and find that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Next, Complainant asserts that Respondent has failed to make an active use of the disputed domain name. Failure to actively use a domain name may be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum M Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots of Respondent’s parked webpage that features click through links for college savings plans similarly offered by Complainant. Therefore, the Panel weigh these assertions and find that either this use shall be considered inactive use or some sort of active use, the use is at least not in good faith. The Panel thereby find that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark. Actual knowledge of a complainant’s rights in a trademark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts, given the global reach of the Internet, the fact that Complainant is widely known indicates Respondent must have been aware of Complainant when it registered the disputed domain name. The Panel agree that the evidence provided by the Complainant strongly indicates that Respondent had actual knowledge of Complainant’s rights in the STATE FARM trademark when it registered the <wwwstatefarm529.com> domain name, thereby supporting a finding of bad faith under 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 <wwwstatefarm529.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 14, 2020
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