State Farm Mutual Automobile Insurance Company v. JH Kang
Claim Number: FA2002001886146
Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois. Respondent is JH Kang ("Respondent"), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmcenter.co>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2020; the Forum received payment on February 28, 2020.
On March 2, 2020, GoDaddy.com, LLC confirmed by email to the Forum that the <statefarmcenter.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 3, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 March 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant is a nationally known company engaged in the insurance and financial services industries. Complainant began using the STATE FARM mark in 1930, and owns various trademark registrations for STATE FARM and related marks in the United States and other jurisdictions. Complainant currently owns the name rights to an event stadium in central Illinois named State Farm Center, and owns United States trademark registrations for STATE FARM CENTER in both standard character and stylized form.
Respondent registered the disputed domain name <statefarmcenter.co> in November 2019. Complainant states that the domain name initially resolved to a page containing clickthrough links to services similar to those offered by Complainant; the links were subsequently removed, leaving no substantive content on the page. Complainant states further that Respondent is not associated with, affiliated with, or sponsored by Complainant; that Complainant has not authorized Respondent to register the domain name or to use Complainant's mark; and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <statefarmcenter.co> is confusingly similar to Complainant's STATE FARM marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <statefarmcenter.co> incorporates Complainant's registered STATE FARM trademark, omitting the space and adding the generic term "center" and the ".co" top-level domain. It also incorporates Complainant's registered STATE FARM CENTER mark, omitting the spaces and adding the ".co" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's marks. See, e.g., State Farm Mutual Automobile Insurance Co. v. State Farm c/o Sarah Shultz, FA 1603817 (Forum Mar. 16, 2015) (finding <statefarmhr.co> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. Michael Swanson, FA 1512271 (Forum Sept. 8, 2013) (finding <statefarmcenter.com> confusingly similar to STATE FARM). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to display pay-per-click advertisements. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., State Farm Mutual Automobile Insurance Co. v. WIS INC, FA 1879272 (Forum Feb. 10, 2020) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's well-known mark, for no apparent purpose other than to create and profit from confusion with Complainant. Respondent's sole use of the domain name has been to display pay-per-click advertisements to services similar to those offered by Complainant, presumably for the purpose of generating revenue. The Panel considers it reasonable to infer that Respondent's intent is likely either to sell the domain name at a profit to Complainant or a competitor thereof, or to attract Internet users by creating confusion with Complainant and its marks. Respondent's conduct is therefore indicative of bad faith registration and use under the Policy. See, e.g., State Farm Mutual Automobile Insurance Co. v. Moser, Troy, FA 1829743 (Forum Mar. 14, 2019) (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcenter.co> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 25, 2020
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