State Farm Mutual Automobile Insurance Company v. shi lei
Claim Number: FA2107001957037
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 NAMES
The domain names at issue are <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com>, registered with Sav.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2021; the Forum received payment on July 28, 2021.
On August 2, 2021, Sav.com, LLC confirmed by e-mail to the Forum that the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names are registered with Sav.com, LLC and that Respondent is the current registrant of the names. Sav.com, LLC has verified that Respondent is bound by the Sav.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 August 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2021 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@statefarfeedback.com, postmaster@statefarmfeedbac.com, postmaster@statefarmfeeback.com, postmaster@statefarmfeedbak.com, postmaster@statefarnfeedback.com, postmaster@statefarmfedback.com, postmaster@wwwstatefarmfeedback.com. Also on August 3, 2021, 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 August 25, 2021, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant has rights in the STATE FARM mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,211,626, registered September 18, 2012).
2. The <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com>[i] domain names are confusingly similar to Complainant’s STATE FARM mark as they contain various typographical errors of Complainant’s mark and add the word “feedback.”
3. Respondent lacks rights or legitimate interests in the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names. Respondent is not commonly known by the domain names, nor has Respondent been authorized by Complainant to use the STATE FARM mark.
4. Additionally, Respondent attempts to create the impression that Respondent’s websites are associated with Complainant to confuse internet users.
5. Respondent registered and uses the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names in bad faith. Respondent registered multiple confusingly similar domain names. Respondent also intentionally attempts to attract Internet users to Respondent’s websites.
6. Furthermore, Respondent failed to respond to Complainant’s cease and desist letters and engaged in typosquatting.
7. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark based on Complainant’s long-term use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names and that Respondent registered and uses the domain names 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 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”).
Complainant has rights in the STATE FARM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,211,626, registered September 18, 2012). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, the Panel holds that Complainant has demonstrated rights in the STATE FARM mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com>, and <wwwstatefarmfeedback.com> domain names are confusingly similar to Complainant’s STATE FARM mark as they contain various typographical errors of Complainant’s mark and the added word “feedback.” Adding a generic term, or a misspelled generic term, and a generic top-level-domain to a misspelling of a complainant’s mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Zhichao Yang, FA 1780211 (Forum May 3, 2018) (“Additionally, each at-issue domain name contains a misspelling or misprint of Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks where an extra letter is added to the marks in forming the domain name. Further, there is no doubt that Respondent picked the at-issue domain names precisely because they are easily confused with Complainant trademarks and Complainant’s trademarked <clips4sale.com> website.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”). Therefore, the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names are confusingly similar to Complainant’s STATE FARM mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.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.) The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com>, and <wwwstatefarmfeedback.com> domain names as Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed to Respondent any rights in the STATE FARM mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the domain names lists in this case lists the registrant as “Shi Lei,” and there is no other evidence in the record to suggest that Respondent was authorized to use the STATE FARM mark. Therefore, the Panel holds that Respondent is not commonly known by the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names per Policy ¶ 4(c)(ii).
Complainant argues Respondent does not use the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to confuse internet users into thinking Respondent is affiliated or associated with Complainant. Use of a domain name incorporating the mark of another to confuse internet users into thinking a respondent is affiliated with a complainant is not a bona fide offering goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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).”). The Panel agrees with Complainant that Respondent is attempting to confuse internet users into thinking Respondent is affiliated with Complainant by making use of the STATE FARM mark in the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names. Therefore, the Panel holds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant also contends Respondent registered and uses the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com>, and <wwwstatefarmfeedback.com> domain names in bad faith as Respondent fails to make active use of them. Failing to make active use of a domain name incorporating the mark of another can demonstrate bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The records indicates that as of the date of the Complaint, there was no legitimate content associated with the domain names and no demonstrable indication that legitimate content would be forthcoming. Thus, the Panel holds that Respondent registered and uses the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered and uses the <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com>, and <wwwstatefarmfeedback.com> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark. Actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith per Policy ¶ 4(a)(iii) and can be demonstrated by the fame and notoriety of a mark. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Because Respondent has incorporated exactly Complainant’s STATE FARM mark in the multiple domain names, it is apparent that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark.
The Panel finds Complainant has satisfied 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 <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 1, 2021
[i]The <statefarfeedback.com>, <statefarmfeedbac.com>, <statefarmfeeback.com>, <statefarmfeedbak.com>, <statefarnfeedback.com>, <statefarmfedback.com> and <wwwstatefarmfeedback.com> domain names were registered on May 12, 2021.
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