State Farm Mutual Automobile Insurance Company v. Zhichao
Claim Number: FA2204001990670
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmaren.com>, registered with Dynadot, 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 April 1, 2022; the Forum received payment on April 1, 2022.
On April 6, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <statefarmaren.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2022 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@statefarmaren.com. Also on April 6, 2022, 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 May 2, 2022, 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 provides insurance services, including property and auto insurance. Complainant has 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 Sep. 18, 2012). The <statefarmaren.com> domain name is confusingly similar to Complainant’s STATE FARM trademark because it incorporates the entire trademark and adds the descriptive term “aren” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <statefarmaren.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s STATE FARM trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the name resolves to a parked page.
Respondent registered and uses the <statefarmaren.com> domain name in bad faith. Respondent failed to respond to several cease and desist letters from Complainant. Furthermore, Complainant registered and uses the disputed domain for bad faith attraction for commercial gain. Finally, Respondent had constructive and actual knowledge of Complainant’s rights in the STATE FARM trademark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,744,366 StateFarm ARENA (logo), registered May 7, 2019 for services in class 43;
No. 5,721,556 StateFarm ARENA (logo), registered April 9, 2019 for services in class 43;
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. 2,444,342 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. 2,617,951 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. 2,591,039 STATE FARM MUTUAL FUNDS (word), registered July 9, 2002 for services in class 36; 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 <statefarmaren.com> was registered on February 15, 2022.
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 asserts rights in the STATE FARM trademark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Here, Complainant provides evidence of its registration with the USPTO for the STATE FARM trademark (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012, and No. 5,744,366 registered May 7, 2019).
Therefore, the Panel find that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant argues that the <statefarmaren.com> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark and added a descriptive word and a gTLD. Domain names which incorporate the entire trademark are usually considered confusingly similar, while deleting spaces and adding a gTLD generally creates no distinction between a complainant’s trademark and a disputed domain name under Policy ¶ 4(a)(i). See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”). Further, adding a descriptive word does not create a sufficient distinction. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Here, Respondent has incorporated the entire trademark, omitting the space in the mark and adding the “.com” gTLD and the term “aren.” The addition of the term “aren” may only add to the confusing similarity because Complainant owns trademark rights in the STATE FARM ARENA trademark, and the combination used in the disputed domain name is likely to be seen as typo of the Complainant’s STATE FARM ARENA trademark. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims that Respondent does not have rights or legitimate interests in the <statefarmaren.com> domain name because the Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s STATE FARM trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy 4 ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). 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 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). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <statefarmaren.com> and no information suggests that Complainant authorized Respondent to use the STATE FARM trademark. Rather, the WHOIS information lists the registrant of the domain as “Zhichao.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <statefarmaren.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to a parked page. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant has attached a screen shot of the resolving parked webpage featuring click-through links for products and services related to the same offered by Complainant. Therefore, the Panel find 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).
Complainant argues that Respondent has registered and uses the disputed <statefarmaren.com> domain in bad faith because Respondent registered the domain name to create bad faith attraction for commercial gain. Registration and use of a disputed domain name which is essentially identical to a complainant’s trademark, and using that domain name to host parked click-through links is evidence of bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Here, Respondent’s disputed domain name is not sufficiently distinct from Complainant’s STATE FARM trademark and is also essentially identical to Complainant’s STATE FARM ARENA trademark. The related/competing parked click-through links on the disputed domain name’s resolving website may be further evidence that Respondent is attempting to lure confused consumers to its domain name presumably for commercial gain. Therefore the Panel agrees with Complainant and find that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent has registered and uses the domains in bad faith because it failed to respond to Complainant’s cease and desist letters which may be evidence of bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith); see also Bloomberg Finance L.P. v. Usman Ik / Divers Marine Contracting LLC, FA1812001820452 (FORUM Jan. 10, 2019) (“…in light of the nonexclusive nature of Policy ¶ 4(b), failure to respond to a cease and desist notice has been held to support a finding of bad faith.”). Here, Complainant has sent to Respondent multiple cease and desist letters to which Respondent has failed to respond. Therefore the Panel find bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent had constructive and actual knowledge of Complainant’s rights in the trademark prior to registering the domain name. While constructive notice may not be sufficient to establish bad faith, actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support 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).”). Here, Complainant argues that Respondent had constructive knowledge of its rights in the STATE FARM trademark given Complainant’s prior registration of the trademark with the USPTO. Further, Complainant argues that Respondent had actual knowledge of its rights in the trademark given Complainant’s long, continuous use of the trademark. Additionally, the Panel notes the fame associated with the STATE FARM trademark. Therefore, the Panel find that Respondent has registered and uses the disputed domain in 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 <statefarmaren.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 16, 2022
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