State Farm Mutual Automobile Insurance Company v. Huade Wang
Claim Number: FA2204001992439
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Huade Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmloyatyrewards.com>, <statefarmloyaltyreward.com>, <statfarmloyaltyrewards.com>, and <statefarmloyaltrewards.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2022; the Forum received payment on April 14, 2022.
On April 14, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <statefarmloyatyrewards.com>, <statefarmloyaltyreward.com>, <statfarmloyaltyrewards.com>, and <statefarmloyaltrewards.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. 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 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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@statefarmloyatyrewards.com, postmaster@statefarmloyaltyreward.com, postmaster@statfarmloyaltyrewards.com, and postmaster@statefarmloyaltrewards.com. Also on April 15, 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 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, State Farm Mutual Automobile Insurance Company, offers insurance services. Complainant asserts rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,211,626, registered September 18, 2012). The disputed domain names are confusingly similar to Complainant’s mark, each consisting of the STATE FARM mark, without spacing, the term “loyalty rewards,” and the generic top-level domain (“gTLD”) “.com” in various misspelled forms; the first removes the second “L” in “loyalty,” the second removes the final “S” from “rewards,” the third removes the “E” in the STATE FARM mark, and the final disputed domain name removes the “Y” from “loyalty.”
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to create initial interest confusion for Internet users seeking information about Complainant.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to host parked webpages with click-through advertisement links. The disputed domain names bear no indication that Respondent has made any preparations for their legitimate use. Respondent engaged in typosquatting in registering the disputed domain names. Respondent did not respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain names were all registered on February 23, 2022.
2. Complainant has established rights in the STATE FARM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 4,211,626, registered September 18, 2012).
3. The disputed domain names’ resolving websites display their status as autogenerated sites containing click-through advertisement links.
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 asserts rights in the STATE FARM mark based upon registration with the USPTO (e.g., reg. no. 4,211,626, registered September 18, 2012). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the STATE FARM mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain names <statefarmloyatyrewards.com>, <statefarmloyaltyreward.com>, <statfarmloyaltyrewards.com>, and <statefarmloyaltrewards.com> are confusingly similar to Complainant’s mark, each consisting of the STATE FARM mark, without spacing, the term “loyalty rewards,” and the gTLD “.com” in various misspelled forms; the first removes the second “L” in “loyalty,” the second removes the final “S” from “rewards,” the third removes the “E” in the STATE FARM mark, and the final disputed domain name removes the “Y” from “loyalty.”
The Panel observes that the addition of generic or descriptive terms and gTLDs to a mark does not distinguish a disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). Likewise, the removal of spacing is not considered sufficient to differentiate a disputed domain name from a mark. Finally, mere misspellings or typographical errors do not distinguish a disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). Therefore, the Panel finds that the disputed domain names are confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not licensed or authorized to use Complainant’s STATE FARM mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed 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 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). The WHOIS information for the disputed domain names lists the registrant as “Huade Wang.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant contends that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to create initial interest of confusion for Internet users seeking information about Complainant. Any attempt to divert traffic using a disputed 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 Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE 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)). Therefore, the Panel finds Respondent does not use the disputed domain names for any 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 finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent uses the disputed domain names to host parked webpages with click-through advertisement links. Use of a disputed domain name to host advertisements constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant has provided screenshots of the disputed domain names’ resolving webpages, showing their status as autogenerated sites containing click-through advertisement links. Thus, the Panel finds Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmloyatyrewards.com>, <statefarmloyaltyreward.com>, <statfarmloyaltyrewards.com>, and <statefarmloyaltrewards.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 19, 2022
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