State Farm Mutual Automobile Insurance Company v. li houchang
Claim Number: FA2210002017055
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), USA, represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois. Respondent is li houchang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stateferm.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 21, 2022; Forum received payment on October 21, 2022.
On October 24, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <stateferm.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. 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 October 24, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@stateferm.com. Also on October 24, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, State Farm Mutual Automobile Insurance Company, provides insurance and financial services under the “State Farm” brand. Complainant has rights in the STATE FARM mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,271,354, registered on August 22, 2017). The disputed domain name is confusingly similar to Complainant’s mark. The use of the Complainant’s mark with a typographical error makes the reading of the syntax of the domain name confusingly similar.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the dispute domain name and Complainant has not authorized Respondent to use the STATE FARM mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. As of the date of this Complaint, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming.
iii) Respondent registered and uses the disputed domain name in bad faith. Also, Respondent’s failure to respond to Complainant’s cease and desist letters is further evidence of bad faith. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the STATE FARM mark based on Complainant’s long-term use of the mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on February 27, 2019.
2. Complainant has established rights in the STATE FARM mark based on registration with the USPTO (e.g., Reg. No. 5,271,354, registered on August 22, 2017).
3. The disputed domain name resolves to a blocked page with a warning message for users the domain name may contain scams.
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 on registration with the USPTO (e.g., Reg. No. 5,271,354, registered on August 22, 2017). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the STATE FARM mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it incorporates the Complainant’s entire mark, “State Farm,” with a typographical error changing the letter “a” in the word “farm” to the letter “e.” The use of the Complainant’s mark with a typographical error makes the reading of the syntax of the domain name. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because the disputed domain name resolves to a blocked page with a warning message for users the domain name may contain scams.
The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.) The particular circumstances of this case that the Panel has considered are:
i) Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930. For over 70 years Complainant has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. As a result of over seventy years of use, and substantial financial investment in marketing and promoting its mark, Complainant's STATE FARM mark has become a famous mark in the United States;
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and
iii) Respondent did not reply to Complainant’s cease-and-desist letter.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant further contends that Respondent’s use of the disputed domain name constitutes typosquatting and is evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting…is the intentional misspelling of words with intent to intercept and siphon traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”). The Panel finds that Respondent’s use of the disputed domain name constitutes typosquatting and is evidence of bad faith registration and use pursuant to Policy 4(a)(iii).
Complainant additionally contends that Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com.” Respondent’s registration of the domain name was intended to be in bad faith. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the STATE FARM mark at the time of its registering the disputed domain name, and finds that Respondent registered 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 <stateferm.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 22, 2022
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