State Farm Mutual Automobile Insurance Company v. xixin xing
Claim Number: FA1202001431735
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is xixin xing (“Respondent”), represented by Bill Gao of Dacheng Law Offices, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmgroup.mobi>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2012; the National Arbitration Forum received payment on February 27, 2012.
On February 28, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <statefarmgroup.mobi> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 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@statefarmgroup.mobi. Also on March 2, 2012, 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.
A timely Response was received and determined to be complete on March 22, 2012.
On April 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends that:
- It is a United States company that has been doing business under the name “State Farm” since 1930.
- It owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") as it is: STATE FARM (Reg. No. 1,979,585 registered June 11, 1996); or STATE FARM BANK (Reg. No. 2,319,867 registered February 15, 2000);
- It owns several trademark registrations with the Canadian Intellectual Property Office (“CIPO”) as follows:
i. STATE FARM INSURANCE (Reg. No. TMA424,004 registered March 4, 1994); and
ii. STATE FARM INSURANCE COMPANIES (Reg. No. TMA405,034 registered November 20, 1992).
- It owns a trademark registration with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) as follows:
i. STATE FARM INSURANCE and Design (Reg. NO. 175844 registered June 13, 1998).
- It has maintained a web presence since 1995 when it registered its official <statefarm.com> domain name.
- Because of the Complainant’s efforts, the public associates the phrase “state farm” with owner of the service mark “State Farm”, which is distinctive and acquired a secondary meaning.
- Respondent registered the disputed domain name on November 2, 2011.
- The disputed domain name is confusingly similar with the Complainant’s trademark
- Respondent does not have rights or legitimate interests in the disputed domain name.
- The Respondent registered and is using the disputed domain name in bad faith to create the impression of association with the Complainant’s trademark; to trade off the good will associated with the Complainant’s trademark.
- The Respondent failed to reply to the Complainant’s cease and desist letter
B. Respondent, by its Response replied that:
- Complainant has no exclusive prior rights in its trademarks in China
- STATE FARM is a generic name that could conceivably be used by numerous entities in China as the State of China owns many lands.
- Complainant’s trademark registrations are regional to the United States and Canada, and Complainant does not own rights to the STATE FARM mark in China.
- The Complainant has not provided any evidence that its trademarks are well known through China.
- The registration of domain names is on a “first come, first registration” principle, thereby granting rights in the domain name to Respondent.
- “.mobi” technology is still in its early stages and Respondent’s current passive use of the domain name through a parking page does not preclude the possibility that it has rights or legitimate interests in the domain name.
- Respondent registered the domain name with the intention of establishing a mobile Internet services website rather than to sell it to Complainant.
- Because the domain name is comprised of generic or descriptive connotations, Respondent has not registered the domain in bad faith.
- Respondent could not have known about Complainant’s rights in the STATE FARM mark as it lives in China where Complainant does not own any trademark registrations. Failure to conduct a trademark research does not constitute bad faith.
- Registering and holding a domain name for future development in regards to an existing business or project in development does not in itself constitute bad faith.
The Complainant holds a USPTO and internationally protected trademark STATE FARM and has proven all the three elements of the Policy
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.
The Complainant has presented the Panel with several trademark registrations that it owns throughout North America and Europe, including the following:
USPTO
- STATE FARM (Reg. No. 1,979,585 registered June 11, 1996);
- STATE FARM BANK (Reg. No. 2,319,867 registered February 15, 2000);
- STATE FARM BAYOU CLASSIC (Reg. No. 2,198,246 registered October 20, 1998);
- STATE FARM BENEFIT MANAGEMENT ACCOUNT (Reg. No. 1,579,406 registered January 23, 1990);
- STATE FARM INSURANCE (Reg. No. 1,125,010 registered September 11, 1979); and
- STATE FARM INSURANCE COMPANIES (Reg. No. 645,890 registered May 21, 1957).
and CIPO
- STATE FARM INSURANCE (Reg. No. TMA424,004 registered March 4,1994);
- STATE FARM INSURANCE COMPANIES (Reg. No. TMA405,034 registered November 20, 1992).
and OHIM
- STATE FARM INSURANCE and Design (Reg. NO. 175844 registered June 13, 1998).
The Panel finds that Complainant’s many trademark registrations are sufficient to establish Policy ¶ 4(a)(i) rights in the STATE FARM mark, regardless of Respondent’s physical location. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds further that the <statefarmgroup.mobi> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i), as the disputed domain name contains Complainant’s mark entirely, absent the space between the terms, while adding the generic term “group” and the generic top-level domain (“gTLD”) “.mobi.” It is universally held that panels should not consider the top level domain name when comparing a disputed domain name to a Complainant’s mark under Policy ¶4(a)(i). See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”). The Panel finds adding the generic term “group” is not sufficient to render the domain name distinct from the mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”).
While Respondent contends that the <statefarmgroup.mobi> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel considers that the Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized or licensed Respondent to use the STATE FARM mark in any way. The Panel notes that the WHOIS information for the disputed domain name identifies “xixin xing” as the registrant. Based upon this information, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further alleges that Respondent does not have rights or legitimate interests in the disputed domain name as evidenced from its usage of the domain name. Complainant argues that Respondent’s domain name “sends a person to a web page which states it is provided by Global Interactive Works Pte Ltd and contains banner ads with links for various products and companies.” The Panel notes that Respondent has admitted that the domain name is merely parked at this time. The Panel finds that such use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Respondent contends that it registered the disputed domain name with the intention of creating an internet services website, and that because “.mobi” technology is “still in an early state and there is currently a lack of critical mass of potential users” for its website, it is passively using the domain name. Respondent contends that it is legitimate for it to possess the domain name while coming up with a website and business plan. Further, Respondent asserts that it did not know of Complainant, and that domain name registrations should be on a “first come, first registered” status. The Panel cannot agree with the Respondent’s assertions and cannot find that Respondent has rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), as registering domain name comprising a mark which holds international registration and parking it cannot represent bona fide use under Policy ¶ 4(c)(i))
Respondent also argues that the terms of the <statefarmgroup.mobi> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. It is true that the Complainant’s trademarks comprise of generic terms, but by extensive use in insurance and financial business, the generic terms associated become distinctive and acquired a secondary meaning. The Panel cannot agree with the Respondent’s assertions, according to which in China there are many resources owned by state, the STATE FARM would be a very natural and generic association of words for the Chinese people. By making such an assertion, the Respondent ignores the borderless structure of the Internet, which makes that the Respondent’s website equally accessible internationally.
For these reasons, the Panel finds that the Complainant has also proven the second element under Policy ¶ 4(a)(ii),
Complainant contends that Respondent registered the disputed domain name in order to direct Internet users to its resolving website. However, Complainant notes that the resolving website contains very little information and a few third-party links. Complainant argues that such use of the disputed domain name is evidence of bad faith as it is clear that Respondent registered the domain name to create confusion with Complainant’s marks in order to achieve more visitors to its website.
The Panel considers that from such Respondent’s use of the disputed domain name it may be inferred that it registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Further, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the STATE FARM mark. Complainant argues that it has used the STATE FARM mark on the Internet since 1995 and that the fame of its mark indicates that Respondent had actual knowledge of Complainant's mark and rights. On the other side, Respondent argues that it has not registered or used the disputed domain name in bad faith, as its purpose in registering the domain name was for an Internet services website and that its holding of the domain name with this business plan in mind does not prove bad faith.
Further, Respondent asserts that it has not attempted to sell the domain name to anyone, and that Complainant is not known in China where Respondent is located while the Respondent has no obligation to perform a trademark search before registering the disputed domain name and such failure cannot amount to bad faith.
The Panel notes that the majority Respondent’s assertions were already dismissed above at the analysis of first two elements of the Policy in the case. The only Respondent’s assertion to which the Panel considers necessary to relates to an alleged lack of obligation to perform a trademark search when registering a domain name. The Respondent refers even to a decision of National Arbitration Forum dated April 18, 2011, Formlinc Info. v. Credit Suisse Group, FA 96750 (Nat. Arb. Forum Apr. 18, 2011), which allegedly considers that merely the failure to perform a trademark search cannot amount to bad faith. The Panel gave due consideration to the Respondent assertions, but as it is universally held in all UDRP administrative procedures suppliers practice, it cannot be held such a defense, when the disputed domain name is confusingly similar with a trademark, which for a simple Internet research gives millions of results.
For all these reasons, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Therefore, the Panel finds that the Complainant has also proven the second element 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 <statefarmgroup.mobi> domain name be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka,
Panelist
Dated: April 18, 2012
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