State Farm Mutual Automobile Insurance Company v. shilei
Claim Number: FA1506001623634
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is shilei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmdrivesafeandsave.com>, registered with Hangzhou AiMing Network Co., LTD.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2015; the Forum received payment on June 9, 2015. The Complaint was received in both Chinese and English.
On June 10, 2015, Hangzhou AiMing Network Co., LTD confirmed by e-mail to the Forum that the <statefarmdrivesafeandsave.com> domain name is registered with Hangzhou AiMing Network Co., LTD and that Respondent is the current registrant of the name. Hangzhou AiMing Network Co., LTD has verified that Respondent is bound by the Hangzhou AiMing Network Co., LTD 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 June 11, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 1, 2015 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@statefarmdrivesafeandsave.com. Also on June 11, 2015, the Chinese language 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 July 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant has rights in the STATE FARM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered on June 11, 1996). Respondent’s <statefarmdrivesafeandsave.com> domain name is confusingly similar to Complainant’s STATE FARM mark because it is differentiated by only the additions of the descriptive words “drive,” “safe,” “and,” and “save,” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the disputed domain name as the WHOIS information lists “shilei” as Registrant. Respondent has not submitted any evidence to indicate that it is commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s STATE FARM mark. Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to host links to competitors of Complainant. Respondent lacks rights or legitimate interests in the domain name because it has offered the disputed domain name for sale to Complainant.
Respondent has offered to sell the disputed domain name to Complainant, which constitutes bad faith. Respondent uses the disputed domain name for the purpose of disrupting Complainant’s business by hosting links to competitors of Complainant. Respondent uses the resolving website to capitalize on the confusion of Internet users in order to profit commercially by hosting links to competitors of Complainant. Respondent registered the <statefarmdrivesafeandsave.com> domain name with constructive or actual knowledge in Complainant’s rights in the STATE FARM mark.
Respondent
Respondent did not submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <statefarmdrivesafeandsave.com> domain name.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the STATE FARM mark in conjunction with its business operations in the insurance and financial industry. Complainant has rights in the STATE FARM mark through its registration with the USPTO (e.g., Reg. No. 1,979,585, registered on June 11, 1996). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even where the respondent lives or operates in a different country. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <statefarmdrivesafeandsave.com> domain name is confusingly similar to Complainant’s STATE FARM mark because it is differentiated by only the additions of the words “drive,” “safe,” “and,” and “save,” and the gTLD “.com.” Past panels have found that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Complainant argues that the additional terms, “drive,” “safe,” “and,” and “save,” relate to its business operations within the auto insurance industry. Past panels have found that when words that describe a mark holder’s business operations are added to a mark in the creation of a domain name, the resulting domain name is confusingly similar to the mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Therefore, the Panel finds that Respondent’s <statefarmdrivesafeandsave.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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. The WHOIS information lists “shilei” as registrant of record, and Respondent has failed to provide any evidence to indicate that it is commonly known by the disputed domain name. Moreover, Complainant states that Respondent is not authorized to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <statefarmdrivesafeandsave.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host links to competitors of Complainant. Past panels have found that such use does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Complainant alleges that Respondent lacks rights and legitimate interests in the <statefarmdrivesafeandsave.com> domain name because Respondent has offered the domain for sale to Complainant. Past panels have found a willingness to sell a disputed domain to a complainant sufficient to establish a lack of Respondent’s rights and legitimate interests in that domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <statefarmdrivesafeandsave.com> domain name under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent registered the domain name for the purpose of selling it to Complainant. Complainant argues that it sent Respondent a “Cease and Desist” letter, to which Respondent responded by offering to sell the <statefarmdrivesafeandsave.com> domain name to Complainant for $3,168. Past panels have found that an offer of sale from a respondent to a complainant suffices to show bad faith under Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant alleges that Respondent registered and uses the disputed domain name for the purpose of disrupting Complainant’s business operations because Respondent uses the resolving website to host links to competitors of Complainant. Past panels have found that hosting links to competitors of complainants constitutes disruption under Policy ¶ 4(b)(iii), thereby showing bad faith in use and registration. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and uses the <statefarmdrivesafeandsave.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <statefarmdrivesafeandsave.com> domain name to host links to competitors of Complainant, as explained above. Past panels have found hosting competitive links to constitute bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds Respondent has engaged in such behavior and finds that Respondent registered and uses the <statefarmdrivesafeandsave.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with constructive or actual knowledge of Complainant’s rights in the STATE FARM mark. Complainant argues that its longstanding use of the STATE FARM mark should have informed Respondent of Complainant’s rights in the mark. Past panels have found that constructive notice is insufficient to find bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). However, past panels have also found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark at the time of registration, and finds that Respondent registered the <statefarmdrivesafeandsave.com> domain in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <statefarmdrivesafeandsave.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 14, 2015
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