State Farm Mutual Automobile Insurance Company v. Yu Ke Rong
Claim Number: FA1709001750476
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Yu Ke Rong
(“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm.press>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 September 25, 2017; the Forum received payment on September 25, 2017.
On September 26, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <statefarm.press>
domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 September 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2017 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@statefarm.press. Also on September 27, 2017, 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 October 20, 2017, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that engages in business under the STATE FARM mark in both the insurance and financial services industries. Complainant has 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 Sept. 18, 2012), establishing rights in the mark. Respondent’s <statefarm.press> is confusingly similar to Complainant’s mark because the entire mark is incorporated, less the space, and the generic top-level domain (“gTLD”) “.press” is added as a suffix.
ii) Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the STATE FARM mark in a domain name. The domain name resolves to a blank webpage that reads “This site can’t be reached.” There is no legitimate content associated with the disputed domain name, thus Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. Respondent attempted to sell the domain name to Complainant in its response to Complainant’s cease and desist letter, in violation of Policy ¶ 4(b)(i) (“. . . we would like to consider your request for the transfer, on the condition that you compensate us $800.”). Respondent registered the domain name with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Further, the disputed domain name resolves to an inactive website, further evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response. The Panel notes <statefarm.press> was registered on May 24, 2017.
However, the Panel notes Complainant’s attached Exhibit, in which Respondent made the following argument resisting Complainant’s remarks in its cease and desist letter, “‘StateFarm’ consists of two common words ‘State’ and ‘Farm’, and we have no infringement on any rights of others, so we have the right to hold and use the domain name reasonably.”
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Preliminary Issue: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
The grounds of Complaint's request for the language of the proceedings in English are: Complainant sent several emails to the Respondent in English; Respondent replied to the Complainant via email in English; and the email communication from Respondent to the Complainant demonstrates that the Complainant is capable of understanding English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. In the absence of Response and no objection to the Complainant's request for the language of proceeding, after considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 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 (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 claims rights in the STATE FARM mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,211,626, registered Sept. 18, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore finds that Complainant’s registrations of the STATE FARM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <statefarm.press> is confusingly similar to Complainant’s mark because the entire mark is incorporated, less the space, and the gTLD “.press” is added as a suffix. Neither the elimination of spacing nor the addition of a gTLD may be considered distinguishing. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Accordingly, the Panel agrees that Respondent’s <statefarm.press> is confusingly similar to Complainant’s 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), 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 (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 (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 argues that Respondent has no rights or legitimate interests in the domain name. Complainant contends that Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the STATE FARM mark in a domain name. Where no response is on record, WHOIS information is looked to in determining Policy ¶ 4(c)(ii) along with a complainant’s assertions. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel notes that the WHOIS lists “Melinda Elkins” as registrant of record. Coupled with Respondent’s lack of a Response and Complainant’s assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by <statefarm.press> per Policy ¶ 4(c)(ii).
Additionally, Complainant argues <statefarm.press> resolves to a blank webpage that reads, “This site can’t be reached. Where no legitimate content is associated with a domain name, no rights or legitimate interests may exist. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant asserts that there is no legitimate content associated with the disputed domain name, thus the Panel agrees that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. Respondent purportedly attempted to sell the domain name to Complainant in its response to Complainant’s cease and desist letter, in violation of Policy ¶ 4(b)(i). (“. . . we would like to consider your request for the transfer, on the condition that you compensate us $800.”). Offers targeted specifically at a complainant may serve as evidence of bad faith under Policy ¶ 4(b)(i). See Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900, specifically noting that it would cost the complainant more to enforce its rights legally than to succumb to the respondent's attempted extortion). While the amount requested here differs from Prudential Ins. Co. of Am. by $100, the Panel agrees the specific sales offer made to Complainant demonstrates bad faith under Policy ¶ 4(b)(i).
Respondent registered the domain name with actual and/or constructive knowledge of the STATE FARM mark and Complainant’s rights. Panels look to a totality of circumstances in making findings of actual knowledge, while disregarding contentions of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent has incorporated Complainant’s mark entirely, and numerous panels have agreed that the STATE FARM mark is famous. See, e.g., State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is a very famous mark, and Complainant has clearly established rights in the [mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks and use in commerce since 1930). Accordingly, the Panel agrees that Respondent must have had actual knowledge in the STATE FARM mark and Complainant’s rights when registering the mark—bad faith per Policy ¶ 4(a)(iii).
Further, Complainant argues that <statefarm.press> resolves to an inactive website, further evidence of bad faith under Policy ¶ 4(a)(iii). Inactive holding may lead to a finding of bad faith. See Pirelli & C.S.P.A. v. Tabriz, FA 9211798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). The Panel agrees that Respondent’s inactive holding amounts to nonexclusive evidence of 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 <statefarm.press> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 25, 2017
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