State Farm Mutual Automobile Insurance Company v. Zhang Yi Ping
Claim Number: FA0611000849072
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ustatefarm.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregis.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 18, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ustatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <ustatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <ustatefarm.com> domain name.
3. Respondent registered and used the <ustatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a leader in the insurance and financial services industry. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996). Complainant utilizes the State Farm mark in connection with providing insurance and financial goods and services to the public. Complainant has registered the <statefarm.com> domain name in order to operate a website promoting Complainant’s insurance and financial goods and services to Internet users.
Respondent registered the <ustatefarm.com>
domain name on
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."
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.”).
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.
Complainant’s USPTO registration of the STATE FARM mark
predates Respondent’s registration of the disputed domain name. The Panel finds that Complainant’s USPTO
registration is sufficient to establish Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum
Respondent’s <ustatefarm.com>
domain name is confusingly similar to Complainant’s STATE FARM mark. The disputed domain name includes the STATE
FARM mark in its entirety without alteration.
Because the addition of top-level domains, such as “.com,” do not serve
to differentiate between a domain name and a mark, the only difference between
the disputed domain name and Complainant’s mark is the addition of the letter
“u” to the disputed domain name. The
addition of one letter to Complainant’s mark does not distinguish the disputed
domain name from Complainant’s mark.
Thus, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant’s assertion establishes a prima
facie case for purposes of the Policy, shifting the burden to Respondent to
demonstrate that it does have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
Respondent had the opportunity to submit a Response in order to provide
the Panel with evidence or arguments that demonstrate Respondent’s rights or
legitimate interests in the disputed domain name. Respondent’s failure to provide a Response
suggests to the Panel that Respondent does not have rights or legitimate
interests in the disputed domain names.
Nonetheless, the Panel will examine the available evidence to determine
whether Respondent has rights or legitimate interests as contemplated by Policy
¶ 4(c). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent is using the <ustatefarm.com> domain name to redirect Internet users to a website located at the <i-webpark.com> domain name. Respondent’s website appears to be the homepage for a commercial domain parking service. The website offers information about various domain parking services. The Panel finds that this use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is relying on a domain name including Complainant’s mark to redirect Internet users to Respondent’s website. Further, the Panel finds that Respondent’s use is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent’s website appears to be a commercial website involved in selling domain parking services. See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
There is no available evidence to indicate that Respondent
is commonly known by the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Zhan Yi Ping,”
a name unrelated to the disputed domain name.
Further, Complainant asserts that Respondent is not affiliated with
Complainant in any way and does not have permission from Complainant to use
Complainant’s mark in a domain name.
Thus, the Panel finds that Respondent is not commonly known by the
disputed domain name and lacks rights or legitimate interests pursuant to
Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where the respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ustatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark. Internet users seeking Complainant’s genuine website at <statefarm.com> may accidentally find themselves redirected to Respondent’s website. Once redirected to Respondent’s website, Internet users may mistakenly believe that Respondent’s website is somehow affiliated with Complainant. Respondent is profiting from this confusion through the operation of its commercial website. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ustatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 8, 2007
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