State Farm Mutual Automobile Insurance Company v. Zhichao Yang
Claim Number: FA1209001461251
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwstatefarms.com>, registered with GoDaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2012; the National Arbitration Forum received payment on September 5, 2012.
On September 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwstatefarms.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 September 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@wwwstatefarms.com. Also on September 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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. 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
I. Complainant alleges:
a. Complainant began operating under the STATE FARM mark in 1930.
b. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996). See Complainant’s Exhibit 1.
c. Respondent registered the <wwwstatefarms.com> domain name on April 8, 2012. See Complainant’s Exhibit 2.
d. The <wwwstatefarms.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
e. Respondent is not commonly known by the <wwwstatefarms.com> domain name.
f. Respondent is not associated with, affiliated with, or sponsored by Complainant.
g. Respondent is not authorized to use a domain name incorporating Complainant’s STATE FARM mark.
h. Respondent’s <wwwstatefarms.com> domain name resolves to a website hosting hyperlink advertisements for insurance companies that directly compete with Complainant. See Complainant’s Exhibit 3.
i. Respondent offered to sell the <wwwstatefarms.com> domain name to Complainant for $200.
j. Respondent’s registration and use of the <wwwstatefarms.com> domain name disrupts Complainant’s business.
k. Respondent registered and uses the <wwwstatefarms.com> domain name for the purpose of attracting Internet users seeking information on Complainant and creating confusion as to the source or sponsorship of the website.
l. Respondent knew or should have known about Complainant’s rights in the STATE FARM mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its STATE FARM mark.
2. Respondent’s <wwwstatefarms.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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."
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 claims that it began operating under the STATE FARM mark in 1930. Complainant asserts that it registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). See Complainant’s Exhibit 1. While the Panel notes that Respondent resides or operates in China, the Panel determines that Complainant owns rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that the <wwwstatefarms.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the disputed domain name contains Complainant’s STATE FARM mark, absent the space, the prefix “www,” the letter “s,” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that the removal of a space and these additions to Complainant’s STATE FARM mark fail to remove the <wwwstatefarms.com> domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
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 argues that Respondent is not commonly known by the <wwwstatefarms.com> domain name. Complainant alleges that Respondent is not associated with, affiliated with, or sponsored by Complainant and that Respondent is not authorized to use a domain name incorporating Complainant’s STATE FARM mark. The Panel notes that the WHOIS information identifies “Zhichao Yang” as the registrant of the disputed domain name. In light of the lack of a Response and Complainant’s evidence, the Panel holds that Respondent is not commonly known by the <wwwstatefarms.com> 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s <wwwstatefarms.com> domain name resolves to a website hosting hyperlink advertisements for insurance companies that directly compete with Complainant. See Complainant’s Exhibit 3. The Panel determines that the hosting of competing hyperlinks on a website resolving from the confusingly similar disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
According to Complainant, Respondent offered to sell the <wwwstatefarms.com> domain name to Complainant for $200. See Complainant’s Exhibit 4. The Panel finds that Respondent’s offer to sell the disputed domain name is evidence that Respondent lacks rights and legitimate interests in the <wwwstatefarms.com> 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)).
Complainant alleges that Respondent offered the <wwwstatefarms.com> domain name to Complainant for $200. See Complainant’s Exhibit 4. Complainant argues that this offer to sell is evidence of bad faith registration and use. The Panel finds that Respondent offered to sell the disputed domain name for more than its out-of-pocket costs. The Panel concludes that Respondent registered and uses the <wwwstatefarms.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Complainant asserts that Respondent’s registration and use of the <wwwstatefarms.com> domain name disrupts Complainant’s business. As noted above, Complainant claims that Respondent is hosting competing hyperlinks on the resolving website. As previous UDRP panels have determined that hosting competing hyperlinks does disrupt a complainant’s business, the Panel finds that Respondent registered and uses the <wwwstatefarms.com> domain name in bad faith according to Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant avers that Respondent registered and uses the <wwwstatefarms.com> domain name for the purpose of attracting Internet users seeking information on Complainant. The Panel infers two things: (1) that Respondent creates confusion as to Complainant’s affiliation with the disputed domain name by registering the confusingly similar domain name containing Complainant’s mark and (2) that Respondent commercially benefits from the hyperlinks by receiving click-through fees. The Panel makes both of these inferences. The Panel concludes that Respondent registered and uses the <wwwstatefarms.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant additionally contends that Respondent’s registration of the <wwwstatefarms.com> domain name constitutes typosquatting. Complainant argues that Respondent purposefully registered a disputed domain name that contained a common typographical error that takes advantage of typing mistakes made by Internet users. The Panel agrees with Complainant and finds Respondent guilty of typosquatting. The Panel determines that Respondent registered and uses the <wwwstatefarms.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
Finally, Complainant claims that Respondent knew or should have known about Complainant’s rights in the STATE FARM mark prior to registering the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwstatefarms.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 16, 2012
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