State Farm Mutual Automobile Insurance Company v. Ryan G Foo / PPA Media Services
Claim Number: FA1611001701143
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hstatefarm.com> and <wwwstatefarmfcu.com>, registered with Internet Domain Service BS Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2016; the Forum received payment on November 2, 2016.
On November 7, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <hstatefarm.com> and <wwwstatefarmfcu.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 November 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2016 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@hstatefarm.com, and postmaster@wwwstatefarmfcu.com. Also on November 7, 2016, 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 December 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
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. 1,979,585, registered June 11, 1996). Respondent’s <hstatefarm.com> and <wwwstatefarmfcu.com> are confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by <hstatefarm.com> and <wwwstatefarmfcu.com>, nor has Complainant authorized Respondent to use the STATE FARM mark in domain names. Further, Respondent has not made any use of the domain names which would support Policy ¶¶ 4(c)(i) or (iii) rights because the domain names display only hyperlinks in direct competition with Complainant.
Respondent registered and used <hstatefarm.com> and <wwwstatefarmfcu.com> in bad faith. Respondent’s arrangement of competing hyperlinks on the resolving websites constitutes bad faith disruption under Policy ¶ 4(b)(iii). Further, actual and/or constructive knowledge is present, which is an additional indication of Respondent’s bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is State Farm Mutual Automobile Insurance Company which lists its address as Bloomington, IL, USA. Complainant is the owner of domestic and international registrations for the marks STATE FARM and STATE FARM INSURANCE, as well as related marks used in connection with the goods and services Complainant offers in the financial and insurance industries. Complainant has continuously used the STATE FARM mark since at least as early as 1996. Complainant also provides its services over the internet via its official website <statefarm.com>.
Respondent is Ryan G Foo / PPA Media Services, of Santiago, Chile. Respondent’s registrar’s address is listed as Nassau, The Bahamas. The Panel notes that <hstatefarm.com> and <wwwstatefarmfcu.com> were registered on or about November 17, 2015.
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(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. 1,979,585, registered June 11, 1996). 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 here 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 the disputed domains, <hstatefarm.com> and <wwwstatefarmfcu.com> are confusingly similar to the STATE FARM mark for the following reasons: addition of letter “h” to full mark, less the space, and the “.com” generic top-level domain (“gTLD”) in <hstatefarm.com>; addition of “www” to full mark, less the space, and insertion of letters “fcu” and gTLD “.com” to <wwwstatefarmfcu.com>. Past panels have found that the elimination of spacing and addition of the “.com” gTLD are irrelevant under the Policy. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Further, the addition of a single letter is not distinguishing. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). Prior panels have also found that a string of indiscriminate letters fails to add distinction. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Finally, adding the prefix “www” cannot differentiate a domain name from a mark. See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar). The Panel here finds that Respondent’s <hstatefarm.com> and <wwwstatefarmfcu.com> domain names are confusingly similar to the STATE FARM mark.
Respondent makes no contention with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
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 as registrant “Ryan G Foo / PPA Media Services.” The Panel here finds that Respondent is not commonly known by <hstatefarm.com> and <wwwstatefarmfcu.com> under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent has not made any use of the domain names which would support Policy ¶¶ 4(c)(i) or (iii) rights because the domain names display only hyperlinks in direct competition with Complainant. Competing hyperlinks have not been considered to amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel here finds that Respondent’s inclusion of competing hyperlinks does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. Complainant posits that Respondent’s arrangement of competing hyperlinks on the resolving websites constitutes bad faith disruption under Policy ¶ 4(b)(iii). Where competing hyperlinks resolve on the website of a disputed domain name, previous panels have found bad faith disruption. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). The Panel notes Complainant’s evidence of such links in the instant case. The Panel here finds that such hyperlinks compete with Complainant and its insurance offerings and therefore Respondent has registered and used <hstatefarm.com> and <wwwstatefarmfcu.com> in bad faith per Policy ¶ 4(b)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hstatefarm.com> and <wwwstatefarmfcu.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 15, 2016
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