State Farm Mutual Automobile Insurance Company v. Hoang Le
Claim Number: FA1611001701154
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Hoang Le (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm.online>, registered with GoDaddy.com, LLC.
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 November 2, 2016; the Forum received payment on November 2, 2016.
On November 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarm.online> 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 November 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@statefarm.online. Also on November 3, 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 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) Here 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
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 <statefarm.online> is confusingly similar to Complainant’s mark because the entire mark is incorporated, less the space, and the “.online” top-level domain (“TLD”) is appended thereto.
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 “Website Coming Soon.” 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.
Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. 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 failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <statefarm.online> 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(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 therefore finds that Complainant’s registration of the STATE FARM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant claims that <statefarm.online> is confusingly similar to the STATE FARM mark. The disputed domain name contains the mark in its entirety, differing only through the omission of the space between the words and the addition of the TLD “.online.” Elimination of spacing between words of a mark and addition of the “.online” TLD has been found to increase the possibility of consumer confusion. See Morgan Stanley v. TONY / shentony. FA1637186 (Forum Oct. 10, 2014) (holding the presence of the “.online” TLD to increase the possibility of consumer confusion in finding <morganstanley.online> confusingly similar to the MORGAN STANLEY mark). Accordingly, this Panel finds the disputed domain name is confusingly similar to Complainant’s STATE FARM mark.
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 (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 “Hoang Le” 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.online> per Policy ¶ 4(c)(ii).
Additionally, Complainant argues <statefarm.online> resolves to a blank webpage that reads “Website Coming Soon.” Where no legitimate content is associated with a domain name that contains a mark without authorization, 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 has proved this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent’s registration and use of the disputed domain name is in bad faith under the Policy and that 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.online> 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). Respondent registered <statefarm.online> on or about January 1, 2016. The Panel finds this non-use for over 10 months constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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.online> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 8, 2016
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