State Farm Mutual Automobile Insurance Company v. shi lei
Claim Number: FA2104001943375
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwlifeenhancedstatefarm.com>, registered with Sav.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On May 4, 2021, Sav.com, LLC confirmed by e-mail to the Forum that the <wwwlifeenhancedstatefarm.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 May 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2021 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@wwwlifeenhancedstatefarm.com. Also on May 5, 2021, 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 May 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a nationally-known insurance company. Complainant has rights in the STATE FARM trademark based on registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,211,626, registered Sep. 18, 2012). Respondent’s domain name <wwwlifeenhancedstatefarm.com> is confusingly similar to Complainant’s trademark since it incorporates Complainant’s STATE FARM trademark entirely, adding to it only the prefix “www,” the terms “Life Enhanced” which describe Complainant’s business, and the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <wwwlifeenhancedstatefarm.com> domain name as it is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the STATE FARM trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the disputed domain name to create an impression of association with Complainant and trade off of Complainant’s goodwill.
Respondent registered and uses the <wwwlifeenhancedstatefarm.com> domain name in bad faith. Respondent trades off the goodwill associated with the STATE FARM trademark to attract users to Respodnent’s website which contains a link to install a browser extension. Additionally, Respondent failed to respond to Complainant’s cease-and-desist requests. Furthermore, Respondent engages in typosquatting. Lastly, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the STATE FARM trademark based on the registration and fame of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,211,626 StateFarm (logo), registered September 18, 2012 for services in class 36;
No. 4,227,731 StateFarm (logo), registered October 16, 2012 for services in class 36;
No. 5,271,354 STATE FARM (word), registered August 22, 2017 for services in class 36;
No. 2,319,867 STATE FARM BANK (word), registered February 15, 2000 for services in class 36;
No. 4,211,628 StateFarmBank (logo), registered September 18, 2012 for services in class 36;
No. 4,211,629 StateFarmBank (logo), registered September 18, 2012 for services in class 36;
No. 2,444,342 STATEFARM.COM (word), registered April 17, 2001 for services in class 36;
No. 2,444,341 STATEFARM.COM (word), registered April 17, 2001 for services in class 38;
No. 2,450,890 STATEFARM.COM (word), registered May 15, 2001 for services in class 42;
No. 2,198,246 STATE FARM BAYOU CLASSIC (word), registered October 20, 1998 for services in class 35;
No. 2,617,951 STATE FARM CATASTROPHE SERVICES (word), registered September 10, 2002 for services in class 36;
No. 2,617,950 STATE FARM CATASTROPHE TEAM (word), registered September 10, 2002 for services in class 36;
No. 4,492,572 STATE FARM CENTER (word), registered March 4, 2014 for services in class 43;
No. 4,492,573 StateFarm CENTER (fig), registered March 4, 2014 for services in class 43;
No. 4,335,809 State Farm Companies Foundation (logo), registered May 14, 2013 for services in class 36;
No. 4,273,289 State Farm Companies Foundation (logo), registered January 8, 2013 for services in class 36;
No. 2,533,840 STATE FARM DOLLARS (word), registered March 5, 2002 for services in class 35;
No. 4,590,399 STARE FARM FEDERAL CREDITUNION (fig), registered August 19, 2014 for services in class 36;
No. 4,441,297 STARE FARM HOMEINDEX (word), registered November 26, 2013 for services in class 42;
No. 3,368,928 STATE FARM LEARNING AND TEACHING EXCHANGE (word), registered January 15, 2008 for services in class 41;
No. 2,591,039 STATE FARM MUTUAL FUNDS (word), registered July 9, 2002 for services in class 36;
No. 4,407,111 State Farm Neighborhood Assist (word), registered September 24, 2013 for services in class 36;
No. 4,641,334 State Farm Neighborhood Sessions (word), registered November 18, 2014 for services in class 36;
No. 4,641,336 State Farm Neighborhood Sessions (fig), registered November 18, 2014 for services in class 36;
No. 4,641,349 State Farm Neighborhood Sessions (fig), registered November 18, 2014 for services in class 41; and
No. 2,381,383 STATE FARM PREMIER SERVICE (word), registered August 29, 2000 for services in class 36.
The Complainant is also the owner of STATE FARM trademark registrations in Canada and the European Union.
The disputed domain name <wwwlifeenhancedstatefarm.com> was registered on February 8, 2021.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the STATE FARM trademark through its registration with the USPTO (e.g., Reg. No. 4,211,626; registered Sep. 18, 2012). Registration of a trademark with a national trademark agency is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wwwlifeenhancedstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM trademark since it contains the entire trademark, adding only the prefix “www,” the terms “Life Enhanced” which describe the Complainant’s business, and the gTLD “.com.” Generally, addition of the prefix “www” is insufficient to distinguish the disputed domain from a complainant’s trademark. See State Farm Mutual Automobile Insurance Company v. ICS INC., FA 1532366 (Forum Jan. 14, 2014) (observing that the addition of the prefix “www” and the letter “e” to the end of Complainant’s mark is insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Adding a gTLD and a descriptive term is likewise deemed insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Complainant also notes that it uses the phrase “Life Enhanced” as a trademark in public advertising for a mobile app., and has provided a screenshot showing Complainant’s website advertising its Life Enhanced mobile application, where Life Enhanced is market as a trademark with the “TM” symbol. The Panel notes that the said screenshot is not dated, but in absence of any comments from the Respondent, the Panel will handle Complainant’s use of Life Enhanced as pre-dated the Respondent’s registration of the disputed domain name. To summarize, the wording “lifeenhanced” as part of the disputed domain name, in fact further create a confusing similarity with the Complainant’s trademark STATE FARM. Therefore, the Panel finds that the disputed domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant argues that Respondent does not have any rights or legitimate interests in the <wwwlifeenhancedstatefarm.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STATE FARM trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the trademark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information identifies “shi lei” as the registrant and Complainant asserts that it has not authorized Respondent to use the STATE FARM trademark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <wwwlifeenhancedstatefarm.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name to create an impression of association with Complainant and trade off of Complainant’s goodwill. Using a disputed domain name to pass off as a complainant or as affiliated with a complainant to divert users and trade off of a complainant’s goodwill does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant contends that Respondent attempts to suggest a connection with Complainant in order to divert users to Respondent’s own website which resolves either to a page offering users to install a web search browser extension or a web page advertising a service to conver PDF file through a brower extension. Complainant provides screenshots indeed showing that the disputed domain name resolves a website featuring a click-button for user to move forward with installing a browser extension. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant aruges that Respondent registered and uses the <wwwlifeenhancedstatefarm.com> domain name in bad faith since Respondent uses the domain to attract users for commerical gain by implying an affiliation with Complainant and diverting users to its own website where it offers browser extensions. Under Policy ¶ 4(b)(iv), using a disputed domain name to pass off as connected to a complainant and to offer unrealted hyperlinks and services is indeed evidence of bad faith. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). As noted above, Complainant provides screenshots showing that the disputed domain name resolves to a parked webpage which invites users to download a browser extension. The Panel therefore finds bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent registered and uses the disputed domain name in bad faith since it failed to respond to Complainant’s cease-and-desist demand. Failure to respond with a cease-and-desist notice has been held to constitute bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provided copies of three cease-and-desist letters it had sent to Respondent, which Complainant asserts Respondent did not respond to. The Panel notes that there is no formal need to respond to a cease-and-desist letter, however, if the recipient of such letter is serious, and can show good faith, as well as identifying the sender of the letter as a serious holder of trademark rights, it is indeed better to reply, rather than indicating a silent confirmation of the bad faith allegations. Thus, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Furthermore, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Per Policy ¶ 4(a)(iii), when a respondent introduces errors into a disputed domain name to take advantage of users’ misspellings it constitutes typosquatting, which is itself evidence of bad faith. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”); see also Black & Decker Corp. v. Khan, FA 137223 (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). Thus, the Panel agrees with Complainant and finds bad faith per Policy ¶ 4(a)(iii).
Finally, the Complainant aruges that Respondent registered the <wwwlifeenhancedstatefarm.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the STATE FARM trademark based on the fame of the trademark and time of registration. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the trademark. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant argues Respondent knew of Complainant’s rights in the STATE FARM trademark based on Complainant’s long-term use the trademark and “statefarm.com” domain name. The Panel agrees that actual knowledge is present, and finds bad faith pursuant to 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 <wwwlifeenhancedstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 1, 2021
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