State Farm Mutual Automobile Insurance Company v. Zhichao Yang
Claim Number: FA2211002019966
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 NAMES
The domain names at issue are <statefarmcadroffers.com> and <statefarmcreditcardoffers.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 11, 2022; Forum received payment on November 11, 2022.
On Nov 11, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <statefarmcadroffers.com> and <statefarmcreditcardoffers.com> domain names are registered with Sav.com, LLC and that Respondent is the current registrant of the names. 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 November 16, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2022 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@statefarmcadroffers.com, postmaster@statefarmcreditcardoffers.com. Also on November 16, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the STATE FARM service mark and certain other registered trademarks incorporation the term STATE FARM including STATEFARM.COM, which are described below, and submits that it is a nationally known company that has been providing insurance and financial services under the mark STATE FARM since 1930.
Complainant submits that it has an established Internet presence since 1995 when it first registered its domain name <statefarm.com> which is the address of its web site, on which it offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents.
Complainant alleges that the disputed domain names <statefarmcadroffers.com> and <statefarmcreditcardoffers.com> are each identical or confusingly similar to its STATE FARM service mark in which it has registered rights.
Complainant argues that the syntax of the disputed domain names can only bring Complainant’s marks to mind and argues that generally, the addition of a related term or a generic term to a domain name is not sufficient to distinguish the domain name at issue from a complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶4(a)(i)).
Complainant adds that the phrase “credit card” is also related to Complainant’s offering of credit card products and services, and that the word “offers” is a generic term, implying that the user will find information related to making an application for a credit card offered by the Complainant.
Complainant further contends that the use of Complainant’s STATE FARM service mark, the words “credit card”, and the misspelled “cadr” makes the syntax of both of the disputed domain names confusingly similar to Complainant’s marks and submits that previous panels established under the Policy have found that misspellings, omissions, or typographical errors of generic terms, do not distinguish a domain name at issue from a complainant’s mark. See State Farm Mutual Automobile Insurance Company v. Huade Wang, FA 2204001992439 (Forum May 19, 2022) (finding mere misspellings or typographical errors do not distinguish a disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i)).
Complainant next alleges that Respondent has no right or legitimate interests in the disputed domain names arguing that Respondent is not commonly known by the disputed domain names <statefarmcadroffers.com> or <statefarmcreditcardoffers.com>; and contends that it is believed that Respondent has never been known by, or performed business under, the disputed domain names.
Complainant adds that Respondent does not possess independent intellectual property rights in the disputed domain names.
Complainant further asserts that Respondent is not associated with, affiliated with, or sponsored by Complainant and adds that Complainant did not authorize Respondent to register the disputed domain names or to use Complainant’s STATE FARM service mark for the Respondent’s business purposes. Complainant also asserts that Respondent has no contractual arrangement with Respondent that would allow Respondent to offer services under the STATE FARM name.
Complainant next alleges that the disputed domain names were registered and are being used in bad faith, arguing that the disputed domain names were registered to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the STATE FARM name; and/or to create initial interest confusion for individuals looking for information about Complainant.
Complainant refers to screen captures exhibited in an annex to the Complaint which illustrate that the disputed domain names each resolve to a parked page which Complainant argues contain click-through links for products and services similar to those offered by Complainant.
Complainant submits that therefore, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the site or location.
Complainant adds that Respondent’s use of Complainant’s STATE FARM mark to generate business is in direct conflict with Complainant’s interest and reflects that the Respondent has acted in bad faith.
Complainant further argues that Respondent is not using, nor has Respondent made any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, adding that as of the date of this Complaint, there was no legitimate content associated with the names and no demonstrable indication that legitimate content would be forthcoming.
Complainant submits that, even if Respondent did put information on its websites, its content along with the disputed domain names, would be in direct conflict with information Complainant itself already provides on its own website and would cause confusion to potential customers.
Complainant further contends that Respondent’s failure to cause the disputed domain names to resolve to legitimate content indicates that the Respondent has no legitimate reason for having registered the disputed domain names and demonstrates that it has registered and is using the names in bad faith. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c )(i).
In further support of its argument that the disputed domain names were registered and are being used in bad faith, Complainant submits that it has sent a cease and desist letter to Respondent, that Respondent has failed to respond to that letter and such failure demonstrates that Respondent has registered and is using the disputed domain names in bad faith.
Additionally, Complainant submits that notwithstanding that Complainant has previously, successfully brought a number of complaints under the Policy against Respondent, namely State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA07719 (Forum September 6, 2022); State Farm Mutual Automobile Insurance Company v. Zhichao, FA90670 (Forum May 16, 2022) and State Farm Mutual Automobile Insurance Company v. Zhichao, FA85719 (Forum March 29, 2022), Respondent nonetheless subsequently, proceeded to register the disputed domain names domains, which demonstrates bad faith on the part of Respondent.
In conclusion, complainant adds that Respondent’s use of the disputed domain name <statefarmcadroffers.com> constitutes typosquatting, and is further evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting…is the intentional misspelling of words with intent to intercept and siphon traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides insurance and the financial services and is the owner of a portfolio of trademark and service mark registrations including the following:
· United States federal service mark, STATE FARM (design) registration number 4,211, 626, registered on the Principal Register on September 18, 2012 for services in international class 36;
· United States federal service mark, STATE FARM (design) registration number 4,227,731, registered on the Principal Register on October 16, 2012 for services in international class 36;
· United States federal service mark, STATE FARM, registration number 5,271,354, registered on the Principal Register on August 22, 2017 for services in international class 36;
· United States federal service mark, STATEFARM. COM registration number 2,444,342 registered on the Principal Register on April 17, 2001 for services in international class 36;
· United States federal service mark, STATEFARM. COM registration number 2,444,341. registered on the Principal Register on April 17, 2001 for services in international class 38;
· United States federal service mark, STATEFARM. COM registration number 2,450,890. registered on the Principal Register on Mah 15, 2001 for services in international class 42;
· Canadian registered trademark STATE FARM, registration number TMA 559, 285, registered on March 15, 2002 for “underwriting auto, homeowners, life and fire insurance; servicing auto, homeowners, life and fire insurance namely loss control and claim handling services”;
· Canadian registered service mark STATE FARM (device), registration numberTMA 840, 363, registered on January 16, 2013 for “underwriting of auto, casualty, life health, and fire insurance and providing financial services, namely mutual fun investment services, financial analysis and consultation services, and automobile financing services”;
· Canadian registered service mark STATE FARM (device), registration number TMA 849, 431, registered on April 25, 2013 for ““underwriting of auto, casualty, life health, and fire insurance and providing financial services, namely mutual fun investment services, financial analysis and consultation services, and automobile financing services”;
· Canadian registered service mark STATE FARM.COM, registration number TMA 561,601, registered on May 8, 2002 for specified services including provision of certain insurance services, certain electronic mail services and certain consumer information.
Complainant has an established Internet presence and maintains a website to which its own domain name <statefarm.com>, registered in May 24, 1995 resolves.
The disputed domain names <statefarmcadroffers.com> and <statefarmcreditcardoffers.com> were both registered on the same date, August 28, 2022, and in the screen captures exhibited in the annex to the Complaint, show that they each resolve to the park pages with what appear to be links to third party websites.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum in the course of this proceeding, for details of the registrant of the disputed domain names.
Respondent availed of a privacy service to conceal the details of the registration of the disputed domain names on the published WhoIs and the Registrar has confirmed that Respondent is in fact the registrant.
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”).
Complainant has provided convincing, uncontested evidence that it has rights in the STATE FARM service mark, and other marks incorporating the STATE FARM mark such as STATEFARM.COM.
Said rights are established by Complainant’s ownership of the portfolio of trademark registrations described above and its long established use of the STATE FARM mark to distinguish its products and services in its insurance and financial services business including on its website to which its own domain name <statefarm.com> has resolved since 1995.
The disputed domain name <statefarmcreditcardoffers.com> consists of Complainant’s STATE FARM service mark in its entirety, in combination with the descriptive terms “credit card” and “offers”, together with the generic Top Level Domain (“gTLD") extension <.com>.
The disputed domain name domain name <statefarmcadroffers.com> is very similar, in that it also contains Complainant’s STATE FARM service mark in its entirety, but in combination with the elements “cadr” and the word “offers” together with the generic Top Level Domain extension <.com>.
The element “cadr” in context would be considered a misspelling of the word “card” and when read in combination with Complainant’s STATE FARM service mark, the element “cadr” would most probably be taken to refer to a credit card or a debit card.
Complainant’s STATE FARM mark is clearly recognizable in each of the disputed domain names, and is in fact the initial, dominant and only distinctive element in each. The elements “card” or “cadr”, “credit card” or “offers” are each descriptive and generic, and their presence in the disputed domain names do not prevent a finding that the disputed domain names are confusingly similar to Complainant’s mark.
In the circumstances of this proceeding, in each case the gTLD <.com> extension would be considered a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain names are each confusingly similar to the STATE FARM mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by, has never been known by, or performed business under the disputed domain names;
· Respondent is not associated with, affiliated with or sponsored by Complainant;
· Complainant did not authorize Respondent to register the disputed domain names or to use Complainant’s STATE FARM service mark for Respondent’s business purposes;
· Respondent has no contractual arrangement with Respondent that would allow Respondent to offer services under the STATE FARM name;
· Respondent is not using, nor has Respondent made any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, adding that as of the date of this Complaint, there was no legitimate content associated with the names and no demonstrable indication that legitimate content would be forthcoming.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is clear from the record that Respondent was actually aware of Complainant, its STATE FARM name, mark, and service mark rights, when the disputed domain name was registered and had in fact already been the unsuccessful respondent in a number of complaints made under the Policy on that date.
On the balance of probabilities Respondent was the registrant of both disputed domain names, which were each registered on the same day, each having Complainant’s STATE FARM mark as its dominant element.
This Panel finds therefore that the disputed domain names were each chosen and registered because each contains the STATE FARM mark as its dominant element and the registrant intended to target Complainant’s reputation and take predatory advantage of Complainant’s goodwill.
Complainant has exhibited in evidence copies of screen captures of the web pages to which each of the disputed domain names resolves. In each case it is a basic web page with what appears to be links to third parties. Complainant has alleged, but has not adduced any evidence that they are pay-per-click links. Some evidence of the content that is generated by clicking on the links would have greatly assisted this Panel in making this decision.
The evidence adduced, and submissions made, by Complainant in this regard have not been challenged or contested by Respondent and it is reasonable to accept that Complainant’s submissions are correct.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the site or location which constitutes bad faith registration and use for the purposes of the Policy.
In making this decision this Panel is fortified in the knowledge that Respondent has been found to have engaged in a pattern of registrations of Complainant’s mark as domain names, and furthermore, Respondent’s use of the disputed domain name <statefarmcadroffers.com> constitutes typosquatting, which is further evidence of bad faith registration and use
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <statefarmcadroffers.com> and <statefarmcreditcardoffers.com> domain names be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: December 13, 2022
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