WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Allstate Insurance Company v. Domain Supermarket Case No. D2009-1175 1. The Parties
The Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States.
The Respondent is Domain Supermarket of Tucson, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (“Go Daddy”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2009. On September 7, 2009, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain name. That same day GoDaddy transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2009. The Respondent did not submit any response in advance of the deadline. Accordingly, the Center notified the Respondent's default on October 5, 2009. On October 6, 2009, the Center received an email communication from the Respondent which the Center included with the case materials provided to the Panel.
The Center appointed Seth M. Reiss as the sole panelist in this matter on October 26, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant describes itself as the largest publicly held personal lines insurer in the United States. In 2008, Complainant's revenues exceeded 26 billion dollars.
Complainant adopted the mark ALLSTATE (the “Mark”) upon its founding in 1931 and has used the Mark, on and in relation to insurance products and services, ever since. Complainant's ALLSTATE mark was first registered with the United States Patent and Trademark Office (the “USPTO”) in 1961, for insurance services. Complainant currently holds 18 United States (“U.S.”) federal trademark registrations for the Mark in relation to insurance or insurance related services. Complainant also owns non-U.S. national trademark registrations for the Mark in a number of different counties.
In 2006, Complainant registered the mark ALLSTATE.COM with the USPTO for insurance and related services. Complainant has registered more than 100 domain names worldwide that comprise or incorporate its ALLSTATE mark.
Complainant represents that it spends hundreds of millions of dollars to advertise and promote services under the Mark, that it has generated billions of dollars in sales in products and services sold under the Mark, and that the ALLSTATE mark has become one of the most widely recognized brands among consumers.
GoDaddy's WhoIs database shows that the disputed domain name (the “Domain Name”) was first registered on June 10, 2009, and that it is registered to Respondent. The disputed domain name resolves to a generic appearing website that advertises insurance and insurance related products and that links to third party sites that offer to sell insurance and insurance related products. Among products offered by the linked third party websites are Complainant's products and those of Complainant's competitors.
Respondent's website also offers the disputed domain name for sale. Complainant claims to have previously advised Respondent that Complainant's use of the disputed domain name infringes Complainant's trademark rights. WhoIs records appended to the Complaint show Respondent as registrant for a number of domain names that incorporate famous marks owned by others including Craig's List, Hilton Hotels, Citibank, Cialis, E-Bay, McDonalds, and Papa John's. 5. Parties' Contentions A. Complainant
Complainant first contends that the Domain Name is identical or confusingly similar to a mark in which it holds rights. In support of this contention Complainant relies upon its federal trademark registrations, that its ALLSTATE mark is well-known or famous, that the Mark is incorporated into the Domain Name in its entirety, that the additional words “insurance” and “claim” are non-distinctive and are words commonly used in the insurance industry, and that the insurance related content residing on Respondent's website serves to increase the risk of consumer confusion.
Complainant next argues that Respondent has no rights or legitimate interests in respect of the Domain Name because there is no evidence that Respondent is commonly known by the Allstate name, because Respondent's registration and use of the Domain Name occurred many years after Complainant had established rights its ALLSTATE mark, and in view of the renown of the Mark. Complainant also contends that Respondent's use of the Domain Name to earn click-through revenues by funneling business to Complainant's competitors cannot constitute a bona fide offering of goods and services or a fair use of Complainant's mark.
Lastly Complainant submits that the Domain Name was registered and is being used by Respondent in bad faith. Complainant grounds this assertion on Respondent's use of the Domain Name to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. The commercial gain is from click through revenues Respondent earns from third party websites selling products and services of Complainant's direct competitors. Complainant also claims bad faith registration and use through Respondent's offering the Domain Name for sale, and because Respondent appears to own a number of other domain names that incorporate well known marks belonging to others.
Complainant requests, pursuant to paragraph 4(i) of the Policy, that the domain name be transferred to Complainant. B. Respondent
In its late filed response1 Respondent states that it replied timely to GoDaddy, that the Domain Name had been registered since 2007 and changed hands 17 times since, and that GoDaddy has several other domains on its auction page that incorporate the ALLSTATE trademark. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs that the “Panel shall 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.”
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
National registration constitutes prima facie evidence of valid trademark rights. Janus Interantional Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201; Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503. Given its long and widespread use and extensive recognition, the ALLSTATE brand is among those that may be fairly described as famous or well known.
The ALLSTATE mark is incorporated into the disputed domain name in its entirety. “Insurance” and “claim” are terms endemic to the insurance industry. It is well established that the addition of a descriptive or generic term to a famous mark fails to distinguish the resulting domain name from the mark or dispel the resulting confusion. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil,WIPO Case No. D2000-1409. Coupling generic terms with a well known trademark in the context of a domain name can serve to aggravate the likelihood of confusion. Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter,WIPO Case No. D2004-1041; Volvo Trademark Holding AB v. e-motordealer Ltd,WIPO Case No. D2002-0036. Such aggravation is evidenced in the case of the domain name .
The Panel concludes that the disputed domain name is confusingly similar to the ALLSTATE mark in which Complainant holds rights and that Complainant has established element (i) of the Policy's paragraph 4(a). B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing lack of a respondent's rights or legitimate interests in respect of a domain name is that:
“[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1. Complainant has alleged that Respondent has no rights or legitimate interests in the Domain Name and that Respondent has never been authorized by Complainant to use the ALLSTATE mark. This establishes a prima facie case and shifts the burden to Respondent to demonstrate rights or legitimate interests in the domain name.
Respondent's late filed response states only that the Domain Name was first registered in 2007 and has changed hands 17 times since then. Although not supported by the available WhoIs evidence these contentions, even if true, are incapable of demonstrating that Respondent holds some right or legitimate interest in the disputed domain name. Paragraph 4(c) of the Policy. Complainant had firmly established proprietary rights in the ALLSTATE mark long before 2007. Respondent's other contention that GoDaddy is offering at auction other domain names incorporating the ALLSTATE mark without authority from Complainant, is similarly unavailing. That others may also be using a complainant's mark in an improper manner cannot establish some right or legitimate interest in a respondent.
Respondent's website links through to third party sites some of which offer for sale Complainant's insurance products and services. According to some UDRP panels, a reseller may
“mak[e] a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3; citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095. Respondent cannot meet the legitimate reseller requirements because it is not Respondent, but some third party, who is arguably making a bona fide offering of Complainant's products and services, because Respondent offers indirectly, through third party websites, the products and services of Complainant's competitors as well as those of Complainant, and because Respondent's website fails to disclose Respondents relationship, or the lack thereof, with Complainant.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the second element of the Policy's paragraph 4(a) has been established. C. Registered and Used in Bad Faith
Regarding the third and final element - bad faith registration and use - paragraph 4(b)(iv) of the Policy is strongly implicated by facts here at issue. Respondent uses the Domain Name to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's ALLSTATE mark as to source, sponsorship, affiliation, or endorsement of Respondent's “www.” website and the products and services being offered by commercial websites linked there through.
When a domain name incorporates a famous mark, “it would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant's rights.” Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. It is reasonable, therefore, to conclude that Respondent must have harbored a wrongful intent when selecting, registering and using the disputed domain name.
Complainant claims Respondent uses the disputed domain name to earn click-through revenues. While Complainant is not in a position to provide direct evidence of such revenues, the structure and manner of functioning of Respondent's website is strong circumstantial evidence that Respondent operates a “link farm” such that Respondent profits financially whenever visitors to Respondent's website click through to a third party website.
Domain names incorporating famous marks used to attract Internet traffic to fuel click-through revenues which trade on the reputation of those marks compel, in most if not all cases, a conclusion of bad faith registration and use under paragraph 4(a)(iii) of the Policy. The Sportsman's Guide, Inc. v. Asia Ventures, Inc.,WIPO Case No. D2002-1116 (use of domain name to attract traffic for commission based search engine); Yahoo! Inc. v. Web Master a/k/a MedGo, NAF Claim No.127717 (use of domain name to attract traffic for pay-per-click search engine). “[I]t is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.” Deutsche Telekom AG v. WWW Enterprise, Inc.,WIPO Case No. D2005-1136.
The same conclusion of bad faith registration and use is reached when a domain name incorporating a famous mark is used to sell competitive products. Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter,WIPO Case No. D2004-1041; Wal-Mart Stores Inc. v. Frank Warmath,WIPO Case No. DTV2008-0013.
Respondent uses the recognition value of the ALLSTATE mark to attract Internet users to Respondent's link farm website located at “www.” in order to earn pay-per-click revenues. Respondent's link farm website links those so attracted to sites that sell goods and services that are in direct competition with goods and services sold by Complainant under the Mark.
The Panel finds that Respondent has registered and is using the disputed domain name in bad faith and that the third and final element of paragraph 4(a) of the Policy has been met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Seth M. Reiss
Sole Panelist
Dated: November 6, 2009.
1 The Panel has discretion to consider late filed submissions under the Rules, paragraphs 10(a) and (d). Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
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