WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Allstate Insurance Company v. Transure Enterprise Ltd Case No. D2010-0056 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 of America.
The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands, Oversee Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 13, 2010. On January 13, 2010, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name . On January 14, 2010, A, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on January 19, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 21, 2010 also adding the following the domain names: , and . On January 22, 2010, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the domain names , and . On January 27, 2010 A, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the amended 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 January 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2010.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 2, 2010. 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
The Complainant has submitted evidence that it is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):
ALLSTATE, word mark with U.S. Reg. No. 0717683 and registration date June 27, 1961.
ALLSTATE, word mark with U.S. Reg. No. 0761091 and registration date December 3, 1963.
ALLSTATE, design mark with U.S. Reg. No. 0840187 and registration date December 5, 1967.
ALLSTATE.COM, word mark with U.S. Reg. No. 3164784 and registration date October 31, 2006.
The Respondent registered on October 19, 2009, on April 18, 2009, on February 12, 2008 and on November 19, 2009. 5. Parties' Contentions A. Complainant
The Complainant is the largest publicly held personal lines insurer in the United States. Since its founding in 1931, the Complainant has become a well-established and well-known insurance company and provides insurance services all over the United States. In 2008, the Complainant's revenues exceeded USD 26 billion.
The Complainant has used the ALLSTATE trademark since 1931 and registered its first ALLSTATE trademark in 1961, approximately 49 years prior to the Respondent's registration of the disputed domain names , , and .
The Complainant has devoted hundreds of millions of dollars to advertise and promote its services in the United States under the ALLSTATE trademark. The ALLSTATE trademark has, as a result of the Complainant's advertising and promotional efforts, become one of the most widely recognized brands among consumers.
Each of the Respondent's domain names wholly incorporates the Complainant's registered trademark ALLSTATE in a manner that emphasizes the ALLSTATE portion to consumers. The disputed domain names and are identical to the Complainant's trademark except for the addition of the non-distinctive and common terms “customer”, “service” and “workplace”. On the Complainant's own website at “” the Complainant has a “Customer Care” link as well as an “Allstate Workplace Division”, which is the marketing name for American Heritage Life Insurance Company, an affiliate of the Complainant.
The Respondent operates pay-per-click advertising sites at the disputed domain names featuring a variety of “sponsored listings” advertising links concerning the field of insurance, for example, a link to the Complainant and its direct competitors in the insurance industry, including GEICO and Amica Insurance.
The disputed domain names and are listed for sale at by the Respondent.
The Respondent has been subject to numerous administrative proceedings filed pursuant to the UDRP based on its registration of several domain names that included third-party trademarks.
The Complainant has advised the Respondent that it is violating the Complainant's rights but the Respondent has not replied.
It is well-established that incorporating the entirety of a mark into a domain name is sufficient to establish that a domain name is confusingly similar to the registered mark. Furthermore, when a domain name incorporates entirely a registered mark with the addition of a descriptive term, like “customer service” or “workplace”, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.
Use of a well-known mark in a domain name is likely to cause confusion, mistake or deception since users are likely to believe that the trademark holder authorized or is controlling the disputed website. In light of the Complainant's widespread use and promotion of the ALLSTATE trademark over the last decades, the trademark is a well-known and recognized mark in the United States, something which has been determined by a prior panel in Allstate Insurance Company v Domain Supermarket, WIPO Case No. D2009-1175.
The disputed domain names and include common typographical errors of the Complainant's well-known trade name “Allstate Insurance Company”. The Respondent is taking unfair advantage of the Complainant's registered trademark ALLSTATE and associated business reputation.
The content of the websites corresponding to the disputed domain names add to the likelihood of confusion due to the pay-per-click advertisements for competing insurance companies and insurance-related services as well as the links to third party websites where users can buy insurance services from competitors of the Complainant.
The Respondent is not commonly known by the ALLSTATE trademark or by any of the terms that comprise the disputed domain names. The Respondent operates under the trade name “Transure Enterprises Ltd” and to the Complainant's knowledge, ALLSTATE is not the Respondent's name and the Respondent has not, and never has been, a licensee or franchisee of the Complainant. The content of the websites associated with the disputed domain names reveal that the Respondent is aware of the Complainant and its business.
The Respondent's use of the Complainant's trademark in the disputed domain names that simply contains sponsored hyperlinks is not a legitimate use. The Respondent is not making a noncommercial use of the disputed domain names. The Respondent is obtaining click-through revenue when Internet users click on the sponsored links. Thus, the Respondent is misleading and diverting consumers for commercial purposes. There is nothing about the webpages connected with the disputed domain names that suggest fair use and the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent registered the disputed domain names in bad faith since the domain names wholly incorporate, and are confusingly similar to, the Complainant's well-known ALLSTATE trademark. The Complainant has not authorized the Respondent to use its ALLSTATE trademark, which is further evidence that the Respondent is acting in bad faith and cannot establish legitimate right or interest in the domain names.
The Respondent's exploitation of the trademark for generating click-through revenues from diversion of Internet users is an indication of bad faith.
Furthermore, the domain names and contain common and predictable misspellings of the word “insurance”. The practice of typosquatting is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of several trademark registrations for the mark ALLSTATE. The Complainant's trademark registrations for ALLSTATE predate the disputed domain names.
The disputed domain names , , and incorporate the trademark ALLSTATE in its entirety.
The domain name contains the addition of the descriptive terms “customer” and “service”. The domain name contains the addition of the non-distinctive term “workplace”.
The domain name contains the addition of the term “iinsurance” and the domain name contains the addition of the term “insuranace”, both additions being apparent misspellings of the generic word “insurance”.
The Panel agrees with the Complainant's contention that the ability for such descriptive and general terms to distinguish the disputed domain names from the trademark of the Complainant is limited. The confusion may actually be heightened by adding terms that are descriptive of the services marketed by the Complainant in relation to the trademark, such as “insurance”.
Having the above in mind, it is the opinion of the Panel that the disputed domain names are confusingly similar to the Complainant's trademarks and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark ALLSTATE in connection with the disputed domain names which are confusingly similar to the Complainant's registered trademark.
On November 30, 2009, the Complainant contacted the Respondent by post and e-mail using the contact details found in the WhoIs. The Complainant informed the Respondent about the trademarks and requested that the Respondent sign a transfer agreement. The Respondent did not reply to the Complainant's e-mail or to the Complainant's letter.
From the submitted evidence in this case, it is clear that all of the Respondent's websites, to which the disputed domain names resolve, contain numerous sponsored commercial links leading to insurance companies, some of which are in direct competition with the Complainant. The Respondent's use of the disputed domain names serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services. See for example Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990.
The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain names or that the Respondent is or has been commonly known by any of the disputed domain names.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
From the submitted evidence by the Complainant it is clear that the Complainant's registered ALLSTATE trademark predate the registrations of the disputed domain names.
Furthermore, the evidence in this case suggests that the Respondent knew or must have known about the Complainant's trademarks when registering the disputed domain names, especially due to the fact that two of the domain names consist of the Complainant's ALLSTATE trademark with the addition of the albeit misspelled generic term “insurance”, as the Complainant is an insurance company providing insurance services.
In addition to the above, the Complainant has submitted evidence showing that the disputed domain names resolve to websites containing numerous advertising links to websites promoting and/or offering third party products and services, some in direct competition with the Complainant. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous case law. See e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.
Having the above in mind, the evidence in the case before the Panel indicates that the Respondent was aware of the Complainant's ALLSTATE trademark when registering the disputed domain names , , and and that the disputed domain names have intentionally been and are being used in an attempt to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the websites.
There is no evidence in the case that refutes the Complainant's submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain names , , and have been registered and used in bad faith. 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 names, , , and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: March 11, 2010
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