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.
Respondent is ALLSTATEAUTOINSURANCE.COM / E-Promote of Vancouver, Washington, United States of America and San Francisco, California, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2011. On January 4, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On January 4, 2011, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 5, 2011, providing the registrant and contact information disclosed by Dotster, Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 5, 2011.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2011. On January 11, 18, 25 and 26, email communications regarding the Complaint were received by the Center from third parties to this proceeding. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2011.
The Center appointed Terrell C. Birch as the sole panelist in this matter on February 4, 2011. 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 is one of the largest publicly held personal lines insurers in the United States. Since its founding in 1931, Complainant has become a well-established and well-known insurance company and provides insurance services all over the United States.
Complainant has continuously used the ALLSTATE trademark since its founding in 1931. ALLSTATE is the trademark used to identify products, services, activities and events related to Complainant. Complainant received its first federal trademark registration for ALLSTATE in 1961, approximately forty-three (43) years prior to Respondent’s registration of the Domain Name .
The Domain Name was registered on December 31, 2004, approximately seventy-three (73) years after Complainant adopted the ALLSTATE trademark, approximately forty-three (43) years after Complainant’s registration of the ALLSTATE trademark and approximately nine (9) years after Complainant registered the domain name.
In 2009, Complainant’s revenues were approximately USD 32 billion dollars.
Complainant has generated billions of dollars in sales of products and/or services under the ALLSTATE trademark in the United States.
Complainant owns numerous trademark registrations in the United States for its ALLSTATE trademark. Complainant obtained its first United States registration (U.S. Reg. No. 0717683) for the word mark ALLSTATE for “underwriting of the following types of insurance: life, annuity, accident, and health” on June 27, 1961. On December 3, 1963, it obtained a United States registration (U.S. Reg. No. 0761091) for the word mark ALLSTATE for the “business of making, writing, and underwriting of insurance.” On December 5, 1967, Complainant obtained a United States registration (U.S. Reg. No. 0840187) for the design mark ALLSTATE for “insurance underwriting services.” Each of the foregoing registrations is now incontestable under U.S. law. In addition to the U.S. trademark registrations mentioned above, Complainant owns over thirty (30) additional United States registrations for the ALLSTATE trademark for a wide range of goods and services including investment advisory services, banking, mortgage lending, and financial services.
On October 31, 2006, Complainant obtained a United States registration (U.S. Reg. No. 3164784) for ALLSTATE.COM for “banking; loan financing; investing and administering the funds of others, investment advisory services, investment brokerage; financial planning; mortgage services, namely mortgage lending; insurance services, namely, writing and underwriting of casualty insurance, property insurance, automobile insurance, liability insurance, health and long-term care insurance, disability insurance, life insurance and annuities and providing ancillary services thereto, namely, insurance administration and insurance claims adjustment; commercial insurance underwriting services, namely liability, business interruption, and business property insurance and providing ancillary services thereto, namely insurance administration and insurance claims adjustment; financial sponsorship of athletic events; financial sponsorship of local charitable organizations; motor club services, namely, providing bail bonding for motorists; providing financial reimbursement of legal defense services related to moving violations.” The ALLSTATE.COM and ALLSTATE trademarks referenced above are collectively referred to herein as the “ALLSTATE trademark.”
In addition, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions around the world.
Complainant has devoted hundreds of millions of dollars to advertise and promote its services in the United States under the ALLSTATE trademark.
In addition to its own advertising and promotional efforts, Complainant and its services have been the subject of numerous articles in the media, including national and international print, radio and television.
As a result of Complainant’s extensive promotional efforts and the wide acceptance of its services promoted in connection with the ALLSTATE trademark, the ALLSTATE trademark has become one of the most widely recognized brands among consumers.
As part of its communications and marketing program, Complainant has registered over one thousand (1000) Allstate-based domain names worldwide (including common typographical errors of the ALLSTATE trademark). Complainant’s domain names include: , and . Complainant registered the domain name in May 1995. Complainant subsequently registered in July 1997 and in July 1998.
Respondent’s Domain Name wholly incorporates the ALLSTATE trademark. The Domain Name differs from Complainant’s ALLSTATE.COM trademark only by the addition of the descriptive words “auto insurance.” The addition of the words “auto insurance” further emphasizes Respondent’s efforts to capitalize on Complainant’s well-known ALLSTATE trademark in the insurance industry.
Respondent’s Domain Name redirects users to , which offers insurance quotes from Complainant as well as its direct competitors in the auto insurance market.
Since becoming aware of Respondent’s true identity as part of this proceeding, Complainant has learned that Respondent appears to have a history of registering domain names that are confusingly similar to the marks of others. Respondent has been the subject of numerous proceedings pursuant to the Policy. In each instance, Respondent was determined to have acted in bad faith and the subject domain name was ordered to be transferred to the rightful trademark owner. See, e.g., Verisign Inc. v. Domain Admin, E-Promote,WIPO Case No. D2006-1501; Hyatt Legal Plans, Inc. v. E-Promote, NAF Claim No. FA0502000430635; Jackson National Life Insurance Company v. E-Promote,WIPO Case No. D2007-0027.
On November 21, 2010, Complainant send Respondent a letter via e-mail advising Respondent that it was violating Complainant's rights by using the Domain Name. The letter was sent to Respondent by e-mail to the address provided in the registration information, but the e-mail bounced back as undeliverable. 5. Parties’ Contentions A. Complainant
Complainant contends that:
(1) the Domain Name is confusingly similar to Complainant’s trademark;
(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 by Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i), for the following reasons:
Registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive. Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. Complainant has registered the ALLSTATE trademark in the United States and abroad. Complainant has thirty (30) trademark registrations for the ALLSTATE trademark, as well as a trademark registration for ALLSTATE.COM. Several of Complainant’s trademark registrations are incontestable under United States law. Complainant obtained its first United States trademark registration at least forty-three (43) years prior to the registration of the Domain Name. Therefore, Complainant has established prima facie evidence of validity and inherent distinctiveness of its ALLSTATE trademark.
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. F. Hoffman-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005. Furthermore, it is also well established that use of a famous or 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. Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051. In light of Complainant's widespread use and promotion of its ALLSTATE trademark over the past several decades, this trademark is one of the most well-known and recognizable marks in the United States. In fact, a prior UDRP panel has determined that the ALLSTATE trademark is famous. See Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175 (“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.”).
Respondent's Domain Name wholly incorporates the ALLSTATE trademark. The Domain Name differs from Complainant’s ALLSTATE and ALLSTATE.COM trademarks only by the addition of the words “auto insurance” - two words that are closely associated with Complainant’s business and serve to further bolster Respondent’s efforts to associate itself with Complainant. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii) as demonstrated by the following:
Paragraph 4(c) of the Policy sets forth the circumstances that, if present, may be cited by Respondent to demonstrate that it has a legitimate right or interest in the Domain Name. Those criteria are that: (i) before any notice of the dispute, Respondent’s use of the Domain Name was in connection with a bona fide offering of goods or services, or (ii) Respondent has been commonly known by the Domain Name, even if it had not acquired any trademark or service marks rights, or (iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although Respondent used a privacy service in registering the Domain Name in order to prevent Complainant from learning Respondent’s true identity, it does not appear that Respondent is commonly known by the ALLSTATE trademark or by any of the terms that comprise the Domain Name . Even assuming arguendo that Respondent is known by the name “Allstateautoinsurance,” this name is confusingly similar to the ALLSTATE trademark (as discussed above) and its adoption came long after Complainant’s adoption of its ALLSTATE trademark. Thus, any adoption of the confusingly similar “Allstateautoinsurance” name was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill. Thus, Respondent cannot establish legitimate rights or interests in the Domain Name. See Yahoo! Inc. v. Yahoo-Asian Company Limited., WIPO Case No. D2001-0051 (“[I]t is beyond credulity that the respondent’s corporate name was chosen in the absence of knowledge of the complainant’s famous trademark. ... Under these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy cannot apply.”).
Respondent’s use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny. In The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd./“The Saul Zaentz Company,” WIPO Case No. D2008-0156, the panelist determined that, based on the circumstances, the respondent's use of a proxy service created a negative inference about its objectives. In the present case, Respondent has used a privacy service to shield its identity in registering the Domain Name that wholly incorporates Complainant’s famous ALLSTATE trademark. These circumstances, in combination with Respondent’s use of the Domain Name to redirect consumer traffic to Complainant’s competitors, create a negative inference about Respondent’s efforts to hide its identity.
Respondent is not making a noncommercial use of the Domain Name. The use of a confusingly similar domain name which diverts Internet users to a third-party site that offers products or services in competition with Complainant does not constitute a bona fide offering of goods or services. The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304. Further, redirecting an Internet user to a third-party website implies that Respondent is receiving compensation for such redirection. In the context of parking websites, one UDRP panel recently noted, “the fact that the disputed domain names give access to parking websites implies that the Respondent is getting profits ... those websites propose links to various online pharmacies that sell products directly competing with the products offered by the Complainants.” Pfizer Inc., G.D. Searle LLC Inc. v. Samir Kumar, WIPO Case No. D2009-0429. At any rate, the Panel believes that Respondent is clearly compensated for redirecting Internet users to a third-party website. This is a purely commercial use. Therefore, Respondent is not making a legitimate noncommercial use of the Domain Name, but instead is misleading and diverting consumers for commercial purposes.
Based on the foregoing, the Panel finds that Respondent has no legitimate rights or interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel has determined that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy, for the following reasons:
Bad faith exists where Respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Policy, paragraph 4(b)(iv). That is the case here. Respondent’s use of the ALLSTATE trademark in its Domain Name causes a likelihood of confusion. This confusion is increased by the use of the words “auto insurance.” As noted above, Respondent stands to benefit financially from redirecting Internet users to a third-party website. See Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (finding that creating revenue from misdirected traffic constitutes bad faith). It is worth noting, however, that in order to find commercial gain “this gain does not need to be derived by the Respondent himself” Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (finding bad faith based on “parking” webpage).
Panels find bad faith where Respondent is using a well-known trademark and there is no legitimate use of the mark in the domain. See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568. Respondent registered the Domain Name in bad faith since the Domain Name is confusingly similar to Complainant’s well-known ALLSTATE trademark and there is no legitimate use, as discussed above.
Respondent’s bad faith is all the more apparent given Complainant’s widespread use and promotion of its ALLSTATE trademark, and Complainant’s numerous United States trademark registrations. As stated above, Complainant has spent hundreds of millions of dollars promoting the ALLSTATE trademark in the United States. In the Panel’s view, there can be no doubt that Respondent is aware of Complainant and its trademark rights, especially given the addition of the descriptive words “auto insurance” to the Domain Name.
Bad faith exists where, as here, there can be no question that Respondent knew or should have known about Complainant’s trademark rights before registering the Domain Name. Yahoo! Inc. v. Yahoo-Asian Company Limited., WIPO Case No. D2001-0051. See Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (“[S]ince Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.”).
Respondent is using the Domain Name for commercial gain by diverting Internet users to an unrelated third-party, and benefiting from the likely confusion between Complainant’s trademark and the Domain Name. It is likely that Respondent is generating a profit from this practice. Such exploitation of the reputation of trademarks to obtain revenue from the diversion of Internet users is an indication of use in bad faith according to numerous previous decisions. Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG v. Michael Robert, WIPO Case No. D2009-0446.
Based on the foregoing, the Panel finds that Respondent has registered and used the Domain Name in bad faith. Complainant has thus met all three criteria for requiring the transfer of the Domain Name in accordance with the Policy. 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 Complainant.
Terrell C. Birch
Sole Panelist
Dated: February 17, 2011
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