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 Domain Admin, E-Promote of San Francisco, California, United States of America; c/o ALLSTATELIFEINSURANCE.COM, c/o ALLSTAETLIFEINSURANCE.COM of Vancouver, Washington, United States of America. 2. The Domain Names and Registrars
The disputed domain names and (the “Domain Names”) are registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2011. On January 11 and January 14, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain names.
On January 11 and January 14, 2011 Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2011 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 20, 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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2011.
The Center appointed Terrell C. Birch as the sole panelist in this matter on March 18, 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 the largest publicly held personal lines insurer 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-one (41) years prior to Respondent’s registration of the Domain Name .
Respondent registered the Domain Name on August 20, 2002, approximately seventy-one (71) years after Complainant adopted the ALLSTATE trademark, approximately forty-two (42) years after Complainant’s registration of the ALLSTATE trademark and approximately seven (7) years after Complainant registered the domain name. Respondent registered the Domain Name approximately forty-one (41) years after Complainant obtained a federal trademark registration for the trademark ALLSTATE LIFE.
Respondent registered the Domain Name on November 22, 2010, approximately seventy-nine (79) years after Complainant adopted the ALLSTATE trademark, approximately fifty (50) years after Complainant’s registration of the ALLSTATE trademark and approximately fifteen (15) years after Complainant registered the domain name. Respondent registered the Domain Name approximately fifty (50) years after Complainant obtained a federal trademark registration for the trademark ALLSTATE LIFE.
In 2009, Complainant’s revenues were approximately USD 32 billion.
Complainant has generated billions of dollars in sales of products and/or services under the ALLSTATE trademark in the United States. 5. Parties’ Contentions A. Complainant
Complainant owns numerous trademark registrations in the United States for its ALLSTATE trademark. Complainant obtained its first United States registration 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 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 No. 0840187 for the design mark ALLSTATE for “insurance underwriting services.” Each of the foregoing registrations is now incontestable under United States law. In addition to the United States 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 December 5, 1961, Complainant obtained United States registration No. 0724938 for ALLSTATE LIFE for “underwriting of life insurance.” Complainant commenced use of this trademark in commerce in approximately 1957 and has used it continuously since that time.
On October 31, 2006, Complainant obtained United States registration 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, ALLSTATE LIFE 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 advertising and promoting 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.
Complainant has not authorized Respondent to use the ALLSTATE trademark.
Respondent’s Domain Names wholly incorporate Complainant’s well-known ALLSTATE trademark. The Domain Name differs from Complainant’s ALLSTATE trademark only by the addition of the descriptive words “life insurance.” The Domain Name merely contains a common and predictable typographical error of the ALLSTATE trademark by transposing the “t” and the “e.” Addition of the words “life insurance” further emphasizes Respondent’s attempt to commercialize Complainant’s trademark and well-known name in the insurance industry.
Respondent’s Domain Name redirects Internet users to . According to the WhoIs database, the identity of the registrant of is protected by the same privacy service used by Respondent and is registered with the same registrar as the domain name. Complainant believes that both Domain Names are registered by the same registrant.
The Domain Names lead to a website that features a variety of advertising links concerning the field of insurance, including links to Complainant and its direct competitors in the insurance market. For example, the website features pay-per-click advertisements for Liberty Mutual and USAA, among others.
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 (WIPO March 1, 2007); Hyatt Legal Plans, Inc. v. E-Promote, NAF Claim No. 430635 (NAF April 6, 2005); Jackson National Life Insurance Company v. E-Promote/ JACKSONNATIONALLIFEINSURANCE.COM,WIPO Case No. D2007-0027 (WIPO March 2, 2007).
Complainant is aware that Respondent has registered at least one additional domain name that incorporates the ALLSTATE trademark in its entirety. Complainant has filed an administrative complaint with the Center against this same Respondent concerning its registration and use of the domain name . See Allstate Insurance Company v. c/o ALLSTATESUTOINSURANCE.COM / E-Promote,WIPO Case No. D2011-0004 .
On December 1, 2010, Complainant sent Respondent a letter via e-mail advising Respondent that it is violating Complainant’s rights by using the subject Domain Name . The letter was sent to Respondent by e-mail to the address provided on the registration. Respondent did not respond to Complainant’s notice of its trademark rights, which was successfully sent by email.
Complainant concludes that:
(1) the Domain Names are confusingly similar to Complainant’s trademarks;
(2) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(3) the Domain Names have been registered and are being used in bad faith by Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Domain Names are confusingly similar to Complainant’s trademarks, 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 Interantional Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (March 5, 2002). Complainant has registered the ALLSTATE trademark in the United States and abroad. Complainant owns approximately thirty (30) trademark registrations for the ALLSTATE trademark, as well as trademark registrations for ALLSTATE LIFE and ALLSTATE.COM. Several of Complainant’s trademark registrations are incontestable under the United States law. Complainant obtained its first United States trademark registration many decades prior to Respondent’s registration of the Domain Names at issue. 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. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005 (March 14, 2006). 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 Internet 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 (February 28, 2001). 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 (November 6, 2009) (“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 Names wholly incorporate Complainant’s ALLSTATE, ALLSTATE LIFE and ALLSTATE.COM trademarks or misspellings thereof. The Domain Name differs from the ALLSTATE trademark by the addition of the words “life insurance” and from the ALLSTATE LIFE trademark merely by the addition of the word “insurance” – words that are closely associated with Complainant’s longstanding business and that emphasize the domain name merely transposes two letters that comprise the ALLSTATE trademark. Respondent’s actions are a clear attempt to commercialize on Complainant’s trademarks and well-known trade name in the insurance industry.
The content of the webpage that Internet users are redirected to adds to the likelihood of confusion. As discussed above, the Domain Names lead to a website that feature click-through advertisements for both Complainant and its direct competitors in the insurance market. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Names 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 disputed 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.
Even assuming arguendo that Respondent is known by the name “Allstatelifeinsurance” or “A,” these names are confusingly similar to the ALLSTATE, ALLSTATE LIFE and ALLSTATE.COM trademarks when used in connection with insurance-related services (as discussed above). Moreover, their adoption came more than seventy (70) years after Complainant’s adoption of its ALLSTATE trademark and approximately fifty (50) years after Complainant’s adoption of the ALLSTATE LIFE trademark. Thus, any adoption of the confusingly similar “Allstatelifeinsurance” or “A” names were 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, supra (“[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 in order to prevent the Complainant from learning the Respondent’s true identity 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 (May 20, 2008), the Panelist determined that, based on the circumstances, 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 his/her identity in registering a Domain Name that wholly incorporates Complainant’s famous ALLSTATE trademark. These circumstances create a negative inference about Respondent’s efforts to hide his/her identity.
The use of a well-known trademark in a domain name that redirects consumers to a website that simply contains hyperlinks is not a legitimate commercial use. Rusticae Selección de Calidad S.L. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-1119 (September 30, 2008); Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2009). See Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779 (August 7, 2007) (“The use of the domain name as a parking website is not a bona fide non-commercial use … even if the content on the parking website is not developed by Respondent but provided by the Parking Service Provider.”).
Respondent is not making a noncommercial use of the Domain Names. The use of a confusingly similar domain name that diverts Internet users to a third-party site offering products or services in competition with Complainant does not constitute a bona fide offering of goods or services. Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304 (April 19, 2007) (citing cases). Further, redirecting an Internet user to a third-party website implies that Respondent is receiving compensation for such redirection. This is a purely commercial use. Therefore, Respondent is not making a legitimate noncommercial use of the Domain Names, but instead is misleading and diverting consumers for commercial purposes. C. Registered and Used in Bad Faith
The Panel has determined that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(a) 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 the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Policy, paragraph 4(b)(iv). That is the case here. As noted above, Respondent stands to benefit from redirecting Internet users to a third-party website. See Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (September 7, 2003) (finding that creating revenue from misdirected traffic constitutes bad faith). It is worth noting, however, that in order to find commercial gain “the gain does not need to be derived by the Respondent himself.” Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (February 14, 2008) (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 name. See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001); Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568 (January 25, 2001). Respondent registered the Domain Names in bad faith since the Domain Names are 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. There can be no doubt that Respondent was aware of Complainant and its trademark rights at the time of registration of the Domain Name in 2010. Indeed, here, Respondent’s knowledge of Complainant’s trademark rights is indisputable given that the website located at automatically redirects potential consumers to , which features click-through advertising links for Complainant’s primary business 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 its domain names. Yahoo! Inc. v. Yahoo-Asian Company Limited, supra. See Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000) (“[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.”).
At the time of registration of the Domain Names, Respondent had actual or constructive knowledge of Complainant’s ALLSTATE trademark based on registration of these marks with the United States Patent and Trademark Office and their substantial fame in the United States and abroad. This knowledge is further evidence of its bad faith. See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489 (June 13, 2006); See also The American Automobile Association Inc. v. AAA-Vacationsunlimeted,WIPO Case No. D2009-0373 (May 3, 2009) (finding that Respondent's knowledge of AAA Marks may be inferred because the marks were registered with the USPTO and well known in the industry). Indeed, the website located at the Domain Names features an advertising link to Complainant itself. Thus, Respondent has actual knowledge of Complainant and its trademark rights.
Complainant is aware that Respondent has registered at least one additional domain name that incorporates the ALLSTATE trademark in its entirety. Complainant has filed an administrative complaint with WIPO against this same Respondent concerning its registration and use of the domain name . See Allstate Insurance Company v. c/o ALLSTATESUTOINSURANCE.COM / E-Promote, supra. Thus, it is reasonable to conclude under these circumstances that Respondent registered the Domain Names with knowledge of Complainant’s trademark rights and is attempting to profit from the use of Domain Names that incorporate the ALLSTATE trademark and misspellings thereof.
In addition to Respondent’s past and present registration of domain names that include the ALLSTATE trademark, Respondent has a history of registering domain names that are confusingly similar to the trademarks of others. As mentioned above, 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,supra; Hyatt Legal Plans, Inc. v. E-Promote, supra; Jackson National Life Insurance Company v. E-Promote/ JACKSONNATIONALLIFEINSURANCE.COM, supra. Thus, it is reasonable to conclude that Respondent is familiar with the practice of registering and commercializing domain names that include well-known trademarks. Respondent has registered and used the Domain Names in bad faith.
Respondent is using the Domain Names for commercial gain by redirecting Internet users to a third-party website that features advertising links to Complainant and its direct competitors, and benefiting from the likely confusion between Complainant’s trademark and the Domain Names. It is likely that Respondent is generating revenue from this practice. Exploiting the reputation of trademarks and profiting from the diversion of Internet users is an indication of bad faith according to numerous previous decisions. See, e.g., Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG v. Michael Robert, WIPO Case No. D2009-0446 (June 2, 2009); The American Automobile Association v. Jack Holder, NAF Claim No. 1227171 (December 12, 2008); Brink's Network, Inc. v. Jenny Ho, , WIPO Case No. D2009-0530 (June 10, 2009) (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant's competitors, a holding of bad faith use will typically follow”); Credit Industriel et Commercial S.A. v. Christopher Hunt,WIPO Case No. D2008-0892 (July 24, 2008) (“Panels have held that the use of a domain name to resolve to a parking site that contains links to competitors of the complainant is in and of itself an indicia of bad faith”).
The Domain Name contains a common misspelling of the ALLSTATE trademark. It is a longstanding principle that the “practice of typosquatting, of itself, is evidence of bad faith registration of a domain name.” See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (June 28, 2005). As one WIPO panel has stated: “Typosquatting is inherently parasitic and of itself evidence of bad faith.” National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003). As discussed above, “allstaet” is a common and predictable typographical misspelling of the ALLSTATE trademark. Moreover, “allstaet” is not a common or understandable English word. It is merely a typo of Complainant’s well-known ALLSTATE trademark. 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.
Terrell C. Birch
Sole Panelist
Dated: March 31, 2011
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