The Complainant is Allstate Insurance Company of Northbrook, Ilinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.
The Respondent is Domains by Proxy, Inc. / mga enterprises limited of Derby, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2011. On January 11, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 12, 2011, GoD, 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 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 19, 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 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2011.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on February 23, 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
According to the Complaint, the Complainant is the largest publicly held personal lines insurer in the United States. Founded in 1931, the Complainant provides insurance services all over the United States, with a revenue of approximately $32 billion dollars in 2009.
It is stated that the Complainant has continuously used the ALLSTATE trade mark since its founding in 1931, with the first United States (“U.S.”) registration of this mark dating from June 27, 1961, (U.S. Reg. No. 0717683) with respect to “underwriting of the following types of insurance: life, annuity, accident, and health” A further US registration was obtained on December 3, 1963, (U.S. Reg. No. 0761091) for the word mark ALLSTATE for the “business of making, writing, and underwriting of insurance,” and on December 5, 1967 for the design mark ALLSTATE (U.S. Reg. No. 0840187) for “insurance underwriting services.” Copies of the registration details of these marks were submitted as Annex C to the Complaint, which states that the Complainant now owns approximately thirty (30) additional United States registrations for the trade mark ALLSTATE for a wide range of goods and services including investment advisory services, banking, mortgage lending and financial services. Details of these further registrations have not been provided but Annex D contains the details of a later registration obtained on October 31, 2006, (U.S. Reg. No. 3164784) for the mark 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.”
In addition to its US registrations, the Complaint states that the Complainant owns “numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions around the world”. However, no details of these registrations have been provided.
The Complainant also has a number of domain name registrations for the name ALLSTATE, including (registered May 1995), (registered July 1997) and (registered in July 1998): see Annex E for printouts from the Network Solutions’ WhoIs database, showing the results of searches dated December 13, 2010). It asserts further that, “[A]s part of its communications and marketing program, [it] has registered over one thousand (1000) ALLSTATE-based domain names worldwide (including common typographical errors of the ALLSTATE trademark). However, no evidence of these additional registrations has been provided in the Complaint.
In addition, the Complainant asserts that it has “devoted hundreds of millions of dollars to advertising and promoting its services in the United States under the ALLSTATE trademark”, as well as being the “subject of numerous articles in the media, including national and international print, radio and television.” No evidence to support these statements, for example, samples of advertisements, sales figures, newspaper articles, etc. has been provided.
So far as the disputed domain name is concerned, the evidence demonstrates that it was registered on December 14, 2005. (See Annex A of the Complaint). Printouts from the webpages linking to the disputed domain name (see Annex F, Complaint, search done on December 23, 2010) display a variety of advertising links concerning the field of insurance, including links to the Complainant’s webpage and to Complainant’s direct competitors, for example, “State Farm,” “Liberty Mutual” and “Progressive,” among others. Prior to the submission of this Complaint, on December 10, 2010, the Complainant notified the Respondent by email of its trade mark rights and its claim that the Respondent was violating the Complainant’s rights by using the domain name now in dispute. No response to this correspondence was received from the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant alleges that all three sub-paragraphs of paragraph 4(a) of the Policy are satisfied.
As to paragraph 4(a)(i) of the Policy, it argues that registration of a trade mark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive, referring here to Janus International Holding Co. v. Rademacher,WIPO Case No. D2002-0201. It then refers to its extensive US and foreign trade mark registrations for ALLSTATE, noting that several of these are now incontestable under US law. In particular, its first US registration was at least 44 years prior to Respondent’s registration of the disputed domain name. It therefore asserts that it has established prima facie evidence of validity and inherent distinctiveness of its ALLSTATE trade mark.
As to the issue of confusing similarity between its marks and the disputed domain name, the Complainant makes the following arguments.
a. Prior UDRP panel decisions have found that incorporation of the entirety of a mark into a domain name is sufficient to establish confusing similarity: F. Hoffman-La Roche AG v. Web Marketing Limited,WIPO Case No. D2006-0005.
b. 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. It asserts further that the ALLSTATE trade mark is a famous mark in light of the Complainant’s widespread use and promotion of it over the past several decades in the United States. It draws attention to an earlier UDRP decision where the panel found that the ALLSTATE trade mark is famous: 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.”).
c. The disputed domain name includes a common typographical error of Complainant’s well-known ALLSTATE trade mark and is an instance of “typosquatting” as the word “alstate” is a simple phonetic equivalent of ALLSTATE. It refers to previous UDRP decisions in which typosquatting has been held to be a confusing similar use that takes unfair advantage of a well known mark: Société des Produits Nestlé v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2009-0392; and Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150.
d. Although the Complainant makes no specific submissions with respect to the addition of the words “auto insurance”, it is to be assumed that this addition makes no difference to its overall contention that the disputed domain name is confusingly similar.
e. The Complainant also asserts that the contents of the webpage corresponding to the disputed domain name add to the likelihood of confusion, in that these contain links to the Complainant’s website and to pay-per-click advertisements for competing insurance companies. It is asserted that Internet users will likely come to conclude (wrongly) that the Complainant is affiliated with these webpages.
As to paragraph 4(a)(ii) of the Policy, the Complainant argues that the Respondent has no rights or legitimate interests in the domain name for the following reasons:
a. Given its use of a privacy service (the aptly named “Domains by Proxy, Inc”) to register the disputed domain name, it does not appear that Respondent is commonly known by the ALLSTATE trade mark or by any of the terms that comprise .
b. Even assuming that the Respondent is known by the name “Alstateautoinsurance,” this name is confusingly similar to the ALLSTATE trade mark when used in connection with insurance-related services and this must therefore have been adopted with full knowledge of the Complainant’s trade marks, making it impossible for the Respondent to show a legitimate right or interest in the name: see further Yahoo! Inc. v. Yahoo-Asian Company Limited,WIPO Case No. D2001-0051.
c. The Respondent’s use of a privacy service provides evidence that it is “attempting to hide its activities from scrutiny”. See further The Saul Zaentz Company d/b/a Tolken Enterprises v. Eurobox Ltd./“The Saul Zaentz Company,” WIPO Case No. D2008-0156.
d. The use of a well-known trade mark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use. See Rusticae Seleccion de Calidad S.L. v. Laksh International Solutions Private Limited,WIPO Case No. D2008-1119; Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300; and Parrot S.A. v. Whois Service, Belize Domain WHOIS Service,WIPO Case No. D2007-0779.
e. The Respondent is not making a non-commercial use of the disputed domain name, given that its webpage contains sponsored links leading to the websites of unrelated third parties offering insurance-related services that directly compete with those offered by Complainant. In short, the Respondent is offering a “parking services” from which it can be inferred that it is earning click-through revenue from the third-party links that appear on its webpage. See Owens Corning v. NA,WIPO Case No. D2007-1143; and Pfizer Inc., G.D. Searle LLC Inc. v. Samir Kumar,WIPO Case No. D2009-0429.
f. There is nothing about the webpage found at the disputed domain name that suggests fair use. Rather the Respondent is simply using a confusingly similar domain name to provide click-through links to other insurance sites, some of which are competitors of the Complainant.
As to paragraph 4(a)(iii) of the Policy, the Complainant makes the following submissions:
a. The Respondent has used the disputed 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 within Policy, paragraph 4(b)(iv), in that its use of the ALLSTATE trade mark in disputed domain name is likely to cause confusion to consumers as to the source of the information found on the website affiliated with the disputed domain name. This confusion is compounded by the sponsored links appearing on the corresponding webpage, which features prominent links to the Complainant’s website and to insurance-related services offered by unrelated third-party competitors. The allegation is made that an inference can be made that the Respondent stands to benefit financially from the sponsored links. Reference is made to the earlier UDRP decisions of Deloitte Touche Tohmatsu v. Chan,WIPO Case No. D2003-0584 and Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 (finding bad faith based on “parking” webpage).
b. Bad faith can also to be seen where a respondent is using a well-known trade mark 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; and Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568. Underlining the presence of bad faith in the present case is the Complainant’s widespread use and promotion of its ALLSTATE trade mark, and its numerous U.S. trade mark registrations, with Complainant having “spent hundreds of millions of dollars promoting the ALLSTATE trade mark in the United States”.
c. There can be no question that the Respondent knew or should have known about the Complainant’s trade mark rights before registering its domain name, a clear pointer to bad faith in registering the disputed domain name. See Yahoo! Inc. v. Yahoo-Asian Company Limited, supra. And Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397. Indeed, the Complainant argues that the Respondent’s knowledge of Complainant’s trademark rights is “indisputable given that the website located at features click-through advertising links for Complainant’s primary business domain name, ”.
d. Further the Complainant argues 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 and National Association of Professional Baseball League, Inc. v. Zuccarini,WIPO Case No. D2002-1011.
e. The Respondent’s use of the disputed domain name is for commercial gain, in that it is “advertising links to websites of Complainant’s competitors”, meaning that the Respondent is benefitting from the likely confusion between Complainant’s trade mark and the disputed domain name and is likely to generate click-through fees from advertising featured on the website. Reference is made here to the previous UDRP domain name cases of Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG v. Michael Robert, WIPO Case No. D2009-0446 ; American Automobile Association v. Jack Holder, NAF Case No. FAl227171; Brink’s Network, Inc. v. Jenny Ho, ,WIPO Case No. D2009-0530; and Credit Industriel et Commercial S.A. v. Christopher Hunt,WIPO Case No. D2008-0892).
f. The Respondent appears to have a history of registering domain names that are confusingly similar to the marks of others and has been the subject of at least six prior domain name proceedings in which it has been found that it had acted in bad faith with the subject domain names being ordered to be transferred to the rightful trade mark owner. See Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. MGA Enterprises Limited/Domains by Proxy, Inc.,WIPO Case No. D2010-1064; Humana Inc. v. MGA Enterprises Limited and Domains by Proxy, Inc., WIPO Case No. D2006-1405; Lauth Group Inc. v. MGA Enterprises Limited, NAF Case No. FA1124267; Exxon Mobile Corporation v. MGA Enterprises Limited, NAF Case No. FA1273445; Univision Communications Inc. v. MGA Enterprises Limited, NAF Case No. FA1336097; and Vanguard Trademark Holdings USA LLC v. MGA Enterprises Limited, NAF Case No. FA1337424. Thus, the Complainant submits that it is reasonable to conclude that the Respondent is familiar with the practice of registering and commercializing domain names that include well-known trade marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel may decide the dispute based upon the complaint. Such default on the part of the Respondent, does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to assess each of the elements required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in achieving the relief requested. A. Identical or Confusingly Similar
Paragraph 4(a) of the Policy requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) of the Policy that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark) and secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first limb, there is no doubt that the Complainant has met this requirement: it has shown U.S. registrations for at least three iterations of the mark ALLSTATE that precede the registration of the disputed domain name by several scores of years. The fact that these registrations are only within one jurisdiction (the U.S.) is of no significance: paragraph 4(a)(i) of the Policy does not impose any requirements as to the nationality of the registration. While the Complainant states that it has further registrations both within the U.0.S and elsewhere, this is of no assistance to the Panel, in the absence of evidence of the actual registrations. However, for the purposes of the present proceedings, the trade marks exhibited in Annexes C and D to the Complaint are more than sufficient to establish that the Complainant has “rights in a trade mark or service mark” for the purposes of paragraph 4(a)(i) of the Policy.
As to whether the disputed domain name is confusing similar to the Complainant’s marks (there is no suggestion that it is identical), the Panel finds that this requirement is also satisfied, for the following reasons:
a. The disputed domain name commences with the same word ALSTATE that comprises the Complainant’s trade mark, albeit with a slightly different spelling. The immediate and predominant impression, therefore, is that both the disputed domain and the trade mark have the same common root word (ALLSTATE) that is encountered first by the viewer visually as well as aurally when the domain name and marks are used verbally.
b. The misspelling ALSTATE in the disputed domain name is insufficient to distinguish it from the ALLSTATE trade marks.
c. The addition of descriptive suffixes to the disputed domain name is also insufficient to remove the likelihood of confusion between it and the Complainant’s trade marks – the obvious inference for a viewer of the disputed domain name to draw would be that this is in some way connected to the Complainant, rather than the opposite.
d. It is unnecessary, for present purposes here, to consider the effect of the fame, or otherwise, of the Complainant’s marks.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is also required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for a respondent to put forward for the panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist. In this regard, the evidence provided by the Complainant indicates the following:
a. There is no evidence, within the meaning of sub-paragraph 4(c)(i), that the Respondent has used or made or demonstrable 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. In this regard, it is difficult to disagree with the Complainant’s contention that the website situated at the disputed domain name (and visited by the Panel on March 5, 2011) is anything other than a “click through” site for various insurance services, none of which appear to the Panel to be actually offered by the owner of the disputed domain name and some of which are direct competitors of the Complainant. In addition, as Annex F to the Complaint shows, there has also been a click-through link to the Complainant itself. These are referred to on the website located at the disputed domain name as “sponsored listings.” The Panel sees no indication that there is a bona fide offering of insurance services at this site by the Respondent itself. The inference must therefore be that, as the Complainant submits, the Respondent is earning revenue by providing a “click through” service to other sites, rather than carrying on a legitimate business of their own at the site.
b. There is no evidence of any facts that would support the circumstances referred to in paragraph 4(c)(ii) or (iii) of the Policy. In particular, it is clear that the activities of the Respondent have not been licensed or approved by the Complainant.
c. The Panel also accepts the Complainant’s submission that the use of a privacy service by the Respondent strongly suggests that the Respondent is not making a legitimate use of the domain name. In this regard, the words of the Panel in The Saul Zaentz Company d/b/a Tolken Enterprises v. Eurobox Ltd./“The Saul Zaentz Company,” WIPO Case No. D2008-0156 seem apt, namely that the Respondent is “attempting to hide its activities from scrutiny”.
The absence of any Response from the Respondent addressing the matters referred to in paragraph 4(c) entitles the Panel to infer that none of these circumstances exist in the present case. In the words of the Panel in J. Choo Limited v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1091, this is an instance in which the present Panel can assume that,
“[I]n the absence of any alternative explanation, the Respondent in all likelihood selected the Domain Name because of its incorporation of the Complainant’s trademark with a view to receiving revenue from web traffic which the Respondent directs to the various links on the associated website. This could not be described as a bona fide offering of goods or services, and it is clear to the Panel that the Respondent’s use of the Domain Name in this manner does not confer any rights or legitimate interests upon it”
Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) of the Policy has been made out. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name in dispute, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be nonexclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use.
In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith: Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several panel decisions, see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules – and this would include responding to the Complaint – the Panel is entitled to draw from such default such inferences, as it considers appropriate.
There is no suggestion by the Complainant that the circumstances referred to in paragraph 4(b)(i) of the Policy arise here. However, the researches of the Complainant indicate that the circumstances referred to in paragraph 4(b)(ii) are present, in that the Respondent has already been the subject of adverse decisions in at least six prior domain name proceedings in which transfer of the relevant domain name to the trade mark owner was ordered. See Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. MGA Enterprises Limited/Domains by Proxy, Inc.,WIPO Case No. D2010-1064; Humana Inc. v. MGA Enterprises Limited and Domains by Proxy, Inc., WIPO Case No. D2006-1405; Lauth Group Inc. v. MGA Enterprises Limited, NAF Case No. FA1124267; Exxon Mobile Corporation v. MGA Enterprises Limited, NAF Case No. FA1273445; Univision Communications Inc. v. MGA Enterprises Limited, NAF Case No. FA1336097; and Vanguard Trademark Holdings USA LLC v. MGA Enterprises Limited, NAF Case No. FA1337424. The Panel has also found one further case which appears to have involved an affiliate of the Respondent, using the same privacy service: Humana Inc v. Domains by Proxy Inc/MGAVentures Limited, WIPO Case No. D2008-0040. Most of these proceedings involved multiple domain name registrations and some of the trade marks concerned were famous or well-known, e.g. HILTON and EXXON. However, the relative fame of the trade mark is not a relevant matter for the purposes of paragraph 4(b)(ii). Rather, this requires that there has been a “pattern” of conduct on the part of the Respondent consisting of the registration of domain names in order to prevent the owners of trade marks or service marks from reflecting the marks in corresponding domain names. Each of these prior decisions evidences that the Respondent has engaged in such conduct, leading to the reasonable inference that this was its intention in the present proceeding. Accordingly, bad faith in its registration of the disputed domain name is established within the meaning of this sub-paragraph.
There is no direct evidence that the circumstances referred to in paragraph 4(b)(ii) arise here but the Panel is prepared to infer that those referred to in Policy, paragraph 4(b)(iv) are present, namely that the Respondent has used the disputed domain name to intentionally attract Internet users for commercial gain. The Panel accepts the Complainant’s submission that the Respondent’s use of the ALLSTATE trade mark in the disputed domain name is likely to cause confusion among consumers as to the source of the information found on the website affiliated with the disputed domain name, in particular the links to the Complainant’s website and to insurance-related services offered by unrelated third-party competitors. As these are described as “sponsored listings” it is reasonable to infer that the Respondent stands to benefit commercially from these links.
As noted above, the factors listed in Policy, paragraph 4(b) are inclusive, and there may be other circumstances that point to bad faith registration and use. In this regard, while, in the Panel’s view, the Complaint fails to provide proper evidence of the fame of the Complainant’s trade marks, other than general assertions as to advertising and promotion expenditure, it seems clear from the other evidence provided that the Respondent’s registration and continued use of the disputed domain name must have been done with full knowledge of the existence of the Complainant’s marks and this also serves to underline its lack of good faith. First, there is the history of the Respondent’s conduct in registering other domain names corresponding to registered trade and service marks (including some that are famous or well known). Secondly, there is the fact that this is a clear instance of “typosquatting” in which the Respondent has registered a domain name that incorporates the Complainant’s mark with a minor misspelling and has used it in relation to a website that offers links to exactly the same sort of services offered by the Complainant, namely insurance services, including a link to the Complainant itself. See Annex F to the Complaint.
There is some shortfall in the Complainant’s evidence here, however, that should be noted, although ultimately it does not affect the present decision. Thus, in its amended complaint the Complainant states that it has registered some 1000 different domain names that incorporate the ALLSTATE trade mark with variations ands misspellings thereof (presumably in order to provide a defensive shroud around its principal .com, .net and .org registrations). However, no evidence of these additional registrations is provided, apart from the WhoIs printouts for the Complainant’s principal registrations in the .com, .net and .org domains. The problem with these printouts is that they list a significant number of other domain names incorporating the trade mark ALLSTATE (spelled in that way) that are for sale and that are apparently not already registered in the name of the Complainant. It would therefore have been helpful to the Panel for it to have been provided with details of the additional domain name registrations incorporating misspellings that the Complainant had obtained. Such evidence would have served to underline the deliberate actions of the Respondent in registering one misspelling that had escaped the Complainant’s attention. In the final analysis, however, this lack of evidence does not affect the Panel’s view that there is sufficient other evidence here to indicate that the particular misspelling adopted here by the Respondent indicates its clear knowledge of the Complainant’s trade mark, notably its past pattern of conduct in registering domain names to block the usage of corresponding trade marks and its use of the disputed domain name in this particular case with respect to the same kind of services offered by the Complainant. In reaching this conclusion, the Panel also notes that several prior domain name panels have found typosquatting in itself to be evidence of bad faith: see ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 and National Association of Professional Baseball League, Inc. v. Zuccarini,WIPO Case No. D2002-1011. For the purposes of the present proceeding, however, and in view of the other surrounding circumstances, it is unnecessary for the Panel to go so far.
The Panel therefore concludes that the requirements of paragraph 4(a)(iii) of the Policy are made out. 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
Staniforth Ricketson
Sole Panelist
Dated: March 6, 2011
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