The Complainant is Allstate Insurance Company, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.
The Respondent is Glass Auto Claims of Florida, United States, United States of America / Domains by Proxy, Inc., Scottsdale, Arizona, United States of America.1 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 11, 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 a Final Amended Complaint on January 24, 2011.
The Center verified that the Amended Complaint2 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 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on February 28, 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.
It was noted that when notifying the Complaint to the Respondent an email address shown on the webpage “www. ” i.e. : tetelicae@, was inadvertently not included in accordance with paragraph 2(a)(ii)(c) of the Rules. Therefore, on March 14, 2011 an email communication was transmitted to the Parties, noting that due to an administrative oversight, “Notification of Complaint and Commencement of Administrative Proceeding” was not copied to the above email address. The Notification of Complaint and Commencement of Administrative Proceeding, the Complaint, the amended Complaint and the Annexes were transmitted to the Respondent.
The Respondent was provided an additional five (5) days, in order to indicate to the Center by return email whether it intended to participate in these proceedings. Accordingly, the due date for the submission of any Response, or the indication that the Respondent intends to submit any such Response, was set at March 19, 2011. No response was received from the Respondent at the above mentioned email address. 4. Factual Background
The Complainant, established in 1931, is a well known provider of insurance products and services in the United States of America. The Complainant is the owner of numerous registrations for the ALLSTATE mark in the United States and other jurisdictions in connection with its products, services, activities and events. The earliest of these trademark registrations was issued by the United States Patent and Trademark Office in 1961. As a result of long and widespread use and recognition of the Complainant’s ALLSTATE mark, at least one prior UDPR panel has concluded that the Complainant’s mark has become well known and famous in the United States. See Allstate Insurance Company v. Domain Supermarket,WIPO Case No. D2009-1175.
The Respondent registered the disputed domain name on June 24, 2009. The disputed domain name resolves to a pay-per-click website featuring a variety of advertising links related to the field of insurance, including links to a number of the Complainant’s direct competitors in the insurance market, such as State Farm, Liberty Mutual, and Esurance. The Respondent’s website further reflects that the disputed domain name is for sale. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name incorporates its well known ALLSTATE mark in its entirety and on this basis is confusingly similar to the Complainant’s mark. The Complainant also maintains that the inclusion of the descriptive words “auto claims” in the disputed domain name creates a further association with the Complainant’s business and compounds the confusing similarity between the disputed domain name and the Complainant’s mark. In addition, the Complainant argues that the content of the website to which the disputed domain name resolves adds to the likelihood of confusion.
The Complainant maintains that the Respondent lack rights or legitimate interests in the disputed domain name as the Respondent has not been authorized to use the Complainant’s ALLSTATE mark and has not been commonly known by the disputed domain name. Further, the Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. According to the Complainant, it is inconceivable that the Respondent was not aware of the Complainant’s famous mark when registering the disputed domain name, and the use of the disputed domain name with a pay-per-click website featuring advertising links related to the insurance business manifests an clear intent on the part of the Respondent to trade on the goodwill associated with the Complainant’s mark. The Complainant further asserts that such use precludes any claim by the Respondent to be making a legitimate noncommercial or fair use of the disputed domain name.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith, to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. The Complainant submits that in the circumstances of this case the Respondent without question knew or should have known of the Complainant’s trademark rights before registering the disputed domain name. The Complainant further argues that the Respondent’s use of a privacy protection service also supports an inference of bad faith in the circumstances of this case. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s ALLSTATE mark. Regarding the question of identity, the inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
In this instance, the disputed domain name incorporates the Complainant’s mark in its entirety. The confusing similarity between the disputed domain name and the Complainant’s well known and widely recognized mark is not diminished by the addition of the descriptive words “auto claims”, which could be further associated by consumers with the Complainant’s business activities. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain name to attract Internet users to a pay-per-click website with advertising links and searches related to insurance, a number of which are links to insurance products and services officered by direct competitors of the Complainant. There is no indication that the Respondent has been commonly known by the disputed domain name, nor any evidence that the Respondent has been authorized by the Complainant to use the Complainant’s marks.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant’s well known mark, intending to attract Internet users to the Respondent’s pay-per-click website. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; First American Funds, Inc. v. Ult.Search, Inc,WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093. The Respondent has not been authorized to use the Complainant’s marks, and is there no evidence that the Respondent has been commonly known by the disputed domain name. Nor in view of the foregoing can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Based on the undisputed facts and circumstances reflected in the record, the Panel entertains little doubt that the Respondent knew of and had in mind the Complainant’s well known and widely recognized ALLSTATE mark when registering the disputed domain name. See Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453.
Based on the record before it, The Panel concludes that the Respondent registered and has used the disputed domain name with the intent to profit from and exploit the goodwill associated with the Complainant’s ALLSTATE mark. See Aubert International SAS and Aubert France SA v. T Co., supra. The Panel further is of the view that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 the Complainant.
William R. Towns
Sole Panelist
Dated: March 19, 2011
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