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.
Respondents are A Domain Privacy and Host Master Transure Enterprise Ltd (hereinafter “Respondent”) of Beaumaris, Victoria, Australia and Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name. On January 13, 2011, A, Inc. (the “Registrar”) 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 Complainant on January 14, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 21, 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 1, 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 owner, amongst others, of the following trademark registrations:
TRADEMARK
REG. NO.
SERVICES
DATE OF REGISTRATION
COUNTRY
ALLSTATE
0717683
Underwriting of the following types of insurance: life, annuity, accident, and health.
June 27, 1961
United States
ALLSTATE
0761091
Business of making, writing and underwriting of insurance.
December 3, 1963
United States
ALLSTATE (and Design)
0840187
Insurance underwriting services.
December 5, 1967
United States
ALLSTATE.COM
3164784
Banking; loan financing; investing and administering 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 acclaims adjustment; financial sponsorship of athletic events; financial sponsorship of local charitable organizations; motor club services, namely, providing bail bonding for motorist; providing financial reimbursement of legal defense services related to moving violations.
October 31, 2006
United States
The disputed domain name was registered on August 29, 2008. 5. Parties’ Contentions A. Complainant
Complainant argued the following:
That Complainant is the largest publicly held insurer in the United States.
That since Complainant’s incorporation in 1931, it has become a well-established and well-known insurance company in the United States.
That Complainant has been using its trademark ALLSTATE since 1931.
That Complainant received its first federal trademark registration for ALLSTATE in 1961.
That Complainant has devoted hundreds of millions of dollars to advertising and promoting its services in the United States under the ALLSTATE trademark.
That Complainant has registered over one thousand ALLSTATE-based domain names worldwide such as: registered in May 1995, registered in July 1998, and registered in July 1997.
1. Identical or Confusingly Similar
That the registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
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.
That the 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.
That other UDRP panels have determined that the ALLSTATE trademark is famous (and cites Allstate Insurance Company v. Domain Supermarket,WIPO Case No. D2009-1175).
That the disputed domain name includes a common typographical error of Complainant’s ALLSTATE trademark.
That “typosquatting” is a form of cybersquatting in which a respondent registers and uses a domain name that is a common misspelling or predictable mistyping of a distinctive mark in order to take advantage of typographical errors made by Internet users seeking Complainant’s commercial website.
That typosquatting takes “unfair advantage” of Complainant’s well-known ALLSTATE trademark and associated business reputation.
That the disputed domain name includes a common typographical error of Complainant’s trademark ALLSTATE in order to change the trademark to “ASLLSTATE”.
That the content of the webpage to which the disputed domain name resolves, adds to the likelihood of confusion, because this website features pay-per-click advertisements for competitors of Complainant and Complainant itself.
2. Rights or Legitimate Interests
That Respondent is not making a legitimate noncommercial use of the disputed domain name, but is instead misleading and diverting consumers for commercial purposes.
That although Respondent used the privacy service A Domain Privacy in order to prevent Complainant from learning Respondent’s true identity, it does not appear that Respondent is commonly known by the ALLSTATE trademark.
That Respondent’s use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny.
That the use of a well-known trademark or the misspelling of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use. (and cites RUSTICAE SELECCIÓN DE CALIDAD S.L. v. LAKSH INTERNET 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).
That Respondent is not making a noncommercial use of the disputed domain name. That the “parked” web pages to which the disputed domain name resolves feature sponsored links, which lead to the websites of third parties offering insurance-related services that directly compete with those offered by Complainant (and cites Owens Corning v. NA,WIPO Case No. D2007-1143).
That nothing about the website found at the disputed domain name suggests fair use. That Respondent is simply using Complainant’s trademark in the disputed domain name to divert Internet users.
3. Registered and Used in Bad Faith
That Respondent’s use of a common typographical misspelling of the ALLSTATE trademark in the disputed domain name causes likelihood of confusion.
That confusion is increased by the sponsored links appearing on the corresponding website, which feature prominent references to insurance-related services offered by third party competitors and Complainant.
That Respondent is using a well-known trademark and there is no legitimate use of the mark in the disputed domain name.
That given Complainant’s widespread use and promotion of its trademark, there can be no doubt that Respondent is aware of Complainant and its trademark rights.
That Respondent knew or should have known about Complainant’s trademark rights before registering the disputed domain name.
That Respondent registered the disputed domain name in bad faith since it is a common typographical misspelling of and is confusingly similar to Complainant’s well-known ALLSTATE trademark and there is no legitimate use.
That Respondent is using the disputed domain name for commercial gain by advertising links to unrelated third-party websites, and benefiting from the likely confusion between Complainant’s trademark and the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name, and
(iii) The disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, Complainant must prove that each of these elements are present.
As Respondent has failed to submit a Response to Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487. A. Identical or Confusingly Similar
Complainant is the holder of the registered trademark ALLSTATE. According to the affirmations and evidence submitted by Complainant, which have not been contested by Respondent, the trademark ALLSTATE has been in use for decades. Said mark has also been publicized extensively.
The disputed domain name is a common misspelling of the trademark ALLSTATE. It consists of the addition of the letter “s” to the trademark ALLSTATE. The letter “s” is next to the letter “a” in a normal keyboard. This is no coincidence. Typosquatting is the practice of registering domain names consisting of normal spelling and/or typing errors. This practice generates confusion among Internet users who are misled when exposed to the mistakenly typed domain name. (See, e.g., Expedia, Inc. v. Alvaro Collazo,WIPO Case No. D2003-0716; VeriSign, Inc. v. Onlinemalls,WIPO Case No. D2000-1446; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames - For Sale,WIPO Case No. D2001-0094; NetWizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768; Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd,WIPO Case No. D2000-1293).
The disputed domain name is inherently confusingly similar to the trademark ALLSTATE, graphically and phonetically, because it consists of the trademark ALLSTATE per se, with the addition of the letter “s” within said trademark.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman, WIPO Case No. D2004-0627).
Therefore this Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark ALLSTATE. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
“(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.” (Policy, paragraph 4(c)).
Respondent has not submitted evidence to show the existence of use of the disputed domain name in connection with a bona fide offering of goods or services.
Complainant has submitted evidence showing that the disputed domain name resolves to some parked web pages, which in turn feature sponsored links, which lead to the websites of third parties offering insurance-related services that directly compete with those offered by Complainant, and to Complainant itself (Owens Corning v. NA,WIPO Case No. D2007-1143).
Respondent has not proven to have been commonly known by the disputed domain name. On the contrary, Respondent used the privacy service A Domain Privacy in order to conceal its identity.
Therefore, the Panel finds no rights or legitimate interests on the side of Respondent. The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 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.”
Complainant’s evidence shows that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website to which the disputed domain name resolves, parked web pages, which features sponsored links, which lead to the websites of third parties offering insurance-related services that directly compete with those offered by Complainant, and to Complainant itself. This constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Owens Corning v. NA,WIPO Case No. D2007-1143.
Therefore, the third element of the Policy has been met. 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 disputed domain name be transferred to Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: March 19, 2011
Full & Egal Universal Law Academy