Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.
Respondent is Domains by Proxy, Inc. / B.T. Croughs, Nieuweweg of Scottsdale, Arizona, United States of America and Groningen, the Netherlands, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Go Australia Domains, Inc (the “Domain Name”). 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 Go Australia Domains, Inc. a request for registrar verification in connection with the Domain Name. On January 13, 2011, Go Australia Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 18, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 19, 2011.
The Center verified that the Complaint together with the amendment to the 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 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 11, 2011.
The Center appointed Clive Elliott as the sole panelist in this matter on February 20, 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 claims that it is the largest publicly held personal lines insurer in the United States of America. It was founded in 1931 and Complainant contends that since then it has become a well-established and well-known insurance company providing insurance services all over the United States of America.
Complainant states that it has continuously used the ALLSTATE trademark since 1931 to identify products, services, activities and events related to Complainant. The trademark ALLSTATE was first federally registered in 1961. 5. Parties’ Contentions A. Complainant
Complainant states that as well as the ALLSTATE registered trademark it also owns numerous trademark registrations including ALLSTATE FINANCIAL and ALLSTATE.COM.
Complainant contends that its revenues were approximately USD 32 billion for 2009 and that it has generated billions of dollars in the sales of products and/or services under the ALLSTATE trademark in the United States of America. Complainant submits that it has devoted hundreds of millions of dollars towards advertising and promoting its services in the United States of America under the ALLSTATE trademark and its services have also been the subject of numerous articles in the media, including national and international print, radio and television.
Complainant states that as a result of its 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.
Complainant asserts that as part of its communications and marketing program, it has registered over 1,000 ALLSTATE-based domain names worldwide (including common typographical errors of the ALLSTATE trademark). These domain names include: registered in 1995, registered in 1998 and registered in 1997. Complainant states that it is also the owner of the domain name , registered in April 2008, from which it offers its financial-related services in connection with the ALLSTATE trademark
Complainant notes that Respondent registered the Domain Name on April 1, 2010, many years after Complainant adopted the ALLSTATE trademark, Complainant's registration of the ALLSTATE trademark and Complainant’s registration of the domain name.
Complainant submits that the Domain Name wholly incorporates its well-known ALLSTATE trademark and that the Domain Name differs from Complainant's ALLSTATE trademark only by the addition of the descriptive words "financial services" and merely adds the descriptive word "services" to Complainant's ALLSTATE FINANCIAL trademark. These words merely describe the services provided by Complainant in connection with the ALLSTATE trademark.
Complainant contends that Respondent is operating the Domain Name as a pay-per-click advertising site and states that that the webpages corresponding to the Domain Name feature a variety of advertising links for insurance-related services and for direct competitors of Complainant. Complainant suggests that Respondent is likely generating click-through fees from the advertising featured on the website and that such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of Respondent’s registration in bad faith.
Complainant advises that on December 1, 2010, it sent Respondent a letter via e-mail, to the address provided on the registration, advising Respondent that it considered it was violating Complainant's rights by using the Domain Name. Respondent did not respond to this notice.
Complainant asserts that although Respondent has used a privacy service in registering the Domain Name, it does not appear that Respondent is commonly known by the ALLSTATE trademark or by any of the terms that comprise the Domain Name.
Complainant submits that the Domain Name is confusingly similar to its ALLSTATE and ALLSTATE FINANCIAL trademarks when used in connection with insurance-related or investment advisory services and its adoption came long after Complainant's adoption of these trademarks. Complainant argues that adoption of the Domain Name was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant's goodwill.
Complainant submits that Respondent's use of the ALLSTATE and ALLSTATE FINANCIAL trademarks in the Domain Name is likely to cause confusion among consumers as to the source of the information found on the website affiliated with the Domain Name. It submits that this confusion is compounded by the sponsored links appearing on the corresponding webpages, which feature prominent references to insurance-related services offered by unrelated third-party competitors. Therefore Complainant submits that Respondent has registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant is the long-standing owner of the ALLSTATE and ALLSTATE FINANCIAL trademarks (hereinafter “the Trademarks”); that there is merit in Complainant’s submission that Complainant is the owner of the Trademarks; that Respondent’s use of the Domain Name wholly incorporates its well-known ALLSTATE trademark; and that the Domain Name differs from Complainant's ALLSTATE trademark only by the addition of the descriptive words "financial services".
There is also merit in the submission that the mere addition of the descriptive word "services" to Complainant's ALLSTATE FINANCIAL trademark is confusingly similar. It is well established that the addition of a descriptive term to a known trademark or name does not render it different or distinctive from that trademark or name. Respondent has had the opportunity to do so but has declined to explain why it registered the Domain Name. As a result, the Panel has no difficulty in finding that the Domain Name is confusingly similar to the Trademarks.
It is therefore found that Complainant has rights in the Trademarks, that the Trademarks comprise a dominant and confusing part of the Domain Name, and that the requirements of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
It appears that Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use and register its trademarks or to seek the registration of any domain name incorporating the Trademarks.
The registration and use of the Trademarks long preceded the registration of the Domain Name. The Domain Name makes an obvious and direct reference to the Trademarks and insurance-related services provided by Complainant.
Complainant contends that Respondent is operating the Domain Name as a pay-per-click advertising site and that the Domain Name provides access to advertising links for insurance-related services and for direct competitors of Complainant. This assertion is not disputed. The Panel finds that such activity is not consistent with any rights or legitimate interests on Respondent’s part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Respondent has registered and uses the Domain Name in bad faith.
It is not difficult for this Panel, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant’s Trademarks at the time it registered the Domain Name. The Trademarks are clearly well-known in the field of insurance-related services in the United States of America and Respondent has not suggested that Complainant's goodwill in and relating to its Trademarks should not be taken into account in assessing Respondent's conduct.
This enables the Panel to conclude that the Domain Name was both registered and used in bad faith in accordance with 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.
Clive Elliott
Sole Panelist
Dated: March 8, 2011
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