Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, P.C., United States of America.
Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America, and Guowei Hai Gui of Shanghai, Minhang, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On February 1 and 2, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain names. On February 2, 2011, Moniker Online Services, LLC 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 Complainant on February 7, 2011, with respect to the domain names , and and on February 8, 2011, with respect to the domain name , providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a request to consolidate the proceedings into the instant proceeding and an Amended Complaint with regards to each of the disputed domain names on February 10, 2011.
The Center verified that 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 February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2011.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 16, 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
The trademark upon which the Complaint is based is ALLSTATE. According to the documentary evidence and contentions submitted, the ALLSTATE trademark was first registered in the United States under U.S. Reg. No. 717683 on June 27, 1961 for insurance services. Complainant also owns U.S. Reg. No. 761091 as of December 3, 1963 and U.S. Reg. No. 840187 as of December 5, 1967 for the same services. On February 4, 2003, Complainant obtained U.S. Registration No. 2684377 for the ALLSTATE FINANCIAL and design trademark in connection with the financial and insurance services. On October 31, 2006, Complainant obtained U.S. Reg. No. 3164784 for the ALLSTATE.COM trademark in connection with financial services.
Complainant is a well-known insurance company which was founded in 1931 and provides insurance services all over the United States. Complainant owns a large number of domain names containing the ALLSTATE trademark, including , and , which were registered in the period of May 10, 1995 to July 17, 1998, and , which was registered in April 2008.
The disputed domain names , , and were registered on October 10, 2004. The websites to which such domain names resolve display advertising links in the field of insurances, including links to Complainant’s direct competitors in the insurance market. Complainant sent cease and desist letters to Respondent on December 10, 2010 regarding the disputed domain names. Complainant states that Respondent never replied. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain names are confusingly similar to the trademarks in which Complainant has rights because (i) the incorporation of a mark in full within a disputed domain name is sufficient to establish confusingly similarity between the mark and the disputed domain name, particularly where the incorporated mark is well-known, because users are likely to believe that the trademark holder authorized or is controlling the disputed domain name; (ii) a prior WIPO Panel has determined that the ALLSTATE trademark is famous, (iii) the disputed domain names only differ from the ALLSTATE trademark by adding a descriptive word, or common misspelling thereof, and by changing the “ial” portion of the word “financial” in the ALLSTATE FINANCIAL trademark, and (iv) the content of the webpage that Internet users are directed to adds to the likelihood of confusion.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) Respondent is not commonly known by the names “allstateclaim”, “allstatefinance”, “allstateinsurace”, or “allstateonline”, but even if it were any adoption of a name which is confusingly similar to Complainant’s trademarks was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill; ii) Respondent’s use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny; (iii) Respondent is not making a noncommercial use of the disputed domain name, and the use of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use; and (iv) Respondent has listed the domain names and for sale.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) bad faith exists where, as in the instant case, a respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website; (ii) bad faith exists where, as in the instant case, a respondent uses a well-known trademark and there can be no question that respondent knew or should have known about complainant's trademark rights before registering its domain name; (iii) Respondent is using the disputed domain names for commercial gain by advertising links to websites of Complainant’s competitors; (iv) the registration and offer for sale of a domain name which is based upon another’s intellectual property demonstrates bad faith; (v) Respondent appears to be engaged in a pattern of registering and using domain names in bad faith; and (vi) Respondent is responsible for the content of the websites located at the domain names. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Status of Respondent
When the Complaint was filed, the disputed domain names were registered in the name of “Moniker Privacy Services”, which is obviously a proxy service to enable “real” owners of domain names to conceal their identities. By the time the Center transmitted to the registrar a request for registrar verification in connection with the disputed domain names, the identity of the actual registrant was disclosed. Both the proxy service and Guowei Hai Gui have been served with copies of the Complaint and neither has responded. The Panel sees no reason to distinguish between the two. The practice of having two respondents to a proceeding under the Policy where one is a proxy service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases, as it helps to inform interested parties. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642. B. Consolidation of Multiple Domain Names
Paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules as paragraph 3(c) of the Rules establishes that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Given that the registrar has disclosed information confirming that the beneficial holder of each disputed domain name is the same, i.e., Guowei Hai Gui, the Panel finds that the Center’s acceptance of the consolidation request was appropriate and fair. C. Laches
The Panel notes that the disputed domain names were registered on October 10, 2004, and that the Complaint was filed on January 31, 2011. The question which arises is whether the elapse of around 6 years from the domain name registration date prevents Complainant from commencing an administrative proceeding against Respondent under the Policy.
The Panel recognizes that the issue has been addressed in previous UDRP decisions and that the doctrine of laches or estoppel generally has not been applied to the Policy proceedings. “Estoppel has rarely been raised as a defense in a proceeding under the Policy, and to this panel’s knowledge has never been the basis for denying a complaint when all elements of the Policy were established”, Justice for Children v. R neetso / Robert W. O'Steen,WIPO Case No. D2004-0175. See also Tax Analysts v. eCorp.,WIPO Case No. D2007-0040; Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011; Charter Communications, Inc. v. CK Ventures Inc. / C,WIPO Case No. D2010-0228; Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256.
As decided in Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560, “[w]ithout some substantial evidence to indicate that Complainant approved of or condoned Respondent’s use of his mark in the disputed domain name, the Panel is not prepared to import a bar against his cause of action.” D. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. E. Identical or Confusingly Similar
The disputed domain names , , and incorporate the ALLSTATE trademark in its entirety and the fact that the disputed domain names consist of a combination of a registered trademark and a descriptive or generic word, or a common misspelling thereof (such as “finance”, “claim”, “online” and “insurace”), does not affect a finding of similarity since domain names are typically made as one single word. In fact, in this type of combination it is clear that the ALLSTATE trademark stands out, and leads the public to think that the disputed domains are somehow connected to the owner of the registered trademark. In addition, the “ALLSTATE FINANCIAL” trademark was registered prior to Respondent’s registration of the domain name.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark, such as ALLSTATE.
In addition, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive mark name is to be considered confusingly similar to the mark. See, e.g., Quixar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253. Further, “insurace” is a common misspelling of the word “insurance”. Also, the words “claim”, “finance” and “insurance” are closely related to the activities of Complainant, and the word “online” identifies the Internet activities of a business. Finally, the likelihood of confusion between the disputed domain names and the ALLSTATE trademark is reinforced by the fact that the websites to which the disputed domain names resolve display various advertising links in the field of insurance.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain names , , and are clearly confusingly similar to Complainant’s trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. F. Rights or Legitimate Interests
The Panel finds as reasonable Complainant’s contention that Respondent is not commonly known by the disputed domain names. The practice of using a proxy service to achieve registration of domain names creates a potential for abuse by cybersquatters. While there can be valid reasons for a person wishing to protect privacy by means of a proxy service, that is a factor pointing in direction of bad faith in a great variety of cases. See Barclays Bank PLC v. Privacy Protect/Callum Macgregor,WIPO Case No. D2010-1988. And the fact that the domain names and are being offered for sale is a further indication of lack of legitimate interests in such domain names.
In addition, the Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is an indication of bad faith in itself, even without considering other elements. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. Further, the combination of the word “allstate” with “claim”, “finance”, “online” and “insurance” clearly shows an intent to create an association with Complainant and its products in view of their close relationship with the main business activities of Complainant.
Also, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The Panel concurs with the prior UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing sponsored links to the complainant’s competitors. In Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819, the panel held that respondent’s use of the domain name for a commercial website with links to competitors of complainant cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(ii) of the Policy.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain names, and Respondent by defaulting has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights to or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. G. Registered and Used in Bad Faith
In light of the reputation of the ALLSTATE trademark, the reproduction by Respondent of this trademark in its entirety, and the combination of this trademark with a descriptive or generic term, or a common misspelling thereof, it is clear that Respondent in all likelihood knew of the existence of Complainant’s trademark and of its relevance in the United States market. As indicated in another Policy case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”. Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325.
Also, the Panel has found already that Respondent is obviously not making any legitimate noncommercial or fair use of the disputed domain names. The Panel takes further the view that in this case the content of a website is relevant in the finding of bad faith use. As indicated before, the websites to which the disputed domain names resolve contain a variety of advertising links concerning the field of insurance and other subjects. And there is evidence that the domain names and are being offered for sale. Therefore, the Panel is convinced by all the evidence produced in this case and by Respondents’ default that Respondents intended to free ride on Complainant’s reputation and goodwill by diverting Internet users and customers to a website for commercial gain, or by selling the domain names and for a profit.
There is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondent has demonstrated a pattern of engaging in bad faith registration and use of domain names which violate third party’s rights. See, e.g., Barclays Bank PLC v. Guowei Hai Gui,WIPO Case No. D2010-1991; US Community Credit Union v. Moniker Privacy Services, Inc., Registrant [2918496] /Guowei Hai Gui,WIPO Case No. D2010-1136. The Panel finds that Complainant’s contention is warranted and notes that in one of the previous UDRP cases cited supra the same proxy service and registrar were used.
In short, the manner in which Respondent has used and is using the disputed domain names demonstrates that the disputed domain names were registered, were used and still are being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is 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 names , , and be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: March 29, 2011
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