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 Registrant [3540930]/ [3540984]: Legaldmn Admin of Anchorage, Alaska, United States of America; Moniker Privacy Services of Pompano Beach, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (“Disputed Domain Names”) are registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 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 the same day, 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 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 February 10, 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 February 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 7, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 11, 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 owns numerous trademark registrations in the United States for its ALLSTATE trademark. Complainant obtained its first United States registration (U.S. Reg. No. 0717683) for the word mark ALLSTATE for “underwriting of the following types of insurance: life, annuity, accident, and health” on June 27, 1961. On December 3, 1963, it obtained a United States registration (U.S. Reg. No. 0761091) for the word mark ALLSTATE for the “business of making, writing, and underwriting of insurance”. On December 5, 1967, Complainant obtained a United States registration (U.S. Reg. No. 0840187) for the design mark ALLSTATE for “insurance underwriting services”.
On October 31, 2006, Complainant obtained a United States registration (U.S. Reg. No. 3164784) for ALLSTATE.COM for a variety of services, including insurance services.
In addition to the U.S. trademark registrations mentioned above, Complainant owns over thirty (30) additional United States registrations for the ALLSTATE trademark for a wide range of goods and services including investment advisory services, banking, mortgage lending, and financial services.
Respondent registered the domain name on May 7, 2009. Respondent registered the domain name on August 16, 2008. 5. Parties’ Contentions A. Complainant
Complainant contends that it is the largest publicly held personal lines insurer in the United States. Since its founding in 1931, Complainant has become a well-established and well-known insurance company and provides insurance services all over the United States.
Complainant further contends that it has continuously used the ALLSTATE trademark since its founding in 1931. Complainant first registered the ALLSTATE mark in the United States in 1961 for use in connection with underwriting insurance and has since registered over 30 additional United States registrations for the ALLSTATE mark for a wide range of goods and services. Since 2006, Complainant has also registered ALLSTATE.COM for, among other things, insurance services. In addition, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions around the world.
Complainant further contends that it has devoted hundreds of millions of dollars to advertise and promote its services in the United States under the ALLSTATE trademark. Complainant has generated billions of dollars in sales of products and/or services under the ALLSTATE trademark in the United States.
Complainant further contends that it has been the subject of numerous articles in the media, including national and international print, radio and television. As part of its communications and marketing program, Complainant has registered over 1,000 ALLSTATE-based domain names worldwide. As a result of Complainant’s 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 further contends that the Disputed Domain Names are confusingly similar to the ALLSTATE and ALLSTATE.COM trademarks (“ALLSTATE Marks”). The Disputed Domain Names wholly incorporate the ALLSTATE Marks. The domain name differs from Complainant’s ALLSTATE trademark only by the addition of the letter “s” at the end of the ALLSTATE mark and the word “insurace” - a common and predictable typographical misspelling of the word “insurance”. The addition of this word emphasizes Respondent’s attempt to capitalize on Complainant’s well-known ALLSTATE trademark in the insurance industry.
Complainant further contends that Respondent’s domain name wholly incorporates a common typographical error of the ALLSTATE trademark. The domain name differs from Complainant’s ALLSTATE trademark only by the addition of the letter “o” after the “l” – changing the ALLSTATE mark to ALLOSTATE. Notably, the “o” key is directly above the “l” key on a computer keyboard. Therefore, it is likely that some portion of consumer who are attempting to navigate directly to Complainant’s website at will mistype “allstate” as “allostate”.
Complainant further contends that Respondent lacks legitimate rights or interests in the Disputed Domain Names. Respondent is not commonly known by Complainant’s ALLSTATE Marks. Respondent is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Names. Respondent operates a pay-per-click advertising site at the Disputed Domain Names which host websites featuring a variety of advertising links. Several of Respondent’s links take users to third-party websites where they can purchase insurance-related products and/or services from Complainant’s direct competitors. Thus, any adoption of the confusingly similar “allostate” or “allstatesinsurace” name was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill.
Complainant further contends that Respondent registered the Disputed Domain Names in bad faith. Because of Complainant’s widespread use and promotion of its ALLSTATE Marks, Respondent knew or should have known about Complainant’s trademark rights before registering the Disputed Domain Names.
Complainant further contends that Respondent uses the Disputed Domain Names in bad faith by using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s ALLSTATE Marks as to the source, sponsorship, affiliation or endorsement of its website. Respondent is likely generating click-through fees from the pay-per-click advertising on the Disputed Domain Names and thereby benefits from the likely confusion between Complainant’s ALLSTATE Marks and the Disputed Domain Names.
Complainant further contends that Respondent registered and used the Disputed Domain Names in bad faith because Respondent has previously registered a domain name that include trademarks owned by third parties. In particular, Respondent has previously registered a domain name that included the trademark of an insurance company. For example, Respondent registered the domain name . On February 4, 2011, an administrative panel ordered that the domain name be transferred to the rightful trademark owner. See State Farm Mutual Automobile Insurance Company v. Legaldmn Admin, NAF Claim No. FA1365308. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Respondent provided no Response, and the deadline for so doing expired on March 6, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a). A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the ALLSTATE Marks. However, Complainant does not have a trademark registration of the phrases “” or “”. Because the Disputed Domain Names and Complainant’s ALLSTATE Marks are not identical, the issue is whether they are confusingly similar.
The Disputed Domain Names combine three elements: (1) Complainant’s ALLSTATE Marks; (2) the letter “o” in “allostate” and the letter “s” and suffix “insurance” in “allstatesinsurace”; and (3) the suffix “.com”. The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “allostate” or “allstatesinsurace”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Both Disputed Domain Names feature a common and predictable misspelling of the ALLSTATE Marks, changing ALLSTATE to ALLSTATES and ALLOSTATE respectively. The practice of “typosquatting” has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043 (finding confusingly similar to EDMUND’S mark because of easily made typing errors); Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713 (finding circumstances of “typosquatting” constitute confusing similarity).
In addition, including the phrase “insurance” as a suffix to the ALLSTATE mark does not mitigate the confusing similarity between the domain name and Complainant’s Marks. The addition of this term merely describes Complainant’s business and does nothing to dispel the confusing similarity between the Disputed Domain Names and Complainant’s ALLSTATE Marks. See e.g., The American Automobile Association Inc. v. InsuranceE Inc., Gene Graceffo,WIPO Case No. D2010-0196 (finding confusingly similar to AAA, which offered insurance services).
Here, the domain name is clearly “typosquatting” and is therefore confusingly similar. Likewise, the combination of a descriptive term with a misspelling in the domain name is also confusingly similar. See e.g., ACCOR v. Brigit Klostermann,WIPO Case No. D2005-0627 (finding confusingly similar to ACCOR mark because “hotels” was descriptive and “0” was a mistyped version of “hotels”).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s ALLSTATE Marks, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights in the ALLSTATE Marks, is not commonly known by the Disputed Domain Names, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Names.
As evidenced by Complainant’s numerous trademark registrations and billions of dollars in revenue over several decades of using the ALLSTATE Marks, Complainant has established rights in the ALLSTATE Marks. Moreover, Complainant has alleged, and Respondent has not denied, that Respondent is not commonly known by the Disputed Domain Names.
In addition, Complainant has supported its contention that Respondent is using the Disputed Domain Names with an intent to trade off Complainant’s goodwill. Specifically, Complainant has provided evidence that Respondent is using the Disputed Domain Names to redirect Internet users to third-party websites in direct competition with Complainant. Prior UDRP panels have found that operating a link farm parking page using a mark in a domain name, and providing links to services competitive with the mark owner, does not establish rights or legitimate interests. Get Away Today.Com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021 (collecting cases).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Names. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s web site 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 web site or of a product or service on the Respondent’s web site. Registered In Bad Faith
The Panel finds that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Names given that Complainant has used the ALLSTATE Marks in connection with insurance services for about eighty years, and is one of the largest and best-known providers of such services nationwide. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names [ and ] without any knowledge of Complainant and its PROFORCE Trademarks.”); Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (“[S]ince Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant's trademark rights.”).
Based upon the foregoing circumstantial evidence, the Panel finds that Respondent registered the Disputed Domain Names in bad faith. Used In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Names in bad faith. It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433.
Here, Respondent appears to have intended to use the Disputed Domain Names to promote competing services based upon the confusing similarity between Complainant’s ALLSTATE Marks and Respondent’s and websites. See The Vanguard Group, Inc v. Venta,WIPO Case No. D2001-1335 (finding bad faith where redirected to website offering competing financial services).
In addition, Respondent’s bad faith registration and use is further evidenced by Respondent’s prior conduct. On similar facts, a NAF UDRP panel recently ordered Respondent to transfer a domain name related to the insurance industry which were registered and used in bad faith. See State Farm Mutual Automobile Insurance Company v. Legaldmn Admin, NAF Claim No. FA1365308 (ordering transfer of ).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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 Disputed Domain Names and be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: March 25, 2011
Full & Egal Universal Law Academy