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 P of Shanghai, the People’s Republic of China / Rampe Purda of Hailuoto, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2011, 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 February 9, 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 16, 2011. On February 10, 2011, the Center transmitted an email to the parties in both Finnish and English language regarding the language of proceedings. On February 11, 2011, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 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. 0717683 on June 27, 1961 for insurance services. Complainant also owns U.S. Reg. No. 0761091 as of December 3, 1963 and U.S. Reg. No. 0840187 as of December 5, 1967 for the same services. On October 31, 2006, Complainant obtained U.S. Reg. No. 3164784 for ALLSTATE.COM 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.
The disputed domain name was registered on November 11, 2009. The website to which such domain name resolves displays advertising links in the field of insurances, including links to Complainant’s direct competitors in the insurance market. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is 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 website; (ii) a prior UDRP panel has determined that the ALLSTATE trademark is famous; and (iii) the disputed domain name only differs from the ALLSTATE mark by adding the descriptive words “car” and “ins” – a common abbreviation for the word “insurance” –, these words merely describing Complainant’s longstanding insurance business and not differentiating the disputed domain name from Complainant’s ALLSTATE trademark.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is not commonly known by the name “allstatecarins”, 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; and (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.
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 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; (iv) Respondent is responsible for the content of the website located at the disputed domain name; and (v) Respondent has prior experience with registering domain names that are confusingly similar to the trademarks of others. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
While the Registration Agreement is in Finnish, Complainant filed a request for English as language of the proceeding based on the following contentions: (i) both the disputed domain name and the website to which it resolves are in the English language; (ii) Complainant is not able to communicate in the Finnish language and the use of Finnish as the language of the proceeding would represent an undue delay and unnecessary substantial costs to the proceeding; (iii) the panels in previous proceedings against Respondent were conducted in English by decision of the panelists; and (iv) English is a common language with global usage and Respondent appears to be familiar with the English language.
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” As the Registration Agreement in the instant case is in Finnish, the default language of the proceedings would have been Finnish. However, paragraph 11(a) of the Rules reserves to the panel the authority to determine the language of the proceeding having regard to the circumstances of the case. In view of Complainant’s request, the Panel is now called upon to exercise its authority under paragraph 11(a) of the Rules.
The Panel takes into consideration that the Rules are based on the principles of fairness to the parties and the recognition that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. Such principles apply to the determination of the language of the proceeding. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293.
The Panel finds that Complainant’s contentions for this request are warranted. In addition, the Panel notes that all Center’s communications to Respondent were made in both Finnish and English and that Respondent was given an opportunity to object to Complainant’s request. Respondent was also advised that, in the absence of any response from Respondent, the Center would proceed on the basis that Respondent has no objection to Complainant's request that English be the language of proceedings. Finally, the Panel also notes that the material facts of this proceeding are generated in the English language, including the contents of the website to which the disputed domain name resolves.
Having considered all circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings. B. 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, para. 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. C. Identical or Confusingly Similar
The Panel notes that the notoriety of the ALLSTATE trademark has been confirmed in previous UDRP decisions. See e.g., Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175 (“[g]iven its long and widespread use and extensive recognition, the ALLSTATE brand is among those that may be fairly described as famous or well known”; Allstate Insurance Company v. WXN,WIPO Case No. D2010-2165. In addition, the Panel notes that the disputed domain name incorporates the ALLSTATE trademark in its entirety.
The Panel agrees with previous UDRP decisions which 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., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888; adidas-Salomon AG v. Mti Networks Ltd,WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758. The likelihood of confusion is greater where the disputed domain name incorporates a famous or well-known trademark, as in the instant case.
Complainant argues that the disputed domain name was formed by the combination of the ALLSTATE trademark with two descriptive words (“car” and “ins”, a common abbreviation for insurance), which identify Complainant’s business, i.e., insurance in general, including car insurance. As the Panel sees no plausible reason why Respondent would choose as domain name a term composed of the ALLSTATE trademark plus the suffix “carins”, the Panel accepts as reasonable Complainant’s contention that such suffix identifies one of Complainant’s lines of business. In that respect, the Panel notes that the printout of the website to which the disputed domain name resolves displays in a conspicuous position a link for “car insurance”.
It is well established that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. See The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Cologne Zone,WIPO Case No. D2001-1039; The Elisabeth Taylor Cosmetics Company v. NOLDC, Inc., WIPO Case No. D2006-0800; Accor v. Yossi Hasidim,WIPO Case No. D2001-0392.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC. v. Mattew Smith,WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain name is clearly confusingly similar to Complainant’s registered trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
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. Also, Complainant’s contention that Respondent is not commonly known by the disputed domain name is to be accepted. Therefore, the Panel concludes that Respondent intended to take advantage of the reputation associated to the ALLSTATE trademark.
In addition, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In fact, the website to which the disputed domain name resolves contains a variety of advertising links concerning the field of insurance and other subjects. As one panel held before,“[t]he use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website is not developed by Respondent but provided by the Parking Service Provider.” See Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779.
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 name, 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 or legitimate interests in the disputed domain name. 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. E. Registered and Used in Bad Faith
Given the extensive reputation of the ALLSTATE trademark, the Panel sees no explanation for Respondent’s adoption of the term “allstatecarins” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847.
While that finding could suffice to dispose of the issue of bad faith registration, a contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant’s long standing trademark registrations. See, for instance, RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242. Such behavior as is present in this case is what some case precedents have termed as “opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303.
The Panel also finds that Respondent is obviously not making any legitimate noncommercial or fair use of the disputed domain name. The Panel takes further the view that in this case the content of the website is relevant in the finding of bad faith use. As indicated before, the website to which the disputed domain name resolves contains a variety of advertising links concerning the field of insurance and other subjects. Therefore, the Panel is convinced by all the evidence produced in this case and by Respondent’s default that Respondent intended to free ride on Complainant’s reputation and goodwill by diverting Internet users and customers to a website for commercial gain.
There is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondent has engaged in a pattern of bad faith registration and use of domain names. See, e.g., Geri Halliwell v. Rampe Purda/Privacy-P,WIPO Case No. D2010-1419; Hertz System, Inc. v. Rampe Purda / Privacy--P,WIPO Case No. D2010-0636; U.S. Natural Resources, Inc. v.Rampe Purda / Privacy--P, WIPO Case No. D2010-0720; LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; L’Oréal v. Rampe Purda / Privacy--P, WIPO Case No. D2010-0870:
(“Respondent's name in the present proceedings is well known to the Panel. In U.S. Natural Resources, Inc. v. Rampe Purda / Privacy P,WIPO Case No. D2010-0720, the disputed domain name comprised Complainant's established mark plus inconsequential admissions, and was used on a pay per click website which could have had the effect of luring potential customers of Complainant to its competitors. In Hertz System, Inc. v. Rampe Purda / PrivacyP,WIPO Case No. D2010-0636, the same methodology was employed, as was also the case in LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840, and is the case here.
In the light of such a pattern of abusive behavior associated with the name Rampe Purda, the Panel has no hesitation in accepting Complainant's submissions in connection with registration and use in bad faith in the present case, and, accordingly, decides that Complainant has also satisfied the test set out in paragraph 4(a)(iii) of the Policy”.)
The Panel finds that Complainant’s contention is warranted and notes that in all 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 name demonstrates that the disputed domain name was registered, was used and still is 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 domain name be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: March 28, 2011
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