The 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.
The Respondent is Rakshita Mercantile Private Limited of Mumbai, Maharashtra, India. 2. The Domain Names and Registrars
The disputed domain name (the “First Domain Name”), is registered with Web Werks India Pvt. Ltd; the disputed domain name, (the “Second Domain Name”), is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR; and the disputed domain names, and (respectively the “Third Domain Name” and the “Fourth Domain Name”) are registered with Tirupati Domains and Hosting Pvt Ltd. Together the disputed domain names are hereinafter referred to as the “Domain Names” and the aforementioned registrars are together referred to as the “Registrars”. 3. Procedural History
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2011. It was one of a number of complaints filed by the Complainant in February 2011, all directed against PrivacyP, which was then the entity recorded on the relevant Registrars’ databases as being the registrant of the domain names the subject of those complaints.
The original Complaint related solely to the First Domain Name, but following receipt of the various Registrar verifications sought in this proceeding and in the other proceedings, it came to the Center’s attention that in addition to the First Domain Name, the Second Domain Name, the Third Domain Name and the Fourth Domain Name, all of which had been the subject of one or more of the other complaints, were held in the name of the Respondent.
The Registrars confirmed this to be the case by emails to the Center from Web Werks India Pvt. Ltd dated February 12, 2011 in respect of the First Domain Name and from Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR dated February 16, 2011 in respect of the Second Domain Name and from Tirupati Domains and Hosting Pvt Ltd dated February 21, 2011 in respect of the Third Domain Name and the Fourth Domain Name. In those emails to the Center the Registrars disclosed the registrant and contact information for the Domain Names.
The Center provided to the Complainant the registrant and contact information disclosed by the Registrars, and on February 23, 2011 the Complainant sought and obtained the Center’s consent variously to consolidate, separate and/or withdraw certain of the proceedings to reflect the new information provided by the Registrars. The Complainant filed an amended Complaint on February 23, 2011.
The Center verified that the amended Complaint (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 the Respondent of the Complaint, and the proceedings commenced on March 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 31, 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.
While PrivacyP was properly identified as the Respondent in respect of the disputed domain names, it seems clear that it was a privacy service employed by the Respondent and that the Respondent has been the underlying registrant throughout. In these circumstances, for the purpose of this proceeding, the Panel treats the Respondent as having been the sole registrant of the disputed domain names. 4. Factual Background
The unchallenged evidence of the Complainant is that it is a very well-known insurance company, which has operated throughout the United States of America under the name Allstate since its founding in 1931.
The Complainant is the registered proprietor of numerous United States trade mark registrations of or including ALLSTATE, one of which is United States registration number 717,683 dated June 27, 1961 with a claimed first use in 1957, ALLSTATE in class 36 for various underwriting services.
The First Domain Name was registered on January 4, 2008. The Second Domain Name was registered on December 10, 2006. The Third Domain Name and the Fourth Domain Name were both registered on August 20, 2007. The Domain Names are each connected to pay-per-click parking pages featuring advertising links mainly to insurance service providers and their products.
On December 10, 2010 the Complainant wrote to the Respondent’s privacy service, which was then identified as the registrant. The Complainant drew attention to its rights and inter alia demanded transfer of the Domain Names. Neither the privacy service nor the Respondent replied.
The Respondent has been the subject of several previous complaints under the Policy and has been found to have registered and used domain names in bad faith. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
It will be noted that this decision and the decisions in Allstate Insurance Company v. Bolama Technologies Limited, Mr Bolama,WIPO Case No. D2011-0307 and Allstate Insurance Company v. Web Master Internet Services Private Limited,WIPO Case No. D2011-0308 are in similar form to the decision in Allstate Insurance Company v. Cyber Domain Services Pvt. Ltd, WIPO Cases No. D2011-0258. As will be seen from the Procedural Background (Section 3 above), these cases arise in very similar circumstances and the complaints are in very similar form. B. Identical or Confusingly Similar
In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix. Absent the domain suffix the First Domain Name comprises the Complainant’s ALLSTATE trade mark with the addition of the letter “o” as the third letter. The Second Domain Name comprises the Complainant’s ALLSTATE trade mark with the addition of the words “insurance quotes”, which are descriptive of a major element of the Complainant’s business. The Third Domain Name comprises the Complainant’s ALLSTATE trade mark with the addition of the letter “q” as the seventh letter. The Fourth Domain Name comprises the Complainant’s ALLSTATE trade mark with the addition of the word “car”, car insurance being a section of the Complainant’s business.
To the extent that the Domain Names feature the Complainant’s trade mark with the addition of a letter, it is noteworthy that in each case, on a keyboard, the additional letter is next door to one or other of the adjoining letters in the trade mark. Accordingly, the misspellings are likely to have been deliberately selected to catch the unwary typist trying to type the Complainant’s trade mark.
The Panel finds that each of the Domain Names is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant’s primary contention is that the Respondent intentionally selected the Domain Names for one reason only, namely the fact that they so closely replicate the Complainant’s well-known trade marks and with a view to attracting Internet users to the Respondent’s websites for the commercial gain offered by the pay-per-click advertising links to be found there.
The Complainant recites the examples of what shall constitute rights or legitimate interests for this purpose as set out in paragraph 4(c) of the Policy and contends that none of them is applicable. The Complainant asserts that it has never given the Respondent any permission to use its trade marks or any variants thereof.
In the view of the Panel the Complainant has made out a strong prima facie case. The Domain Names are clearly part of a pattern and the Second Domain Name, which is the first of the Domain Names to have been registered, is expressly targeted at the very industry in which the Complainant has been engaged for several decades. It is difficult to believe that anyone could have come up with the Second Domain Name without having the Complainant firmly in mind and the nature of the insurance-related advertising links to be found on all the Respondent’s websites underlines the significance of the Complainant’s trade marks in the field of insurance. At the very least, the Respondent has a case to answer.
In the absence of any response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
By the same reasoning and in the absence of any explanation from the Respondent the Panel finds that the Respondent selected the Domain Names with a view to earning pay-per-click revenue from visitors to its websites, those visitors having been attracted to the Respondent’s websites by the potential for deception inherent in the Domain Names, namely their confusing similarity with the Complainant’s primary trade mark.
On the evidence before it, none of which has been challenged by the Respondent, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) 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 First Domain Name), (the Second Domain Name), (the Third Domain Name) and (the Fourth Domain Name) be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: April 1, 2011
Full & Egal Universal Law Academy