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 21562719 Ont Ltd of Brampton, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is which is registered with F. 3. Procedural History
The Complaint originally involving two domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 15, 2011, the Center transmitted by email to F a request for registrar verification in connection with the two domain names. On February 16, 2011, F transmitted by email to the Center its verification response disclosing two different registrants and contact information for the two domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 17, 2011 providing the registrants and contact information disclosed by F, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 2011 removing one of the domain names from the current proceeding and naming the current Respondent.
The Center verified that the Complaint, as amended, 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on March 25, 2011. This Panel finds that it was properly constituted. This 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 is an insurance company established in Illinois, United States of America. Encompass Insurance is the marketing name for certain affiliated companies of Complainant that focus exclusively on the sale of personal property and casualty insurance products by independent agents.
Complainant has rights over several trademark registrations that incorporate the ENCOMPASS trademark, including: ENCOMPASS INSURANCE and design, registration No. 2,837,616 with the United States Patent and Trademark Office (USPTO), registered in 2004, international class 36, and stated first use in September 2000; ENCOMPASS, registration No. 3,168,764 with the USPTO, registered in 2006, international class 36, and stated first use in September 2000.
Complainant registered the domain name on August 21, 2000.
The disputed domain name was created on October 2, 2005. 5. Parties’ Contentions A. Complainant
Complainant adopted the ENCOMPASS trademark in approximately September 2000 and has continuously used this trademark since that time. Complainant uses this trademark to identify its insurance-related products and services.
Encompass Insurance is the marketing name for certain affiliated companies of Complainant that focus exclusively on the sale of personal property and casualty insurance products by independent agents.
Complainant has a number of affiliated companies that operate under the ENCOMPASS trademark (Vgr. Encompass Insurance Company, Encompass Floridian Insurance Company, Encompass Home and Auto Insurance Company, Encompass Insurance Company of America, Encompass Insurance Company of New Jersey, Encompass Property and Casualty Company, etc.).
Complainant’s affiliated companies sell insurance products through over 3,300 insurance agents throughout the United States of America.
Over the past decade, Complainant’s affiliated companies have established themselves as prominent insurance companies.
Complainant has devoted substantial resources promoting its services in the United States of America under the ENCOMPASS trademark since 2000. As a result of Complainant’s promotional efforts and the acceptance of its services promoted in connection with the ENCOMPASS trademark, such trademark has become a valuable asset of Complainant.
Complainant registered the domain name on August 21, 2000, offering insurance-related goods and services through this website under the ENCOMPASS trademark.
On December 10, 2010 and December 20, 2010, Complainant advised the registrant of the disputed domain name that it was violating Complainant’s rights by using the disputed domain name1. The letters were sent by email to the address provided on the registration, without Complainant having received any response.
Since becoming aware of Respondent’s true identity as part of this proceeding2, Complainant noticed that Respondent had a history of registering domain names that are confusingly similar to the marks of others. Respondent has been the subject of several prior proceedings pursuant to the Policy. Respondent has been found to have acted in bad faith and the subject domain name was ordered to be transferred to the rightful trademark owner (BareWeb, Inc. v. 21562719 Ont Ltd / Whois Privacy Services Pty Ltd.,WIPO Case No. D2010-1341; Radian Guaranty Inc. v. 21562719 Ont Ltd., NAF Claim No. FA1338064; Intelius Inc. v. 21562719 Ont Ltd, NAF Claim No. FA1336877).
The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.
Complainant adopted the ENCOMPASS trademark in connection with its insurance services approximately five years prior to Respondent’s registration of the disputed domain name.
Respondent’s disputed domain name incorporates the entirety of Complainant’s ENCOMPASS and ENCOMPASS INSURANCE trademarks. The disputed domain name merely omits the second “s” from the ENCOMPASS trademark, a common and predictable misspelling of such trademark. The word “encompas” is not a common or understandable English word.
It is well established that use of a well-known mark in a domain name is likely to cause confusion, mistake, or deception since users are likely to believe that the trademark holder is authorized or is controlling the website.
In light of Complainant’s longstanding use and promotion of the ENCOMPASS and ENCOMPASS INSURANCE trademarks over the past decade, these trademarks are widely recognizable.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not authorized Respondent to use the ENCOMPASS trademark in the disputed domain name.
Respondent is not commonly known by the ENCOMPASS trademark or by any of the terms that comprise the disputed domain name.
Any adoption of the confusingly similar disputed domain name was done with complete knowledge of Complainant and its rights, and with intent to trade off Complainant’s goodwill.
The website associated with the disputed domain name features pay-per-click advertisements for Complainant’s direct competitors in the insurance market. The use of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use. The use of a confusingly similar domain name that diverts Internet users to a website offering products or services in competition with Complainant does not constitute a bona fide offering of goods or services.
Respondent is not making a legitimate noncommercial use of the disputed domain name, but instead is misleading and diverting consumers for commercial purposes. Respondent’s use of the confusingly similar disputed domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bath faith.
Bad faith exists where 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.
Respondent is using the disputed domain name for commercial gain by directing Internet users to websites that feature advertising links to Complainant’s direct competitors, and benefiting from the likely confusion between Complainant’s trademark and the disputed domain name. It is likely that Respondent is generating revenue from this practice. The exploitation of the reputation of trademarks and profit from the diversion of Internet users is an indication of bad faith according to numerous previous UDRP decisions.
It is a longstanding principle that the “practice of typosquatting, itself, is evidence of bad faith registration of a domain name”. The disputed domain name includes a misspelling of the word “encompass”.
Respondent’s use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny. Respondent has used a privacy service to shield his/her identity in registering the disputed domain name that incorporates the entirety of Complainant’s ENCOMPASS and ENCOMPASS INSURANCE trademarks and uses the disputed domain name in association with a pay-per-click advertising website for insurance services.
Respondent has been the subject of several prior proceedings pursuant to the Policy, it is clear from Respondent’s conduct at issue in the instant Complaint that Respondent’s registration and use of the disputed domain name is in bad faith under the Policy.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant3.
The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the ENCOMPASS and ENCOMPASS INSURANCE trademarks.
The disputed domain name entirely incorporates the ENCOMPASS and ENCOMPASS INSURANCE trademarks. The omission of a letter “s” in “encompass” is not enough to avoid similarity nor prevent the likelihood of confusion. Prior UDRP panel decisions support this Panel’s view (Pfizer Inc., A Delaware Corporation v. Phizer's Antiques and Robert Phizer,WIPO Case No. D2002-0410; Sanofi-aventis v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2008-1636).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s ENCOMPASS and ENCOMPASS INSURANCE trademarks. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never authorized Respondent to use the ENCOMPASS and ENCOMPASS INSURANCE trademarks in the disputed domain name and that Respondent has never been commonly known by such trademarks or by the disputed domain name.
Complainant contends that Respondent is using the disputed domain name in order to divert Internet users to a website with links leading to commercial websites relating to the insurance field and thus Respondent is clearly taking advantage of Complainant’s reputation and the similarity to its trademarks with the purpose of diverting Internet users through such links to other websites unrelated to Complainant’s official website.
There is evidence in the file showing that Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related categories links with the name of firms and/or products competing with Complainant.
Such use of Complainant’s trademarks by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.4
Complainant has established a prime facie case that Respondent has no rights or legitimate interests in the disputed domain name. From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which is almost identical to Complainant’s trademarks, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name5.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration the registration of the ENCOMPASS and ENCOMPASS INSURANCE trademarks and the insurance products provided by Complainant, it is clear that Respondent should have been fully aware of the existence of Complainant’s trademarks at the time it obtained the registration of the disputed domain name.
The use of a domain name for a website which generates pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s trademarks, coupled with just a minor typographical error variation (practice commonly known as typosquatting6), and where the website associated to the disputed domain name shows sponsored links to competitors, there is no doubt that Respondent is intentionally attempting to attract Internet users for financial gain creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name, when in fact there is no such connection.7
Additionally, there are precedents evidencing Respondent’s substantially similar conduct in other cases, which is indicative of bad faith as well.
Further, Respondent’s failure to reply to Complainant’s cease-and-desist letters is also indicative of bad faith in this case (see Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632). Such finding is still valid even where a privacy protection service is provided by a third party, since such third party provider would be expected to forward such cease-and-desist letters to its principal (i.e. the underlying registrant)8.
In light of the above, it is found that the registration of the disputed domain name was, on the face of it, made in bad faith and that the disputed domain name is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: April 8, 2011
1 The email communication was sent to Whois Privacy Services Pty Ltd.
2 At the time of filing the original Complaint, Whois Privacy Services Pty Ltd. appeared as registrant of the disputed domain name, according to the contact information stated in the WhoIs database.
3 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 Prior UDRP panel decisions support this Panel’s view, see Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006; Lo Monaco Hogar, S.L. v. MailP, Inc.,WIPO Case No. D2005-0896.
5 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
6 See A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517.
7 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101: “Policy paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. See also Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name with sponsored links to competitors”.
8 See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062: “such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. […] Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting”.
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