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 Private Registration (EXP) / Telecom Tech Corp., of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Panama City, Panamá, respectively. 2. The Domain Names and Registrar
The disputed domain names ; ; and are registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 24, 2011, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain names. On February 25, 2011, Bargin Register Inc. 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 the Complainant on March 1, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 3, 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 the Respondent of the Complaint, and the proceedings commenced on March 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2011.
The Center appointed John Katz QC as the sole panelist in this matter on April 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
The Complainant is an insurance company, which appears to operate as a holding company for various affiliates or subsidiaries. These operate through some 3,300 independent agents who in turn provide a range of insurance services. These services, which are in evidence, are offered under various trade marks, some of which the Complainant has registrations for. These are in evidence as registered trade marks comprising trade and service marks with word marks together with word marks and devices.
The trading activities of the Complainant under and by reference to its trade marks ENCOMPASS and ENCOMPASS INSURANCE go back to approximately September 2000. These trade marks have been continuously in use. The Complainant’s website advertises the Complainant’s products and services. The domain name used to access this website, , was registered in August 2000.
The various trade marks of the Complainant were registered over a number of years, but the word and device mark with United States Registration No. 2,837,616, ENCOMPASS INSURANCE, registered on May 4, 2004, for insurance and underwriting services, predates the Respondent’s registration of the three disputed domain names by several years. Further, this registration discloses use in commerce since September 2000. The trade mark, United States Registration NO. 3,168,764 ENCOMPASS, was registered as of November 7, 2006 but also claims use in commerce since September 2000.
The disputed domain name was registered on October 8, 2005; was registered on November 24, 2006; and was registered on August 10, 2007. The Respondent’s activities appear to be a hosting page, which captures links to a variety of insurance or insurance-related businesses or activities by way of advertising or streamers that allow visitors to click and be diverted to websites. By this means the Respondent would appear to be offering a pass-through service to other websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that by virtue of its business activities, in trade and through its numerous agents, its website, trade and service marks and the substantial resources it has committed to promoting its business, under and by reference to its trade marks or trade name, that it has generated considerable goodwill. The Complainant states that is the owner of that goodwill and claims that its rights are valuable assets. No particulars have been given as to the total amount of business generated or the advertising expenditure, but given the details on the Complainant’s website the Panel concludes it can safely be assumed that this would be considerable. B. Respondent
The Respondent has defaulted and thus has not put before the Panel any evidence. Nevertheless, the Complainant did send a letter, before filing the Complaint, to the Respondent on December 31, 2010, alleging infringement on the Complainant’s rights. There was no response from the Respondent to that letter. As a result the Complainant initiated the present proceeding.
Although little is known of the Respondent, and it has defaulted, it appears to the Panel to have been the Respondent in a number of earlier domain name disputes. Several examples of decisions of other Panel members involving this Respondent have been put in evidence before this Panel.
Further, the website accessed via the disputed domain name is active and shows links to other commercial insurance websites, some of which seem to be blocked when the Panel sought to access them. Nevertheless, others that did allow a pass through enabled this Panel to access other commercial insurance entities, some of whom would be competitors of the Complainant.
This type of pass-through device is generally accepted as operating on a pay-per-click or pay-per-view basis thereby generating revenue for a Respondent, such as this, but also potentially diverting business from the Complainant in circumstances, which appear to the Panel to be present here. 6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three elements set forth in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s 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 Respondent’s domain names have been registered and are being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain names must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the respondent.
The Complainant has a number of registered trade marks in the United States, the earliest one as set out above in Section 4 dating back to 2004 (as does its domain name), but with use in commerce claimed back to 2000,
The Respondent utilized a privacy service based in Grand Cayman in the Caribbean and its registration contact details state that it resides in Panama City, Panama, in Central America.
In the Panel’s view, the activities of the Complainant leave no room for doubt that it had, by 2005 (the year of registration of the first disputed domain name by the Respondent), acquired goodwill in the name and trade mark ENCOMPASSINSURANCE, whether spelled as one word or two words, or alternatively as the single trade mark or trade name ENCOMPASS.
The Respondent has registered as the three disputed domain names, effectively the same names save for the combination of the two words encompass and insurance as one, and with subtle but almost imperceptible differences/misspellings.
The Panel finds that many people would not notice these subtle misspellings and this Panel had to look carefully to detect the misspellings. Moreover, as Google searches generally allow a “fuzzy” search for similar spellings to those entered, to allow for accidental misspellings, any genuine inquirer seeking the Complainant’s website could quite easily be fooled by the Respondent’s chosen misspelling with the result that the genuine inquirer would be diverted to a different website.
Moreover, the phonetic pronunciation of the Respondent’s disputed domain names is identical to that of the Complainant. It is not necessary to descend into semiotics to be able to see that differences such as those which feature in the three disputed domain names are imperceptible and will go unnoticed. They also take advantage of many common misspellings. This activity, commonly known as typo-squatting, is very well known and has long been held in a number of UDRP decisions to be likely to cause confusion.
It therefore needs to be considered whether, given this background, the disputed domain names are identical or confusingly similar.
There is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by the respondent was identical to the complainant’s mark where the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement equally applicable to the facts of the present Complaint. If one looks at the three disputed domain names from the viewpoint of whether or not when viewed as a whole each contains differences so insignificant that they go unnoticed by the average consumer, it must follow that the disputed domain names incorporate the identical mark to that for which the Complainant has protection in each case.
However, even if that was not so, the Panel finds that there can be absolutely no quarrel with the argument that the disputed domain names in each case are confusingly similar. This must especially be so where the differences are of such a minor nature that to most people they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second element, that there are no rights or legitimate interests possessed by the Respondent, the Respondent has not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds are, broadly, to the use of one’s own name, or other bona fide, legitimate, noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
The Complainant has stated that it has not licensed or authorized the use of its marks by the Respondent.
There is no evidence of any rights or legitimate interest that the Respondent may have.
Additionally, the fact that the Respondent has been the subject of a number of other disputed domain name Panel decisions where transfers have been ordered points away from it having any rights or legitimate interests.
Further, the fact that that the website offers a pass-through to websites of others who are competitors of the Complainant, or potentially so, or at least are genuine third-party websites, but not those of the Complainant, lends support to the inference that the Respondent is simply operating a pay-per-click or pay-per-view website generating its revenue from people who want the Complainant but inadvertently are diverted via the Respondent’s disputed domain names and associated websites to competitors of the Complainant. Such does not, here on these facts, constitute a legitimate or bona fide use.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third element, this requires that the Panel examine whether the name was registered and used in bad faith. As has previously been said in other UDRP decisions, as with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
An Internet user who came across any, or all, of the disputed domain names would, in the Panel’s view, immediately assume that it was a domain name owned and operated by the Complainant, contrary to fact.
Much of what has already been said in Section B, above, is also relevant in this section as the issues to a large degree inform one another.
Some five years after the Complainant registered its first trade mark, and its domain name, the Respondent registered the first of its three disputed domain names. Whilst there is no evidence of why the Complainant has taken no action against the Respondent over the past five years or so, this is not of itself a disqualifying factor and it may well be that the Complainant was simply unaware of the disputed domain names until the end of 2010. The Panel is prepared to draw that inference in the present circumstances.
The Respondent is well known as a cyber-squatter or typo-squatter and the prior panel decisions, far too numerous to repeat, are referenced in the Complaint. Additionally, the Respondent has defaulted.
This Panel is, in the circumstances, prepared to draw what is the ineluctable conclusion that, based upon the propensity or similar fact evidence, the Respondent has registered and is using the disputed domain names in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out. 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 names , and be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: April 25, 2011
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