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.
Respondents are Moniker Privacy Services and Pablo Palermao of Pompano Beach, Florida, United States of America and San Isidro, Peru, respectively. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 18, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2011, Moniker Online Services, LLC 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 March 23, 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 March 24, 2011.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 21, 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.”
In addition to the United States 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.
The Disputed Domain Name was registered on October 10, 2004. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, Complainant must prove each of the following, namely that:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. 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 Disputed Domain Name comprises Complainant’s ALLSTATE trademark with the addition of the term “newjersey”.
The Disputed Domain Name is confusingly similar to Complainant’s mark ALL STATE. The addition of the geographical term “newjersey” and the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to distinguish the Disputed Domain Name as referring to an entity other than Complainant.
On the contrary, many Internet users would suppose that the Disputed Domain Name had been registered by Complainant or an affiliate of Complainant to promote its business in the state of New Jersey (See Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc.,WIPO Case No. D2002-0954).
The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, 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 trademarks, is not commonly known by the Disputed Domain Name, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Name.
Complainant has alleged, and Respondent has not denied, that Respondent is not commonly known by the Disputed Domain Name.
In addition, Complainant has supported its contention that Respondent is using the Disputed Domain Name with an intent to trade off Complainant’s goodwill. Specifically, Complainant has provided evidence that Respondent is using the Disputed Domain Name to redirect Internet users to third-party websites in direct competition with Complainant. Prior 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, supports a finding of no rights or legitimate interests (Get Away Today.Com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021).
In this case, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “ALLSTATE” in the Disputed Domain Name and, accordingly, concludes that the Disputed Domain Name was selected and used by Respondent to take advantage of the notoriety associated with the “ALLSTATE” name, with the intent to attract Internet users for commercial gain (see Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao,WIPO Case No. D2011-0198).
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 Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Complainant must prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.
Complainant’s allegations with regard to Respondent’s registration and use of the Disputed Domain Name in bad faith has been considered by the Panel. These allegations have not been contested by Respondent because of its default.
Complainant’s trademarks are famous, and Respondent evidently knew about them when it registered the Disputed Domain Name. The Disputed Domain Name is highly unlikely to have been registered if it were not for Complainant’s trademarks. In this respect, see Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao,WIPO Case No. D2011-0198 and Allstate Insurance Company v. Web Master Internet Services Private Limited,WIPO Case No. D2011-0308.
In the instant case, the Panel considers that Respondent must have had knowledge of the Complainant’s rights in the ALLSTATE trademark when it registered the Disputed Domain Name, since Complainant’s trademark is a widely-known trademark.
The Panel has already found that the Disputed Domain Name was selected and used by Respondent to take advantage of the notoriety associated with the ALLSTATE mark, with the intent to attract for commercial gain Internet users by utilizing sponsored links. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites is evidence of bad faith, particularly if, as in the instant case, Complainant had registered and previously been using its trademarks. See Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
In addition, Respondent may be offering the Disputed Domain Name for sale because the websites associated with the Disputed Domain Name feature a notice stating that “This Domain Name is not for sale unless you know us”. Upon independent survey conducted on April 27, 2011, the Panel noted that this message links to a website operating under the brand name “Domain Buying Services”, which ultimately assists Internet users in acquiring desired, already registered domain names. The Panel finds that this is evidence that Respondent was offering the Disputed Domain Name for sale.
Finally Respondent has been the subject of numerous proceedings under the UDRP (see Shorenstein-Hays Nederlander Theatres, LLC v. Pablo Palermo,WIPO Case No. D2009-0674; Corporación Radio y Televisión Española, S.A. v. Pablo Palermo,WIPO Case No. D2008-0926; Equifax Inc. v. PabloPalermao / Registrant [225148]: Moniker Privacy Services,WIPO Case No. D2008-0506; Cox Newspapers, Inc. d/b/a Dayton Daily News v. PabloPalermao,WIPO Case No. D2008-0372; Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026 and Academy of Country Music v. Pablo Palermo,WIPO Case No. D2008-0818) including a recent case concerning the same Complainant and same trademark (See Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao,WIPO Case No. D2011-0198). This is clear evidence of bad faith.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: April 29, 2011
Full & Egal Universal Law Academy