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 denny lee of Los Angeles, California, United States of America / PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 25, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Name. On May 26, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 27, 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 June 2, 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2011.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on July 5, 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 is a large personal lines insurance company in the United States of America. Founded in 1931, Complainant had revenues of USD 32 billion in 2009.
Complainant’s parent company is The Allstate Corporation.
Complainant owns a number of trademark registrations in the United States of America, including the following:
ALLSTATE, Reg. No. 717,683, June 27, 1961, for “underwriting of the following types of insurance: life, annuity, accident, and health”;
ALLSTATE, Reg. No. 761,091, December 3, 1963, for “business of making, writing, and underwriting of insurance”;
ALLSTATE (design mark), Reg. No. 840,187, December 5, 1967, for “insurance underwriting services”; and
ALLSTATE.COM, Reg. No. 3,164,784, October 31, 2006, for “banking; loan financing; investing and administering the funds of others, investment advisory services, investment brokerage; financial planning; mortgage services, namely, mortgage lending; insurance services, namely, writing and underwriting of casualty insurance, property insurance, automobile insurance, liability insurance, health and long-term care insurance, disability insurance, life insurance and annuities and providing ancillary services thereto, namely, insurance administration and insurance claims adjustment; commercial insurance underwriting services, namely, liability, business interruption, and business property insurance and providing ancillary services thereto, namely, insurance administration and insurance claims adjustment; financial sponsorship of athletic events; financial sponsorship of local charitable organizations; motor club services, namely, providing bail bonding for motorists; providing financial reimbursement of legal defense services related to moving violations”.
Complainant owns numerous trademark registrations for the ALLSTATE trademark in other jurisdictions around the world.
Complainant has registered numerous domain names based on the ALLSTATE trademark, including (registered May 1995), (registered July 1997), and (registered July 1998).
Respondent registered the Domain Name on September 8, 2010.
The website corresponding to the Domain Name is currently blank. The Panel notes that entering the Domain Name into the URL box of an Internet browser directs the user to a Google search results webpage.
Complainant advised Respondent in writing that Respondent’s use of the Domain Name violated Complainant’s trademark rights. Respondent did not respond to the notice. 5. Parties’ Contentions A. Complainant
Complainant contends that it has established legal rights in its ALLSTATE trademark and that, owing to Complainant’s advertising and promotional efforts of its services in connection with the trademark, Complainant’s brand is widely recognized among consumers, especially in the United States of America.
Complainant contends that the Domain Name, which incorporates Complainant’s ALLSTATE trademark in its entirety, is confusingly similar to Complainant’s trademark.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the “Allstate” name and has not been authorized by Complainant to use the “Allstate” name in any way. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. And Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Respondent clearly knew or should have known of Complainant’s long established rights in the ALLSTATE trademark when Respondent registered the Domain Name, which constitutes bad faith registration. Respondent’s passive holding of the Domain Name, which incorporates Complainant’s well known mark, with no actual or plausible legitimate use of that domain name constitutes bad faith use of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondent did not respond to the Complaint therefore the Panel will consider whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in the Complaint, in Respondent’s registration information available in the WhoIs and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint (Rules, paragraphs 5(e) and 14(a)). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable (Rules, paragraph 15(a)). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has well-established legal rights in its ALLSTATE trademark by reason both of its use of the mark, particularly in the United States of America, since 1931 and its multiple registrations as a trademark on the Principal Register of the United States Patent and Trademark Office (USPTO) as early as 1961. Trademark registration creates a rebuttable presumption of validity and inherent distinctiveness of the mark as a matter of United States of America law. Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201; Allstate Insurance Company v. Domain Supermarket,WIPO Case No. D2009-1175.
Prior UDRP panels have determined that the ALLSTATE trademark is famous or widely known, particularly in the United States of America. See Allstate Insurance Company v. Domain Admin, E-Promote / c/o Allstatelifeinsurance.Com, c/o Allstaetlifeinsurance.Com, WIPO Case No. D2011-0051 (“one of the most well known and recognizable marks in the United States”); Allstate Insurance Company v.Web Master Internet Services Private Limited,WIPO Case No. D2011-0308; Allstate Insurance Company v. Domain Supermarket,WIPO Case No. D2009-1175 (“the ALLSTATE brand is among those that may be fairly described as famous or well known”); Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao,WIPO Case No. D2011-0198 (“Allstate trademark is well known”). This Panel likewise considers Complainant’s trademark to be well known.
The Domain Name incorporates Complainant’s ALLSTATE trademark in its entirety, with identical spelling, as the distinctive element of the domain name. Prior UDRP panels have held the incorporation of another’s trademark, and particularly of a well known mark such as the one here, into a domain name to be sufficient to establish the confusing similarity of the domain name and the trademark. F. Hoffman-La Roche AG v. Web Marketing Limited,WIPO Case No. D2006-0005; Yahoo! Inc. v. Yahoo-Asian Company Ltd.,WIPO Case No. D2001-0051.
The Domain Name adds the words “the” and “corporation” to the word “allstate”. As a general principle, the addition of such generic terms to a trademark is not sufficient to avoid confusing similarity between the two. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923, (“Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998)”). See Revlon Consumer Products Corporation v. Brandy Farris,WIPO Case No. D2003-0291; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102. Here, Respondent’s use of the nondistinctive words “the” and “corporation” do nothing to differentiate the Domain Name or to diminish or negate the confusing similarity between the Domain Name and Complainant’s trademark.
Complainant has established the first element of its case. B. Rights or Legitimate Interests
Complainant makes out a prima facie case that Respondent has no rights or legitimate interests in the Domain Name by showing, first, that Respondent is not known by the Domain Name and has not been authorized by Complainant to use Complainant’s trademark or to register the Domain Name. The evidence is sufficient also to show that Respondent’s blank website bears no indication of a noncommercial or fair use of the Domain Name.
Respondent has not come forward with any evidence that it is using the Domain Name in connection with a bona fide offering of goods or services which, if proved, could establish that it has rights or legitimate interests in the Domain Name (Policy, paragraph 4(c)(i)). Respondent’s passive holding of the Domain Name and diversion of Internet users to a blank website do not establish a bona fide offering of goods or services that would support an inference that Respondent has rights or legitimate interests in the Domain Name. See Air Austral v. WWW Enterprise, Inc.,WIPO Case No. D2004-0765.
Respondent thus has done nothing to refute Complainant’s prima facie case. Complainant, therefore, has established the second element of its case. C. Registered and Used in Bad Faith
Complainant must demonstrate that Respondent registered and is using the Domain Name in bad faith (Policy, paragraph 4(a)(iii)).
Prior UDRP panels have found bad faith to exist in the registration and use of a domain name that incorporates another’s well known trademark in its entirety and there is no legitimate interest in or use of the domain name. General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568. Such is the case here.
Bad faith exists where respondent knew or should have known of complainant’s trademark rights before registering a domain name that incorporates the other’s trademark. Yahoo! Inc. v. Yahoo-Asian Company Limited,WIPO Case No. D2001-0051; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (“[S]ince Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.”). Respondent here had actual or constructive knowledge of Complainant’s ALLSTATE trademark at the time it registered the Domain Name. Such knowledge may be inferred from the facts that the trademark is registered, has a long history of use in the United States of America and, as a result, is widely known, particularly in the United States of America. The American Automobile Association Inc. v. AAA-Vacationsunlimeted,WIPO Case No. D2009-0373; American Automobile Association, Inc, v. Nevis Domains LLC,WIPO Case No. D2006-0489.
Previous UDRP panels have reached determinations of bad faith registration with respect specifically to the trademark at issue in the present case. See Allstate Insurance Company v. Domain Admin, E-Promote / c/o Allstatelifeinsurance.Com, c/o Allstaetlifeinsurance.Com, WIPO Case No. D2011-0051; Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao,WIPO Case No. D2011-0198 (“registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”); Allstate Insurance Company v. Web Master Internet Services Private Limited,WIPO Case No. D2011-0308; Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao,WIPO Case No. D2011-0506 (“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”).
Concerning the issue of bad faith use, the passive holding of a domain name, such as exists here, can constitute bad faith use of that domain name where additional factors exist. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel in Telstra Corporation Limited v. Nuclear Marshmallows, supra, identified several factors that it considered relevant on the facts of that particular case, which it summarized as (i) strength of trademark’s reputation; (ii) no evidence by Respondent of actual or contemplated good faith use; (iii) active steps by Respondent to conceal its identity; (iv) active provision of false contact details by Respondent; and (v) lack of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate. See also, Air Austral v. WWW Enterprise, Inc.,WIPO Case No. D2004-0765.
Here, the Panel considers that Respondent’s incorporation of Complainant’s well-known trademark in the Domain Name, Respondent’s efforts to conceal its true identity through use of a privacy service, Respondent’s failure to respond to Complainant’s written notice of trademark rights, Respondent’s failure to respond to the Complaint, and the lack of any plausible actual or contemplated actual use of the Domain Name by Respondent that would not be illegitimate all evidence that Respondent is using the Domain Name in bad faith. See, Air Austral v. WWW Enterprise, Inc.,WIPO Case No. D2004-0765; Allstate Insurance Company v. WXN,WIPO Case No. D2010-2165.
The Panel concludes that Complainant has demonstrated bad faith registration and use of the Domain Name and has thus established the third and final element of its case thereby justifying the requested remedy. 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 Domain Name be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Dated: July 17, 2011
Full & Egal Universal Law Academy