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.
The Respondent is Whois Privacy Service of Munsbach, Luxembourg. 2. The Domain Name and Registrar
The disputed domain name is registered with Premium Registrations Sweden AB. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 3, 2012, the Center transmitted by email to Premium Registrations Sweden AB a request for registrar verification in connection with the disputed domain name. On February 8, 2012, Premium Registrations Sweden AB transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 13, 2012. 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, Allstate Insurance Company, is a United States insurance company that was founded in the year 1931. The Complainant provides insurance throughout the United States.
The Complainant’s revenues exceeded approximately USD 26 billion in 2009 and in 2010.
Since its establishment, the Complainant has been using the ALLSTATE mark in connection with its products, services, activities and events.
The Complainant is the owner of numerous worldwide trademark registrations for the mark ALLSTATE. For example: United States trademark registration No. 0717683 – ALLSTATE, with the registration date of June 27, 1961; United States trademark registration No. 0761091 – ALLSTATE, with the registration date of December 3, 1963; United States trademark registration No. 0840187 – ALLSTATE (logo), with the registration date of December 5, 1967; Community trademark registration No. 000040527 – ALLSTATE, with the registration date of February 12, 1998, and many more.
The Complainant is also the owner of United States trademark registration No. 3164784 – ALLSTATE.COM, with the registration date of October 31, 2006.
The Complainant also developed a formidable presence on the Internet and is the owner of numerous domain names consisting of the mark ALLSTATE. For example: , , , , and many others.
The disputed domain name was created on December 16, 2012.
The disputed domain name resolves to a parking webpage containing pay-per-click advertising and also indicates that the disputed domain name is for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues it invested hundreds of millions of dollars to advertise and promote its services in the United States under the ALLSTATE trademark.
The Complainant further argues that its services were the subject of numerous articles in the national and international media, including print, radio and television.
The Complainant further argues it received many awards, including “America's Most Admired Companies” from “Fortune” magazine, “100 Best Companies for Working Mothers” from “Working Mother” magazine, “100 Best Corporate Citizens” from “Corporate Responsibility Officer” magazine, and “Top 100 in Global 2000 Companies” from “Forbes” magazine.
The Complainant further argues that due to its extensive promotional efforts, the ALLSTATE trademark has become a widely recognized brand among consumers.
The Complainant further argues it has not authorized the Respondent to use the ALLSTATE trademark or any variation thereof.
The Complainant further argues that the Respondent’s actions, including registering the disputed domain name while using a privacy service to hide its identity, provides evidence that the Respondent is attempting to avoid the consequence of its activities.
The Complainant indicates that previous UDRP panels have recognized the vast goodwill the Complainant achieved in its trademarks. The Complainant also states the UDRP panels have transferred to its behalf numerous domain names that included the ALLSTATE and/or ALLSTATE.COM trademarks and an additional word that is associated with the Complainant’s business.
The Complainant further argues that the Respondent does not appear to be commonly known by the ALLSTATE trademark or by any terms comprising the disputed domain name.
The Complainant further argues that the Respondent’s is making a commercial use of the disputed domain name. The Complainant contends that the Respondent is using the disputed domain names to advertise links for insurance-related services that directly compete with the Complainant.
The Complainant further argues that the use of a well-known trademark in a domain name that resolves to a website, which includes a hyperlinks page, is not a legitimate commercial use.
The Complainant further argues that the Respondent has registered the disputed domain name in bad faith since it is confusingly similar to the Complainant’s well-known ALLSTATE trademark.
The Complainant further argues that there can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name to itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is English.
Accordingly, and in the absence of a contrary agreement between the parties, the Panel finds that the language of proceedings is English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous worldwide trademark registrations for the mark ALLSTATE. For example: United States trademark registration No. 0717683 – ALLSTATE, with the registration date of June 27, 1961; United States trademark registration No. 0761091 – ALLSTATE, with the registration date of December 3, 1963; United States trademark registration No. 0840187 – ALLSTATE (logo), with the registration date of December 5, 1967; Community trademark registration No. 000040527 – ALLSTATE, with the registration date of February 12, 1998, and many more.
The Complainant is also the owner of the United States trademark registration No. 3164784 – ALLSTATE.COM, with the registration date of October 31, 2006.
The disputed domain name differs from the Complainant’s registered ALLSTATE trademark by the additional term “flod” and by the additional gTLD “.com”.
The disputed domain name also differs from the Complainant’s registered ALLSTATE.COM trademark solely by the additional term “flod”.
The addition of the term “flod” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s ALLSTATE or ALLSTATE.COM trademarks. The Complainant argues that the word “flod” is a common misspelling of the term “flood”, which relates to the Complainant’s field of business. This presumption was not rebutted, since the Respondent failed to reply to the Complainant’s contentions. Therefore, the Panel concludes that the term “flod” is not sufficient to avoid confusion between the disputed domain name and the trademark. It is clear that the most prominent element in the disputed domain name is the “allstate” term.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001‑0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Also, although the Complainant owns a registration for the mark ALLSTATE.COM, it should be noted that the addition of a gTLD such as “.com” to a domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the disputed domain name is confusingly similar to the Complainant’s ALLSTATE and ALLSTATE.COM trademarks, in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant alleges that the Respondent lacks rights or legitimate interests in respect with the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the ALLSTATE trademark, or any variation thereof.
The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
The Panel conclusion is further supported by the fact the disputed domain name resolves to a parking website that contains pay-per-click advertising. It was held in UDRP decisions that operating a link farm parking page using a distinctive trademark in the domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests (see Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence that shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the ALLSTATE trademark since at least the year 1961. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009‑0735). This conclusion is even more valid when taking into account the vast goodwill that the Complainant has gained in its well-known ALLSTATE trademark.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The Complainant provided evidence proving that the Respondent is using the Complainant’s trademark, as part of the disputed domain name, in order to intentionally attract Internet users to the website under the disputed domain name, for commercial gain.
The Respondent is using the disputed domain name to direct Internet users to a parking webpage containing pay-per-click links that direct users to websites that offer goods and services competitive with those of the Complainant. The Respondent is utilizing the Complainant’s well known trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting that the source of the Respondent’s website is the Complainant’s. This constitutes evidence of bad faith registration and use of the disputed domain name. (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009‑0450).
It should also be noted that the disputed domain name is very similar to the Complainant’s domain name , which was registered by the Complainant on July 31, 2002. Such similarity constitutes further evidence that the Respondent intended to confuse costumers as to the source of the disputed domain name.
Another indication of the Respondent’s bad faith is the Respondent’s use of a privacy service. Although the use of a privacy service does not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases (see: Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542). In the circumstances of this case, including the Respondent’s use of the Complainant well-known trademark and the fact that the Respondent did not reply to the Complainant assertions, the Panel concludes that the Respondent used the privacy service in order to avoid the consequence of its activities and therefore constitutes further evidence of bad faith on its behalf.
The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the Respondent’s use of the disputed domain name and the confusing similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and is used in bad faith.
Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 the Complainant.
Jonathan Agmon
Sole Panelist
Dated: March 27, 2012
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