The Complainant is Allstate Insurance Company, United States of America (“United States”), represented by SILKA Law AB, Sweden.
The Respondent is Michal restl c/o Dynadot Registrant, United States.
The disputed domain names <allstatemyaccount.com> and <myaccountallstate.com> are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2019. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 15, 2019, the Registrar transmitted by email to the Center its verification response, which confirmed that the Respondent is listed as the registrant and provided 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was October 7, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 8, 2019.
The Center appointed D. Brian King as the sole panelist in this matter on October 17, 2019. 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.
The Complainant is Allstate Insurance Company, a well-known provider of personal insurance policies, and in particular automobile insurance. According to the Complainant, it is presently the largest publicly traded personal insurer in the United States and has won numerous awards for its business (Annex 5 to the Complaint). The Complainant has a large social media presence on platforms such as Facebook, Twitter, and Instagram (Annex 6 to the Complaint).
The Panel has no information on the activities or history of the Respondent.
The Complainant has registered the ALLSTATE mark many times in various jurisdictions. Representative registrations in the United States, which is the home jurisdiction of both the Complainant and the Registrar, follow:
|
Trademark |
Jurisdiction |
Registration Date |
Registration Number |
|
ALLSTATE |
United States |
June 27, 1961 |
0717683 |
|
ALLSTATE |
United States |
December 3, 1963 |
0761091 |
|
ALLSTATE |
United States |
March 20, 2001 |
2436759 |
The disputed domain names <allstatemyaccount.com> and <myaccountallstate.com> (“Domain Names”) were registered on May 25, 2011. This is nearly 50 years after the Complainant first registered the ALLSTATE trademark in the United States in June 1961. The first Domain Name, <allstatemyaccount.com>, resolves to a pay-per-click (“PPC”) website featuring the Complainant’s ALLSTATE trademark and links to businesses in the insurance industry. The second Domain Name, <myaccountallstate.com>, redirects Internet users to various websites that appear to be commercial in nature (Annex 8 to the Complaint).
The Complainant submits that the Domain Names are confusingly similar to its registered trademark. According to the Complainant, both Domain Names wholly incorporate its famous ALLSTATE mark, either preceded or followed by the generic phrase “myaccount”. The addition of this generic term to the mark, the Complainant submits, does not diminish the Domain Names’ confusing similarity to it. The Complainant further asserts that the addition of the generic Top-Level Domain (“gTLD”) “.com” likewise does not reduce the confusing similarity.
The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant represents that it has not licensed or otherwise permitted the Respondent to use its ALLSTATE trademark, and contends that the Respondent is not commonly known by a name corresponding to either Domain Name. The Complainant further submits that while the maintenance of a PPC website is not illegitimate per se, it is in the present case, because the Respondent is attempting to benefit financially from the Complainant’s rights in the ALLSTATE mark. Furthermore, according to the Complainant, the Respondent has not demonstrated any rights or legitimate interests with respect to the Domain Names despite ample opportunity to do so.
Finally, the Complainant submits that the Domain Names were registered and are being used in bad faith. The ALLSTATE mark is so well-known, the Complainant argues, that the Respondent must have known of the Complainant’s rights in that mark when registering the confusingly similar Domain Names, which is itself indicative of bad faith registration. With respect to the use of the Domain Names, the Complainant asserts that the Respondent is attempting to benefit financially by willfully creating a likelihood of confusion with the Complainant’s trademark and business. This is said to be true for both of the Domain Names: the PPC website to which the first Domain Name resolves yields a direct commercial benefit to the Respondent, and the site to which the second Domain Name resolves likewise contains links to commercial sites, some of which may contain malware. Finally, the Complainant notes that the Respondent has repeatedly registered Domain Names in bad faith, as reflected by the fact that the Respondent has been the unsuccessful party in many domain name cases involving prominent companies. Considered together, the Complainant submits, these circumstances amply show bad faith registration and use on the Respondent’s part.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i)the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.
The Complainant has proven that it has had rights in the ALLSTATE mark for decades. The Complainant has also demonstrated to the Panel’s satisfaction that its ALLSTATE mark and brand are well-known and acclaimed.
The Domain Names wholly incorporate the Complainant’s mark, either preceded or followed by “myaccount”. UDRP panels have consistently held that the addition of descriptive words to a complainant’s trademark does not distinguish a domain name from that registered mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307). Consistent with those prior holdings, the Panel finds that in this case, the addition of the term “myaccount”, whether placed before or after the Complainant’s trademark, does not prevent the confusing similarity between the Domain Names and that mark. The same conclusion applies to the addition of the generic Top-Level Domain (“gTLD”) “.com”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11.
For these reasons, the Panel finds that the Domain Names are confusingly similar to the Complainant’s ALLSTATE mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied.
Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see Belupo d.d v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden shifts to the Respondent to prove that it does have rights or legitimate interests in the disputed domain name.
The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. The Complainant has shown that it registered the ALLSTATE mark in the United States, which is the Registrar’s (and likely the Respondent’s) home jurisdiction, as early as 1961. This fact, coupled with the notoriety of the Complainant’s mark, suggests that the Respondent must have been aware of the Complainant’s rights in the ALLSTATE mark when registering the Domain Names. Indeed, given that the website at the first Domain Name features the Complainant’s ALLSTATE mark in connection with the insurance industry, it is apparent that the Respondent was actually aware of the Complainant’s rights in the mark at that time.
In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant or its business. The Panel also finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Names.
In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Names. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. Accordingly, the Panel finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy.
The third element of the test under paragraph 4(a) requires proof that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstance set out in paragraph 4(b)(iv) of the Policy is present here.
The Panel has already concluded above that the Respondent had actual knowledge of the Complainant’s rights in the ALLSTATE mark when it registered and used the Domain Names. The Complainant has established that the Domain Names seek to attract Internet users to the Respondent’s websites by creating a likelihood of confusion as to source, sponsorship or affiliation – specifically, by intentionally giving the false impression that those websites are affiliated with the Complainant. The Respondent’s effort to benefit commercially is equally clear. The first Domain Name resolves to a PPC website, and the second likewise links to other commercial sites. These circumstances satisfy paragraph 4(b)(iv) of the Policy and sufficiently establish bad faith registration and use on the Respondent’s part.
The Complainant has further shown that the Respondent has a history of abusing the intellectual property rights of prominent corporations (see, e.g., Government Employees Insurance Company (“GEICO”) v. Michal Restl c/o Dynadot, WIPO Case No. D2018-1685; Nike, Inc. and Nike Innovate, C.V. v. Michal restl c/o Dynadot, NAF Claim No. FA1703001723952). That pattern of conduct, while not dispositive in itself, buttresses the conclusion reached above on the facts of the present case.
The Panel accordingly finds that the Complainant has satisfied its burden on the third element under paragraph 4(a) of the Policy with respect to both Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <allstatemyaccount.com> and <myaccountallstate.com> be transferred to the Complainant.
D. Brian King
Sole Panelist
Date: October 31, 2019