Complainant is Allstate Insurance Company of Northbrook, Ilinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.
Respondent is Customer ID 12313697771467 / Global Access, domain admin of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <allstateins.com> is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to Fabulous.com (“the Registrar”) a request for registrar verification in connection with the disputed domain name. On December 15, 2010, the Registrar 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 the Complainant on December 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 1, 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 January 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2011.
The Center appointed Leon Trakman as the sole panelist in this matter on January 31, 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.
Complainant in this administrative proceeding is Allstate Insurance Company, an Illinois insurance company, with its principal place of business in Northbrook, Illinois. Complainant is a nationally and internationally recognized insurer specializing, inter alia, in private insurance. Complainant has continuously used the ALLSTATE trademark in the United States since its founding in 1931. ALLSTATE is the trademark used to identify products, services, activities and events related to Complainant. Complainant received its first federal trademark registration for ALLSTATE in 1961. Complainant earns revenues in the sale of its products and services in the United States under the ALLSTATE trademark in the United States. In addition, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions, including among others, Austria, Benelux, Denmark, Estonia, Finland, France, Germany, Gibralter, Greece, Hungary, Ireland, Italy, Spain, Sweden, the United Kingdom, India and Japan. Complainant is also the owner of the ALLSTATE.COM trademark, which was registered in the United States in 2006.
Complainant has spent hundreds of millions of dollars to advertise and promote its services under the ALLSTATE trademark. It is also the subject of numerous third party publications that promote, directly or indirectly, its products and services.
According to the WhoIs database, Respondent is the registrant of the disputed domain name <allstateins.com>. On the Center’s request, the Registrar confirmed that Respondent is Global Access domain admin, located in Douglas, the Isle of Man.
Complainant provides documentary evidence that Respondent registered the disputed domain name <allstateins.com> on August 8, 2001, approximately seventy (70) years after Complainant adopted the ALLSTATE trademark, approximately forty (40) years after Complainant’s registration of the ALLSTATE trademark and approximately six (6) years after Complainant registered the <allstate.com> domain name.
Complainant alleges that the disputed domain name is confusingly similar to its ALLSTATE trademark, as it wholly incorporates the ALLSTATE trademark. Further, the disputed domain name <allstateins.com> differs from Complainant’s ALLSTATE.COM trademark only by adding the letters “ins.” Complainant contends that the addition of the letters “ins” – an abbreviation for “insurance” – further emphasizes Respondent’s efforts to associate itself with Complainant’s trademarks.
Complainant likewise contends that Respondent has no rights or legitimate interests in the disputed domain name, and provides documentary evidence that Respondent operated a pay-per-click advertising site at the disputed domain name. The web pages corresponding to disputed domain name featured a variety of advertising links concerning the field of insurance including, for example, the links to “Auto Insurance,” “Liberty Mutual” and “MetLife.” These advertisements featured direct links to Complainant’s direct competitors.
The disputed domain name is currently redirected to <generalinsurance.com>, which features a website that offers “free insurance quotes” and has click through advertisements to Complainant’s direct competitors in the insurance market, again including Liberty Mutual and MetLife.
Complainant provides documentary evidence that it had previously advised Respondent that it is violating the Complainant’s rights by using the disputed domain name and alleges that Respondent did not respond.
Respondent did not reply to Complainant’s contentions.
This dispute relates to the scope of the ICANN Policy and the Administrative Panel’s jurisdiction to decide the dispute.
By registering the disputed domain name, Respondent agreed to be bound by the Policy. Paragraph 4(a) of the Policy, requires Respondent to submit to a mandatory administrative proceeding to determine whether: (a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (b) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (c) the disputed domain name was registered and is being used in bad faith.
The disputed domain name <allstateins.com> incorporates the ALLSTATE trademark, and differs from Complainant’s ALLSTATE.COM trademark only in the addition of the letters “ins” – a common abbreviation for “insurance.” While not identical, the disputed domain name is confusingly similar to Complainant’s internationally recognized trademark. It is also well established that registering a domain name that is similar to the mark in issue is likely to cause confusion among Internet users who may reasonably associate the disputed domain name with Complainant’s established trademark.
Complainant argues that the content of Respondent’s web page adds to that confusion. In particular, Complainant alleges that the web pages, featuring pay-per-click advertisements of competing insurance companies, will lead Internet users to conclude that Complainant is affiliated with these web pages. Complainant argues, further, that it is well established that use of a famous or well known mark in a domain name is likely to cause confusion, if Internet users are likely to believe that the trademark holder authorized or is controlling the disputed website. Complainant cites in support of this argument Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (February 28, 2001).
Contrary to Complainant’s argument, even if the Panel would consider the contents of Respondent’s website to be relevant in assessing identity or confusing similarity under the first element of the Policy (which UDRP panels have generally declined to do), the more likely inference in the current case seems to the Panel that Internet users will conclude that the web pages are sponsored by competitors of Complainant and that Complainant is not so affiliated with Respondent’s business. It would also be less reasonable for Internet users to infer that Complainant would sponsor a website that discourages use of its services or products, or alternatively, that encourages Internet users to use the services or products of Complainant’s competitors.
This observation notwithstanding, the crucial issue is the evidence on the record that the disputed domain name is “confusingly similar” to Complainant’s trademark, which is furthermore a widely known and world famous mark. The confusion stems, less from confusion arising from Internet user likely to believe that Respondent’s website is sponsored by or affiliated with Complainant’s business. The more likely malady lies in confusion arising when users initially access Complainant’s website via the disputed domain name in the false belief that they are accessing a product or service of ALLSTATE which is clearly not the case here. See F. Hoffman-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005 (March 14, 2006). Added to this confusion is evidence of Complainant’s widespread use and promotion of its ALLSTATE trademark over the decades, that its mark is well-known and widely recognized, and that it is indeed famous. See Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175 (November 6, 2009) (“Given its long and widespread use and extensive recognition, the ALLSTATE brand is among those that may be fairly described as famous or well known.”).
In conclusion, Complainant has provided prima facie evidence of the validity and distinctiveness of its ALLSTATE trademark. It has demonstrated that it has registered its trademark variously and long before the Respondent purchased the disputed domain name and that Complainant’s mark is distinctive. See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (March 5, 2002). Thus, the Panel holds that Complainant has demonstrated that the disputed domain name is confusingly similar to Complainant’s marks.
Respondent has no rights to or legitimate interest in the disputed domain name. As was held in Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (February 28, 2001) (“[I]t is beyond credulity that the Respondent’s corporate name was chosen in the absence of knowledge of the Complainant’s famous trademark. … Under these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy cannot apply.”). In the instant case, there is no prima facie evidence that Respondent has any rights to or legitimate interests in the name ALLSTATE. Respondent has no prior legal or other relationship with Complainant. Complainant has not given Respondent permission, directly or otherwise, to register or use the disputed domain name. Respondent has no legitimate interest in the disputed domain name. On the contrary, its interests are illegitimate: they are directed at an illegitimate purpose, to confuse Internet users into using a confusing similarly domain name to Complainant’s mark in order to redirect those users to Respondent’s website that includes web links to web pages that are intended to and likely have the effect of undermining Complainant’s business.
Complainant alleges that Respondent’s illegitimate interest is attributed to its resort to a privacy service, in an attempt to hide its activities from scrutiny, citing The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156 (May 20, 2008) in which a “proxy” service was used to disguise a respondent’s identity. There may be other explanations for the use of a private service, such as offering the service selectively to a particular customer base rather than to the public at large. However, this observation does not gainsay evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name in the current case.
Further evidence of Respondent’s illegitimate use includes evidence that Respondent is not employing the disputed domain name for a bona fide commercial purpose. Respondent’s website is essentially a “parking service” at which Internet users identify a series of hyperlinks to the websites of competitors of Complainant. See Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779 (August 7, 2007) (“The use of the domain name as a parking website is not a bona fide non-commercial use … even if the content on the parking website is not developed by Respondent but provided by the Parking Service Provider.”). See also RUSTICAE SELECCIÓN DE CALIDAD S.L. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1119 (September 30, 2008); Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2009); Owens Corning v. NA, WIPO Case No. D2007-1143 (October 1, 2007).
Complainant argues that Respondent’s actions, in redirecting Internet user to a third-party website implies that Respondent is receiving compensation for such redirection, in the form of click through benefits from Complainant’s competitors’ and cites in support the case of Pfizer Inc., G.D. Searle LLC Inc. v. Samir Kumar, WIPO Case No. D2009-0429 (May 20, 2009). The evidence provided indicates, in support of this proposition, that the disputed domain name is currently redirected to <generalinsurance.com>, which features a website that offers “free insurance quotes” and has click through advertisements to Complainant’s direct competitors.
Notwithstanding its proposition, there is no direct evidence on the record that Respondent is being paid for such services by Complainant’s competitors. It is also conceivable that Respondent has some other reason for redirecting traffic to Complainant’s competitors.
Nevertheless, Complainant has established that Respondent has no rights to the disputed domain name, and that Respondent’s use of a confusingly similar domain name that diverts Internet users to a third party site offering products or services in competition with Complainant constitutes an illegitimate use of the disputed domain name.
In conclusion, the Panel holds that Respondent has no rights to, nor any legitimate interests in the disputed domain name.
The Panel holds that Respondent has registered and is using the disputed domain name in bad faith. Such bad faith exists when Respondent uses a domain name intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website Policy, paragraph 4(b)(iv). In registering and using a confusingly similar domain name to Complainant’s mark in order to divert Internet users to third party sites that offer products or services in competition with Complainant, Respondent is not engaging in a bona fide offering of goods or services. See The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304 (April 19, 2007).
There is ample evidence of Respondent’s bad faith. Respondent has registered and used a confusingly similar domain name to Complainant’s mark to divert Internet users to Complainant’s competitors. Respondent’s web site refers to the insurance-related services offered by third-party competitors of Complainant. It is conceivable, although not established on the facts, that Respondent generated click-through fees from advertising featured on the website associated with the disputed domain name. See Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG v. Michael Robert, WIPO Case No. D2009-0446 (June 2, 2009). Respondent may have benefitted financially from the sponsored links. See Deloitte Touche Tohmatsu v. Chan, WIPO Case No. D2003-0584 (September 7, 2003) (finding that creating revenue from misdirected traffic constitutes bad faith).
Whatever the nature or extent of Respondent’s gain, if any, it is not necessary to establish that Respondent actually secured a commercial gain, nor that such a “gain needs to be derived by Respondent himself.” Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (February 14, 2008). What must be established is that Responded registered and used the disputed domain name in bad faith.
It would be virtually impossible on the facts of this case for Respondent to deny knowing about Complainant’s famous trademark rights before Respondent registered and used the disputed domain name. See Yahoo! Inc. v. Yahoo-Asian Company Limited, supra. See also Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000) (“[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.”).
In conclusion, the Panel holds that Respondent has registered and used the disputed domain name in bad faith.
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 name <allstateins.com> be transferred to the Complainant.
Leon Trakman
Sole Panelist
Dated: February 9, 2011