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 Anunet Pvt Ltd. of New Delhi, India.
The disputed domain names <allstaate.com>, <allstatee.com>, <allstatte.com>, and <allsttate.com> are registered with Bizcn.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 13, 2011, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 18, 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 is the owner, amongst others, of the following trademark registrations:
|
TRADEMARK |
REG. NO. |
SERVICES |
DATE OF REGISTRATION |
COUNTRY |
|
ALLSTATE |
0717683 |
Underwriting of the following types of insurance: life, annuity, accident, and health. |
June 27, 1961 |
United States |
|
ALLSTATE |
0761091 |
Business of making, writing and underwriting of insurance. |
December 3, 1963 |
United States |
|
ALLSTATE (and Design) |
0840187 |
Insurance underwriting services. |
December 5, 1967 |
United States |
|
ALLSTATE.COM |
3164784 |
Banking; loan financing; investing and administering 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 acclaims adjustment; financial sponsorship of athletic events; financial sponsorship of local charitable organizations; motor club services, namely, providing bail bonding for motorist; providing financial reimbursement of legal defense services related to moving violations. |
October 31, 2006 |
United States |
The disputed domain names <allstaate.com>, <allstatee.com>, <allstatte.com>, and <allsttate.com> were registered on October 16, 2004.
Complainant argued the following:
1. That Complainant is the largest publicly held insurer in the United States.
2. That since Complainant’s incorporation in 1931, it has become a well-established and well-known insurance company in the United States.
3. That Complainant has been using its trademark ALLSTATE since 1931.
4. That Complainant received its first federal trademark registration for ALLSTATE in 1961.
5. That Complainant has devoted hundreds of millions of dollars to advertising and promoting its services in the United States under the ALLSTATE trademark.
6. That Complainant has registered over one thousand ALLSTATE-based domain names worldwide such as: <allstate.com> registered in May 1995, <allstate.org> registered in July 1998, and <allstate.net> registered in July 1997.
1. That the registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
2. That incorporating the entirety of a mark into a domain name is sufficient to establish that a domain name is confusingly similar to the registered mark.
3. That the use of a famous or well-known mark in a domain name is likely to cause confusion, mistake, or deception since Internet users are likely to believe that the trademark holder authorized or is controlling the disputed website.
4. That other UDRP panels have determined that the ALLSTATE trademark is famous (and cites Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175).
5. That Respondent’s domain name includes a common typographical error of Complainant’s ALLSTATE trademark.
6. That “typosquatting” is a form of cybersquatting in which a respondent registers and uses a domain name that is a common misspelling or predictable mistyping of a distinctive mark in order to take advantage of typographical errors made by Internet users seeking Complainant’s commercial website.
7. That typosquatting takes “unfair advantage” of Complainant’s well-known ALLSTATE trademark and associated business reputation.
8. That each of the disputed domain names features the ALLSTATE trademark, but simply adds a common and predictable typographical error in order to change the trademark to “ALLSTATEE”, “ALLSTAATE”, “ALLSTATTE” or “ALLSTTATE”. As stated above, each of the disputed domain names simply adds a repetitive letter to the ALLSTATE trademark.
9. That the content of the webpage that Internet users are redirected to adds to the likelihood of confusion, because each of the disputed domain names redirects users to <allstaterentersinsurance.com>. This website features click-through advertisements for Complainant and its direct competitors in the insurance market. For example, the website located at the disputed domain names features pay-per-click advertisements for Geico Insurance, State Farm Insurance and AIG, among others.
1. That Respondent is not making a legitimate noncommercial use of the disputed domain names, but instead misleading and diverting consumers for commercial purposes.
2. That using confusingly similar domain names to divert Internet users to a third-party site that offers products or services in competition with Complainant is not a bona fide offering of good or services.
3. That Respondent is not commonly known by the ALLSTATE trademark or by any of the terms that comprise the disputed domain names.
4. That any adoption of the confusingly similar domain names <allstatee.com>, <allstaate.com>, <allstatte.com>, or <allsttate.com> was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill.
5. That the use of a well-known trademark or the misspelling of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use. (and cites RUSTICAE SELECCION DE CALIDAD S.L. v. LAKSH INTERNATIONAL SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1119; Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; and Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779).
6. That Respondent is not making a noncommercial use of the disputed domain names. That the use of confusingly similar domain names that divert Internet users to a third-party site offering products or services in competition with Complainant does not constitute a bona fide offering of goods or services; and that redirecting an Internet user to a third-party website implies that Respondent is receiving compensation for such redirection.
1. That Respondent’s use of a common typographical misspelling of the ALLSTATE trademark in the disputed domain names causes likelihood of confusion.
2. That Respondent is using a well-known trademark and there is no legitimate use of the mark in the disputed domain names.
3. That Respondent knew or should have known about Complainant’s trademark rights before registering the disputed domain names.
4. That Respondent registered the disputed domain names in bad faith since it is a common typographical misspelling of and is confusingly similar to Complainant’s well-known ALLSTATE trademark and there is no legitimate use.
5. That Respondent is using the disputed domain names for commercial gain by redirecting Internet users to a third-party website that features advertising links to Complainant and its direct competitors, and benefiting from the likely confusion between Complainant’s trademark and the disputed domain names.
6. That given Complainant’s widespread use and promotion of its trademark, there can be no doubt that Respondent is aware of Complainant and its trademark rights.
7. That the “practice of typosquatting” is evidence of bad faith in itself.
8. That such exploitation of the reputation of trademarks to obtain revenue from the diversion of Internet users is an indication of bad faith according to numerous previous UDRP decisions.
Respondent did not reply to Complainant’s contentions.
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) The disputed domain names are 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 disputed domain name, and
(iii) The disputed domain names have been registered and are being used in bad faith.
In the administrative proceeding, Complainant must prove that each of these elements are present.
As Respondent has failed to submit a Response to Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487.
Complainant is the holder of the registered trademark ALLSTATE. According to the affirmations and evidence submitted by Complainant, which have not been contested by Respondent, the trademark ALLSTATE has been in use for decades. Said mark has also been publicized extensively.
The disputed domain names <allstaate.com>, <allstatee.com>, <allstatte.com>, and <allsttate.com> are common misspellings of the trademark ALLSTATE. They consist of repetitions of either the letters “a”, “e” or “t” in the term ALLSTATE. This is no coincidence. Typosquatting is the practice of registering domain names consisting of normal spelling and/or typing errors. This practice generates confusion among Internet users who are misled when exposed to the mistakenly typed domain name. (See Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716, citing in turn VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293).
The disputed domain names are inherently confusingly similar to the trademark ALLSTATE, graphically and phonetically, because they consist of the trademark ALLSTATE per se, with the repetitions of the letters mentioned in the preceding paragraph.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627).
Therefore this Panel finds that the disputed domain names <allstaate.com>, <allstatee.com>, <allstatte.com>, and <allsttate.com> are confusingly similar to Complainant’s trademark ALLSTATE. The first requirement of the Policy has been fulfilled.
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
Respondent has not submitted evidence to show the existence of use of the disputed domain names in connection with a bona fide offering of goods or services.
Complainant has argued and proven that each of the disputed domain names redirects users to a web site to which the domain <allstaterentersinsurance.com> resolves. This web site features click-through advertisements for Complainant and some of its direct competitors in the insurance market, like Geico Insurance, State Farm Insurance and AIG. This use is not legitimate. It is commercial. It cannot be deemed to be fair use. It is intended for commercial gain to misleadingly divert consumers. See The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. 2007-0304.
Respondent has not proven to have been commonly known by the disputed domain names. Complainant owns a substantial number of trademark registrations that cover ALLSTATE. All of the contested domain names are misspellings of the trademark ALLSTATE. This trademark is heavily publicized in the United States. Therefore, there is no evidence at hand that Respondent could have chosen or used the disputed domain names in a legitimate manner.
Respondent has particularly chosen to use the disputed domain names to divert Internet users to sites with pay-per-click advertisements of Complainant’s competitors.
Therefore, the Panel finds no rights or legitimate interests on the side of Respondent. The second element of the Policy has been met.
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
“ (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant’s Complaint and evidence show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site to which the domain <allstaterentersinsurance.com> resolves, which features pay-per-click advertisements of Complainant’s direct competitors. The tools that Respondent has used for this purpose are the disputed domain names <allstaate.com>, <allstatee.com>, <allstatte.com>, and <allsttate.com> which are simply misspellings of Complainant’s trademark ALLSTATE. Together, the typosquatted domain names, and the existence of the on-line advertisements linked to said domain names, which advertisements refer to other insurance companies, make it clear that Respondent’s conduct is not coincidental but premeditated, and that it constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163; MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831).
Therefore, the third element of the Policy has been met.
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 names <allstaate.com>, <allstatee.com>, <allstatte.com>, and <allsttate.com> be transferred to Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: March 4, 2011