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 Moniker Privacy Services, of Pompano Beach, Florida, United States of America / Pablo Palermao of San Isidro, Peru.
The disputed domain names <allstatemotorcycle.com> and <encompassinsurnace.com> are registered with Moniker Online Services, LLC and Backslap Domains, Inc., respectively.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name <allstatemotorcycle.com> . On February 2, 2011 and February 4, 2011 Moniker Online Services, LLC, replied to the center regarding the domain name <allstatemotorcycle.com> and transmitted by email to the Center its verification response disclosing registrant and contact information for this domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 8, 2011, providing the registrant and contact information disclosed by Moniker Online Services, LLC, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint adding the additional domain name <encompassinsurnace.com> on February 11, 2011. On February 15, 2011, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the additional disputed domain name. On February 15, 2011, Backslap Domains, Inc. replied to the Center and transmitted by email to the Center its verification response confirming the registrant and contact information for <encompassinsurnace.com>.
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 February 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2011.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 17, 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.
The trademark upon which the Complaint is based is ALLSTATE. According to the documentary evidence and contentions submitted, the ALLSTATE trademark was first registered in the United States (“U.S.”) under U.S. Registration No. 717,683 on June 27, 1961, for insurance services. Complainant also owns U.S. Registration No. 761,091 registered on December 3, 1963 and U.S. Reg. No. 840,187 registered on December 5, 1967 for the same services. On October 31, 2006, Complainant registered U.S. Registration No. 3,164,784 for the ALLSTATE.COM trademark in connection with financial services. Complainant obtained U.S. Registration No. 2,837,616 on May 4, 2004 for the ENCOMPASS INSURANCE trademark, with first date of use of September 29, 2000, and U.S. Registration No. 3,168,764 on November 7, 2006 for ENCOMPASS, with first date of use on September 29, 2000, all in connection with insurance services.
According to the documentary evidence and contentions submitted, Complainant is a well-known insurance company, which was founded in 1931 and provides insurance services throughout the United States. The ALLSTATE trademark has been used by Complainant since 1931, and the ENCOMPASS INSURANCE trademark has been used by certain affiliated companies of Complainant in connection with the sale of personal property and casualty insurance since 2000. Complainant owns a large number of domain names containing the ALLSTATE trademark, including <allstate.com>, <allstate.org> and <allstate.net>, which were registered in the period of May 10, 1995 to July 17, 1998.
The disputed domain name <allstatemotorcycle.com> was registered on October 10, 2004. The disputed domain name <encompassinsurnace.com> was registered on September 1, 2004. Complainant sent cease and desist letters to Respondent on December 10, 2010, regarding the disputed domain names. Complainant states that Respondent never replied.
Complainant argues that Respondent’s domain names are confusingly similar to the trademarks in which Complainant has rights because: (i) the incorporation of a mark in full within a disputed domain name is sufficient to establish confusingly similarity between the mark and the disputed domain name, particularly where the incorporated mark is well-known, because Internet users are likely to believe that the trademark holder either authorized or is controlling the disputed website; (ii) a prior UDRP panel has determined that the ALLSTATE trademark is famous; (iii) the disputed domain names only differ from the ALLSTATE and ENCOMPASS INSURANCE trademarks by adding a descriptive word in the ALLSTATE trademark, or by transposing the letters “n” and “a” from the word “insurance” in the ENCOMPASS INSURANCE trademark; and (iv) the websites associated with the disputed domain names feature pay-per-click advertisements leading Internet users to believe that Complainant is affiliated with the disputed domain names and associated websites.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because: (i) Respondent is not commonly known by the name “allstate” or by any of the names which comprise the disputed domain name <allstatemotorcycle.com>, or by “encompass”, or by any of the names that comprise the disputed domain name <encompassinsurnace.com>, but even if it were known by any adoption of such a name, which is confusingly similar to Complainant’s trademarks, this was done with complete knowledge of Complainant and its rights and with an intent to trade off Complainant's goodwill; (ii) Respondent's use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny; (iii) Respondent is not making a noncommercial use of the disputed domain names, and the use of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use; and (iv) Respondent is offering the disputed domain name <encompassinsurnace.com> for sale.
Finally, Complainant contends that Respondent registered and uses the disputed domain names in bad faith because: (i) bad faith exists where, as in the instant case, a respondent uses a domain name to 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 websites; (ii) bad faith exists where, as in the instant case, a respondent uses a well-known trademark and there can be no question that respondent knew or should have known about complainant's trademark rights before registering its domain name; (iii) the practice of typosquatting of itself is evidence of bad registration of a domain name; (iv) Respondent is using the disputed domain names for commercial gain by advertising links to websites of unrelated third parties; (v) Respondent is responsible for the content of the websites located at the domain names; (vi) the registration and offer for sale of a domain name which is based upon another’s intellectual property show bad faith; and (v) Respondent has been the subject of numerous proceedings under the UDRP.
Respondent did not reply to Complainant’s contentions.
When the Complaint was filed, the disputed domain name <allstatemotorcycle.com> was registered in the name of “Moniker Privacy Services”, which is a proxy service to enable true domain name holders to conceal their identities. When the Center transmitted to the registrar a request for registrar verification in connection with that disputed domain name, the identity of the actual registrant was disclosed. Complainant then filed an amended Complaint adding the additional domain name <encompassinsurnace.com>, which was registered by the same registrant. Both the proxy service and Pablo Palermao have been served with copies of the Amended Complaint and neither has responded. The Panel sees no reason to distinguish between the two. The practice of having two respondents to a proceeding under the Policy where one is a proxy service and the other is the beneficial party, which is disclosed by the registrar is well-recognized in UDRP cases, as it helps to inform interested parties. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
The Panel notes that the disputed domain names were registered in the fall of 2004, and that the Complaint was filed on February 1, 2011. The question which arises is whether the elapse of around 6 years from the domain name registration date prevents Complainant from commencing an administrative proceeding against Respondent under the Policy.
The Panel recognizes that the issue has been addressed in previous UDRP decisions and that the doctrine of laches or estoppel has not frequently been applied to the Policy proceedings. The delay by reference ot the time of the relevant registration of the disputed domain names in bringing a complaint does not, of itself, preclude the complainant from seeking remedy under the Policy. “Estoppel has rarely been raised as a defense in a proceeding under the Policy, and to this panel's knowledge has never been the basis for denying a complaint when all elements of the Policy were established.” Justice for Children v. Rneetso / Robert W. O'Steen, Case No. D2004-0175. See also Tax Analysts v. eCorp., WIPO Case No. D2007-0040; Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011; Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, WIPO Case No. D2010-0228; and Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256.
As decided in Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, “[w]ithout some substantial evidence to indicate that Complainant approved of or condoned Respondent’s use of his mark in the disputed domain name, the Panel is not prepared to import a bar against his cause of action.”
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105.; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon v. Mti Networks Ltd., WIPO Case No. D2005-0258; and AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable as in the instant case. In fact, there is sufficient evidence in the records that the ALLSTATE trademark is well known. The disputed domain name <allstatemotorcycle.com> incorporates the whole of the ALLSTATE trademark. Further, it has been decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; and F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049. The word “motorcycle” points to one of Complaint’s lines of business, which is the insurance of vehicles. Therefore, the combination of “ALLSTATE” with “motorcycle” creates an immediate potential for false association with the ALLSTATE trademark, and a high degree of initial confusion. See adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, Case No. D2006-0748.
The domain name <encompassinsurnace.com> is confusingly similar to the ENCOMPASS INSURANCE trademark because only some letters (“n” and “a”) have been interchanged, which is a common misspelling error. The practice of misspelling an element of the mark, generally called “ typosquatting”, has consistently been regarded as creating domain names confusingly similar to the relevant mark. See, e.g., Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Deutsche Bank AG v. New York TV Tickets Inc., WIPO Case No. D2001-1314; Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0317; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713; and ACCOR v. Brigit Klostermann, WIPO Case No. D2005-627. Therefore, such domain name may also lead the public to think that same is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
The Panel notes that the ENCOMPASS INSURANCE and ENCOMPASS trademarks have been in use by Complainant since 2000 as per the records of United States Patent and Trademark Office (“USPTO”).
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain names. See RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
Respondent is using the disputed domain names to resolve to websites with click-through advertisements pointing to Complainant as well as to other websites, including those competing with Complainant as well as those offering services unrelated to Complainant’s products. The websites to which the disputed domain names resolve are entirely in English.
The issue as to whether use of a domain name for purposes of offering “sponsored links” creates a legitimate right to a domain name has been addressed in previous UDRP decisions. There is a consensus view that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See Bridgestone Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.
In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the terms “allstateinsurance” and “encompassinsurnace” in the disputed domain names and, accordingly, concludes that the disputed domain names were selected and used by Respondent to take advantage of the notoriety associated with the “All State” name and the goodwill attached to the “Encompass” name, with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain names, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
Complainant’s first contention of bad faith is based on the argument that Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites.
The Panel has already found that that the disputed domain names were selected and used by Respondent to take advantage of the notoriety associated with the ALLSTATE mark and the goodwill attached to the ENCOMPASS mark, with the intent to attract for commercial gain Internet users by utilizing sponsored links. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites is evidence of bad faith, particularly if, as in the instant case, complainant had registered and previously been using its trademarks. See Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.
Complainant’s second contention of bad faith is based on the argument that at the time of registration of the disputed domain names Respondent knew, or at least should have known of the existence of Complainant’s trademarks and that registration of a domain name containing a well-known trademark constitutes bad faith per se. The Panel finds that, in addition to ALLSTATE, the ENCOMPASS INSURANCE trademark has also acquired extensive reputation. As stated by a panel previously, “given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.” See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517. Therefore, this Panel finds that Respondent in all likelihood knew of the existence of Complainant’s trademarks.
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435. It is also worth noting that the mere act of "typosquatting" or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith. See Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; and National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011.
Complainant also argues that Respondent may be offering the disputed domain names for sale because the websites associated with the disputed domain names feature a notice stating that “This Domain Name is not for sale unless you know us”. Upon independent survey conducted on March 30, 2011, the Panel noted that this message links to a website operating under the brand name “Domain Buying Services”, which ultimately assists Internet users in acquiring desired domain names already registered. The Panel finds that this not conclusive evidence that Respondent was offering the disputed domain names for sale.
Complainant’s last contention is that Respondent has been the subject of numerous proceedings under the UDRP. The Panel notes that Pablo Palermao or Pablo Palermo has been involved in various UDRP proceedings where his conduct was found as violating third parties’ rights in registered trademarks. See, e.g., Shorenstein-Hays Nederlander Theatres, LLC v. Pablo Palermo, WIPO Case No. D2009-0674; Corporación Radio y Televisión Española, S.A. v. Pablo Palermo, WIPO Case No. D2008-0926; Equifax Inc. v. PabloPalermao et al, WIPO Case No. D2008-0506; Cox Newspapers, Inc. d/b/a Dayton Daily News v. Pablo Palermao, WIPO Case No. D2008-0372; and Advance Magazine Publishers Inc. v. PabloPalermao, WIPO Case No. D2008-0026. In Academy of Country Music v. Pablo Palermo, WIPO Case No. D2008-0818, the panel stated that:
“It should be noted that despite the Registrar’s records indicating that Respondent is one “Pablo Palermo” it is apparent that “Pablo Palermo” and “Pablo Palermao” are the same person. It appears that Mr. Palermao may have purposefully misspelled his name to hide his past encounters with the Center or perhaps it is just a typo on the part of the Registrar. The fact remains, that the e-mail address for Respondent is spelled correctly ([…]@gmail.com) and in all of the WIPO cases against Mr. Palermao his residence is identified as San Isidro, Peru. Thus, it is apparent that the Respondent is continuing his pattern of registering protected domain names in order to prevent well known companies, like Complainant from being able to use the domain thus satisfying the requirement of paragraph 4(b)(ii) of the Policy.”
Therefore, the Panel concludes that Respondent’s pattern of conduct suggests bad faith in registering and using domain names and substantiates a finding of bad faith conduct in the instant case. In short, the manner in which Respondent has used and is using the disputed domain names demonstrates that the disputed domain names were registered and have been used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is 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 <allstatemotorcycle.com> and <encompassinsurnace.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: March 30, 2011