WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. G Design
Case No. D2010-2167
1. The Parties
The Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., United States of America.
The Respondent is G Design of Taiyuan, Shanxi, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <allastate.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14 and 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name and a reminder. On December 17, 2010, GoDaddy.com, Inc. 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 20, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 20, 2010.
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 the Respondent of the Complaint, and the proceedings commenced on December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 27, 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.
4. Factual Background
The facts relevant to the findings and decision in this case are that:
1. The Complainant is a very large United States insurance company which has done business under the name and trademark ALLSTATE since 1931.
2. The disputed domain name was registered on July 23, 2004.
3. At the time the Complaint was filed, an active website corresponding with the disputed domain name carried links to third party insurance providers who compete in business with the Complainant.
4. The Respondent did not reply to pre-Complaint correspondence from the Complainant.
5. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
5. Parties’ Contentions
The Complainant asserts trademark rights in ALLSTATE and states that the disputed domain name is confusingly similar to its trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent is a typosquatter which registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the lack of a Response, the Panel moves to paragraph 4(a) of the Policy which requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
That said, the Panel finds that this is a clear case of domain name abuse as shown herein.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the disputed domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. The Complainant has trademark rights in ALLSTATE acquired through registration1. In addition, for the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trademark acquired through use and reputation2.
The remaining question is whether the disputed domain name <allastate.com> is confusingly similar to the Complainant’s trademark. For the purposes of testing confusing similarity, the generic top-level domain, “.com,” can be ignored3.
The disputed domain name differs from the Complainant’s trademark by the simple addition of an added letter “a”. The Complainant alleges that the Respondent is a typosquatter who has deliberately taken advantage of the fact that “allastate” is a common misspelling of the Complainant’s trademark. Had the Complainant provided evidence that such misspelling was commonplace, then Panel might have readily accepted that the disputed domain name and the trademark were confusingly similar.
Disregarding bald assertions of typosquatting and putting to one side for the purposes of paragraph 4(a)(i) the Complainant’s persistent reference to the repute of the trademark, the Panel must assess whether the terms “allstate” and “allastate” are, in the abstract, confusingly similar. Both terms commence with the letter sequence “all” and are similar in their overall visual resemblance. The word “state” is clearly recognizable in both. The trademark readily reads as a contraction of the words “all state”. The inclusion of the letter “a” in the domain name does not produce a new or different English language word from those recognizable in the trademark. In short, not only do the compared terms differ only by one letter, but the net impression of the terms is the same.
The Panel finds the disputed domain name confusingly similar to the Complainant’s trademark and so finds that the Complainant has satisfied the first limb of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests4.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trademark rights in the domain name, registered or not.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Counter indications arise from the evidence provided by the Complainant of a website corresponding with the disputed domain name which carries links to general insurance services and to insurance providers who compete with the Complainant.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“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 the 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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant submits that the Respondent’s conduct falls under paragraph 4(b)(iv).
The Panel is in agreement with the Complainant. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trademark. The Panel finds that the likelihood of confusion as to source is therefore highly likely.
Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. What is required is a finding that it is more likely than not such an intention existed; absolute proof is not required and the Panel is entitled to make reasonable inferences unless the evidence is clearly contradictory5. Given the immensity of the Complainant’s business, the minor spelling variation between the disputed domain name and the trademark, the failure to reply to either the pre-Complaint demand letter or the Complaint itself, the registration of the disputed domain name through a proxy service provider, and the content of the website corresponding with the domain name, the Panel finds that it is more likely than not on the evidence that the Respondent knew of and targeted the Complainant’s trademark and registered the disputed domain name with the intention of gaining commercially from pay-per-click revenue or otherwise.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
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 <allastate.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: February 7, 2011
1 The Complainant owns, inter alia, United States Federal Trademark Registration 0717683 for ALLSTATE filed on June 27, 1961. See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 The Complainant’s 2009 revenue was USD 32 billion. See also Allstate Insurance Company v. Domain Supermarket, WIPO Case D2009-1175, holding the ALLSTATE trademark to be well-known.
3 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). In any case, the Complainant also holds United States Federal Trademark Registration 3164784 for ALLSTATE.COM filed October 31, 2006.
4 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
5 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (In the absence of a response, it is appropriate to accept as true all allegations of the complaint.).