WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Whois Privacy Services Pty Ltd / Abadaba S.A., Domain Admin
Case No. D2010-2228
1. The Parties
The 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.
The Respondent is Whois Privacy Services Pty Ltd / Abadaba S.A., Domain Admin of Fortitude Valley, Queensland, Australia and Panama, Panama, respectively.
2. The Domain Name and Registrar
The disputed domain name <allstateinsurancecompany.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2010. On December 20, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On December 21, 2010, Fabulous.com. 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 January 6, 2011, 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 January 6, 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 January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2010.
The Center appointed Adam Samuel as the sole panelist in this matter on February 3, 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 Complainant is a well-known personal lines insurer based in the United States of America. Complainant owns the United States (“U.S.”) Trademark No. 0761091, registered on December 3, 1963. The disputed domain name was registered on July 10, 2004.
5. Parties’ Contentions
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
The Complainant first received a U.S. Trademark Registration for ALLSTATE in 1961, approximately 43 years before the registration of the disputed domain name. In 1963, the Complainant obtained U.S. Trademark Registration No. 0761091 for the word mark ALLSTATE. The Complainant has registered over a thousand ALLSTATE-based domain names worldwide.
The disputed domain name wholly incorporates the ALLSTATE trademark and differs from only by the addition of the words “insurance company” and “.com”. The first addition emphasizes the Respondent’s efforts to capitalize on the Complaint’s well-known trademark and well-established trade name in the insurance industry.
The Respondent operates a pay-per-click advertising site at the disputed domain name. The website to which it resolves contains a variety of advertising links concerning the field of insurance, some of which ultimately lead the customer to products of the Complainant’s competitors.
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. Use of a famous or well-known mark in a domain name is likely to cause confusion, mistake or deception since users are likely to believe that the trademark holder authorized or is controlling the disputed website.
It does not appear that the Respondent is commonly known by the ALLSTATE mark or any of the terms that comprise the domain name. The use of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use. The Respondent is not making a noncommercial use of the disputed domain name.
The adoption of a name confusingly similar to the Complainant’s trademark was done with knowledge of the Complainant and its right and with an intention of trading off the Complainant’s goodwill and is likely to cause consumer confusion from the Respondent stands to benefit. It is bad faith to use a well-known trademark without a legitimate use of the mark in the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has owned the well-known U.S. Trademark ALLSTATE since the early 1960s. The disputed domain name consists of this, the generic words “insurance company” and the standard suffix “.com”. The addition of generic words particularly to well-known trademarks does not affect the confusing similarity between the disputed domain name and the Complainant’s trademark. This is emphasized in this case by the fact that the generic words describe the business of the Complainant. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not called “Allstate” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s ALLSTATE trademark is well-known and the Respondent must have known about it before the disputed domain name was registered. This is apparent from the addition of the words “insurance company” to the Complainant’s trademark in the disputed domain name.
The trademark was registered over forty years before the disputed domain name was registered. In this Panel’s view, it is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain name other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s trademark or business.
The Respondent’s motive in registering and using the sites seems, to the Panel, to be either simply to disrupt the Complainant’s relationship with its customers or potential customers by tarnishing its trademark, attempt to attract Internet users for potential gain or persuade the Complainants to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.
In the circumstances, it is unnecessary to deal with the Complainant’s other arguments in this case. The Panel concludes that the disputed domain name was registered and is being used 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 <allstateinsurancecompany.com> be transferred to the Complainant.
Dated: February 4, 2011