WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Thad Shirley
Case No. D2011-0031
1. The Parties
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 Thad Shirley of Henderson, Nevada, United States of America.
2. The Domain Names and Registrar
The disputed domain names <allstateautoandhome.com> and ><allstatehomeandauto.com> (“Disputed Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 7, 2011, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the disputed domain names. On January 7, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Names.
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 the Respondent of the Complaint, and the proceedings commenced on January 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 1, 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
Complainant owns numerous trademark registrations in the United States (“U.S.”) for its ALLSTATE trademark. Complainant obtained its first United States trademark registration (U.S. Reg. No. 0717683) for the word mark ALLSTATE for “underwriting of the following types of insurance: life, annuity, accident, and health” on June 27, 1961. On December 3, 1963, it obtained a United States trademark registration (U.S. Reg. No. 0761091) for the word mark ALLSTATE for the “business of making, writing, and underwriting of insurance.” On December 5, 1967, Complainant obtained a United States registration (U.S. Reg. No. 0840187) for the design mark ALLSTATE for “insurance underwriting services.”
On October 31, 2006, Complainant obtained a United States trademark registration (U.S. Reg. No. 3164784) for ALLSTATE.COM for a variety of services, including insurance services.
In addition to the U.S. trademark registrations mentioned above, Complainant owns over thirty (30) additional U.S. trademark registrations for the ALLSTATE trademark for a wide range of goods and services including financial and investment advisory services, banking and mortgage lending.
Respondent registered the Disputed Domain Names on August 5, 2010.
5. Parties’ Contentions
Complainant contends that it is the largest publicly held personal lines insurer in the United States. Since its founding in 1931, Complainant has become a well-established and well-known insurance company and provides insurance services all over the United States.
Complainant contends that it has continuously used the ALLSTATE trademark since its founding in 1931. Complainant first registered the ALLSTATE mark in the United States in 1961 for use in connection with underwriting insurance and has since registered over 30 additional U.S. registrations for the ALLSTATE mark for a wide range of goods and services. Since 2006, Complainant has also used its ALLSTATE.COM trademark for, among other things, insurance services. In addition, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions around the world.
Complainant contends that it has devoted hundreds of millions of dollars to advertise and promote its services in the United States under the ALLSTATE trademark. Complainant has generated billions of dollars in sales of products and/or services under the ALLSTATE trademark in the United States.
Complainant contends that it has been the subject of numerous articles in the media, including national and international print, radio and television. As part of its communications and marketing program, Complainant has registered over 1,000 ALLSTATE-based domain names worldwide. As a result of Complainant’s extensive promotional efforts and the wide acceptance of its services promoted in connection with the ALLSTATE trademark, the ALLSTATE trademark has become one of the most widely recognized brands among consumers.
Complainant contends that the Disputed Domain Names are confusingly similar to the ALLSTATE and ALLSTATE.COM trademarks (“ALLSTATE Marks”). The Disputed Domain Names wholly incorporate the ALLSTATE Marks and differ only by the addition of the descriptive words “auto and home.” The addition of these words emphasizes Respondent’s attempts to capitalize on Complainant’s well-known ALLSTATE trademark in relation to the insurance industry, and in particular in the automobile and home property insurance lines.
Complainant contends that Respondent lacks legitimate rights or interests in the Disputed Domain Names. Respondent is not commonly known by Complainant’s ALLSTATE Marks. Respondent is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Names. Respondent operates a pay-per-click advertising site at the Disputed Domain Names, which host websites featuring a variety of advertising links. Several of Respondent’s links take users to third-party websites where they can purchase insurance-related products and/or services from Complainant’s direct competitors. Thus, any adoption of the confusingly similar “Allstateautoandhome” or “Allstatehomeandauto” name was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill.
Complainant contends that Respondent registered the Disputed Domain Names in bad faith. Because of Complainant’s widespread use and promotion of its ALLSTATE Marks, Respondent knew or should have known about Complainant’s trademark rights before registering the Disputed Domain Names.
Complainant contends that Respondent uses the Disputed Domain Names in bad faith by 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 ALLSTATE Marks as to the source, sponsorship, affiliation or endorsement of its website. Respondent is likely generating click-through fees from the pay-per-click advertising on the Disputed Domain Names and thereby benefits from the likely confusion between Complainant’s ALLSTATE Marks and the Disputed Domain Names.
Complainant further contends that Respondent registered and used the Disputed Domain Names in bad faith because Respondent has previously registered domain names that include trademarks owned by third parties. In particular, Respondent has previously registered domain names that included the trademark of an insurance company with the addition of the descriptive words “auto” and “home.” For example, Respondent registered the domain names <statefarmautoandhome.com> and <statefarmhomeandauto.com>. On January 4, 2011, an administrative panel ordered that these domain names be transferred to the rightful trademark owner. See State Farm Mutual Automobile Insurance Company v. Thad Shirley, NAF Claim No. 1361424.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Respondent provided no Response, and the deadline for doing so expired on February 8, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that the Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the ALLSTATE Marks. However, Complainant does not have a trademark registration of the phrases “allstateautoandhome.com” or “allstatehomeandauto.com”. Because the Disputed Domain Names and Complainant’s ALLSTATE Marks are not identical, the issue is whether they are confusingly similar.
The Disputed Domain Names combine three elements: (1) Complainant’s ALLSTATE Marks; (2) the suffixes “home and auto” and “auto and home”; and (3) the suffix “.com.” The relevant comparison to be made is with the second portion of the domain name only (i.e., “allstateautoandhome” or “allstatehomeandauto”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to the ATT trademark); and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to the QUIXTAR trademark).
Moreover, the addition of the phrases “home and auto” or “auto and home” as suffixes to the ALLSTATE mark does not mitigate the confusing similarity between the Disputed Domain Names and Complainant’s Marks. The addition of these terms merely describes Complainant’s business and does nothing to dispel the confusing similarity between the Disputed Domain Names and Complainant’s ALLSTATE Marks. Indeed, because the words “home” and “auto” are associated with the Complainant and its business, the suffixes strengthen rather than weaken the confusing similarity. See e.g., The American Automobile Association Inc. v. InsuranceExpress.com Inc., Gene Graceffo, WIPO Case No. D2010-0196 (finding <aaaautoinsurance.com> confusingly similar to the complainant’s AAA trademark, where the complainant offered insurance services); and EarthLink, Inc. v. Keith Blatz, WIPO Case No. D2007-1288 (finding <earthlinkwifi.com> and <earthlinkwifi.net> confusingly similar to the complainant’s EARTHLINK marks, where the complainant offered Internet services).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s ALLSTATE Marks, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights in the ALLSTATE Marks, is not commonly known by the Disputed Domain Names, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Names.
As evidenced by Complainant’s numerous trademark registrations and billions of dollars in revenue over several decades of using the ALLSTATE Marks, Complainant has established rights in the ALLSTATE Marks. Moreover, Complainant has alleged, and Respondent has not denied, that the Respondent is not commonly known by the Disputed Domain Name.
In addition, Complainant has supported its contention that Respondent is using the Disputed Domain Names with an intent to trade off Complainant’s goodwill. Specifically, Complainant has provided evidence that Respondent is using the Disputed Domain Names to redirect Internet users to third-party websites in competition with Complainant. Prior panels have found that operating a link farm parking page using a mark in a domain name, and providing links to services competitive with the mark owner, does not establish rights or legitimate interests. Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Names. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s web site.
Registered In Bad Faith
The Panel finds that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Names given that Complainant has used the ALLSTATE Marks in connection with insurance services for about eighty years and is one of the largest and best-known providers of such services nationwide. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names [<proforcekarate.com> and <proforcemartialarts.com>] without any knowledge of Complainant and its PROFORCE Trademarks”); and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (“[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.”).
Based upon the foregoing circumstantial evidence, the Panel finds that Respondent registered the Disputed Domain Names in bad faith.
Used In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Names in bad faith. It is well established that using a domain name that incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.
Here, Respondent appears to have intended to use the Disputed Domain Names to promote competing services based upon the confusing similarity between Complainant’s ALLSTATE Marks and Respondent’s <allstateautoandhome.com> and <allstatehomeandauto.com> websites. See The Vanguard Group, Inc v. Venta, WIPO Case No. D2001-1335 (finding bad faith where <vanguardfunds.com> redirected to website offering competing financial services).
In addition, Respondent’s bad faith registration and use is further evidenced by Respondent’s prior conduct. On similar facts, a UDRP panel recently ordered Respondent to transfer domain names related to the insurance industry which were registered and used in bad faith: State Farm Mutual Automobile Insurance Company v. Thad Shirley, NAF Claim No. 1361424 (ordering transfer of <statefarmautoandhome.com> and <statefarmhomeandauto.com>).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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 names <allstateautoandhome.com> and ><allstatehomeandauto.com> be transferred to Complainant.
Michael A. Albert
Dated: March 14, 2011