WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Michael Garcia
Case No. D2011-0189
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 Michael Garcia of Miramar, Florida, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Dame <allstateglassclaims.com> is registered with GoDaddy.com, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 1, 2011, GoDaddy.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 February 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for a response was March 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 3, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 8, 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 for its ALLSTATE trademark. Complainant obtained its first United States 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 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 registration (U.S. Reg. No. 3164784) for ALLSTATE.COM for a variety of services, including insurance services.
In addition to the United States trademark registrations mentioned above, Complainant owns over thirty (30) additional United States registrations for the ALLSTATE trademark for a wide range of goods and services including investment advisory services, banking, mortgage lending, and financial services.
The Disputed Domain Name was registered on February 21, 2008.
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 further 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 United States registrations for the ALLSTATE mark for a wide range of goods and services. Since 2006, Complainant has also registered ALLSTATE.COM for, among other things, insurance services. In addition, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions around the world.
Complainant further contends that it has devoted hundreds of millions of dollars to advertising and promoting 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 further 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 further contends that the Disputed Domain Name is confusingly similar to the ALLSTATE and ALLSTATE.COM trademarks (“ALLSTATE Marks”). The Disputed Domain Name incorporates entirely the ALLSTATE Marks and differs only by the addition of the descriptive phrase “glass claims,” which is closely associated with Complainant’s business. The addition of these words emphasizes Respondent’s attempts to associate itself with Complainant’s well-known ALLSTATE Marks.
Complainant further contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name. 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 Name. Respondent operates a pay-per-click advertising site at the Disputed Domain Name which hosts 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 “Allstateglassclaims” phrase was done with knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill.
Complainant further contends that Respondent registered the Disputed Domain Name 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 Name.
Complainant further contends that Respondent uses the Disputed Domain Name in bad faith to 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 Name and thereby benefits from the likely confusion between Complainant’s ALLSTATE Marks and the Disputed Domain Name.
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 a 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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the 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.
The Respondent provided no Response, and the deadline for so doing expired on March 1, 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 evidence to establish that it is the owner of the ALLSTATE Marks.
Because Complainant does not have a trademark registration for the phrase “allstateglassclaims.com,” the issue is not whether the Disputed Domain Name and Complainant’s ALLSTATE Marks are identical, but whether they are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s ALLSTATE Marks; (2) the suffix “glassclaims”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “allstateglassclaims”), as it is well-established that the top-level domain name (i.e., “.com”) may 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 ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the phrase “glassclaims” as a suffix to the ALLSTATE mark does not mitigate the confusing similarity between the Disputed Domain Name and Complainant’s Marks. The addition of these terms merely describes one aspect of Complainant’s business and does nothing to dispel the confusing similarity between the Disputed Domain Name and Complainant’s ALLSTATE Marks. Indeed, because the phrase “glassclaims” is descriptive of the Complainant’s insurance business, the suffix strengthens rather than weakens 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 AAA, which offered insurance services); EarthLink, Inc. v. Keith Blatz, WIPO Case No. D2007-1288 (finding <earthlinkwifi.com> and <earthlinkwifi.net> confusingly similar to EARTHLINK, which offered Internet services).
For the foregoing reasons, the Panel finds that the Disputed Domain Name is 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), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, 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 Name, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Name.
Complainant has alleged, and Respondent has not denied, that Respondent is not commonly known by the Disputed Domain Name.
In addition, Complainant has supported its contention that Respondent is using the Disputed Domain Name with an intent to trade off Complainant’s goodwill. Specifically, Complainant has provided evidence that Respondent is using the Disputed Domain Name to redirect Internet users to third-party websites in direct 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, supports a finding of no rights or legitimate interests. Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 (collecting cases).
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 Name. 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 a 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 website.
Registered In Bad Faith
The Panel finds that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Name 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.”); 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 impossible, that, when Respondent registered the Domain Name, it was unaware that it was infringing on Complainant's trademark rights.”).
Based upon the foregoing evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Used In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. It is well established that using a domain name which 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 Name to promote competing services based upon the confusing similarity between Complainant’s ALLSTATE Marks and the Disputed Domain Name <allstateglassclaims.com> . 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).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name 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 Disputed Domain Name <allstateglassclaims.com> be transferred to Complainant.
Michael A. Albert
Dated: March 22, 2011