WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Insurance Company v. Dyk Dylina/Privacy--Protect.org
Case No. D2011-0304
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 Dyk Dylina of Hailuoto, Finland; Privacy--Protect.org of Shanghai, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain names <encompassinsuance.com> and <encompassinsureance.com> are registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 15, 2011, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com a request for registrar verification in connection with the disputed domain names. On February 18, 2011, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 18, 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 February 21, 2011.
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 February 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2011.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 22, 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
Encompass Insurance is the marketing name for certain affiliated companies of the Complainant that focus exclusively on the sale of personal property and casualty insurance products by independent agents. The following affiliated companies of the Complainant operate under the ENCOMPASS trademark: Encompass Insurance Company, Encompass Floridian Indemnity Company, Encompass Floridian Insurance Company, Encompass Home and Auto Insurance Company, Encompass Insurance Company of America, Encompass Indemnity Company, Encompass Insurance Company of Massachusetts, Encompass Independent Insurance Company, Encompass Insurance Company of New Jersey, Encompass Property and Casualty Insurance Company of New Jersey and Encompass Property and Casualty Company. Encompass Insurance companies sell insurance products through over 3,300 insurance agents throughout the United States.
The Complainant adopted the ENCOMPASS trademark in approximately September 2000 and has continuously used this trademark since that time, and uses this trademark to identify its insurance-related products and services.
The Complainant is the owner of numerous federal trademark registrations that incorporate the ENCOMPASS trademark, the earliest being United States registration No. 2837616 for the word and design mark ENCOMPASS INSURANCE for “insurance underwriting services in the fields of liability and property insurance” , dated May 4, 2004, claiming use in commerce from September 29, 2000.
The Complainant registered the domain name <encompassinsurance.com> on August 21, 2000, and offers insurance-related goods and services through this website under the ENCOMPASS trademark.
The Complainant has devoted substantial resources promoting its services in the United States under the ENCOMPASS trademark since 2000. As a result of the Complainant’s promotional efforts and the acceptance of its services promoted in connection with the ENCOMPASS trademark, the ENCOMPASS trademark has become a valuable asset of the Complainant.
The disputed domain name <encompassinsuance.com> was registered on December 6, 2005, and the disputed domain name <encompassinsureance.com> was registered on November 17, 2006.
5. Parties’ Contentions
The Complainant contends that, in light of its longstanding use and promotion of its ENCOMPASS trademark over the past decade, this trademark is widely recognizable.
The Complainant alleges “typosquatting”, namely that the disputed domain names “incorporate the entirety of Complainant’s ENCOMPASS trademark and common and predictable misspellings of the ENCOMPASS INSURANCE trademark”, and are, accordingly, confusingly similar to trademarks in which the Complainant has rights.
The Complainant states that it has not authorized the Respondent to use the trademark ENCOMPASS in a domain name, and further alleges that “Respondent is not commonly known by the ENCOMPASS trademark or by any of the terms that comprise the Domain Names […] Even assuming arguendo that Respondent is known by the name “encompassinsureance” or “encompassinsuance,” these names are confusingly similar to the well-known ENCOMPASS/ENCOMPASSINSURANCE trademark when used in connection with insurance-related services (as discussed above) and their adoption came long after Complainant’s adoption of its ENCOMPASS trademark. Thus, any adoption of the confusingly similar “encompassinsureance” and “encompassinsuance.com” names was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant’s goodwill. Thus, Respondent cannot establish legitimate rights or interests in the Domain Name. See Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (February 28, 2001)”.
The Complainant drew the Panel’s attention to the decision in The Saul Zaentz Company d/b/a Tolken Enterprises v. Eurobox Ltd./“The Saul Zaentz Company,” WIPO Case No. D2008-0156, in which the panel in that case determined that, based on the circumstances, the respondent’s use of a proxy service created a negative inference about its objectives.
The Complainant contends that the disputed domain names were registered in bad faith and have been used in bad faith. It draws the Panel’s attention to the decision in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. This was a three-member panel case, with a unanimous decision, which included the conclusion: “Typosquatting is inherently parasitic and of itself evidence of bad faith.” The Complainant provided evidence to the Panel that the disputed domain names direct consumers to websites that feature a variety of advertising links concerning the field of insurance, including links to the Complainant’s competitors in the insurance market including Progressive, State Farm and Liberty Mutual.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The name “Hailuoto”, and the factual circumstances in this case, jogged a memory with this Panelist. Hailuoto is a sparcely-populated island (population circa 1000) in the Gulf of Bothnia, over 500 kilometers northwest of Helsinki, reachable by ferry in summer and by ice road in winter, yet it appears frequently as the address of respondents in UDRP proceedings, in conjunction with “Privacy--Protect.org” as a respondent. In a series of cases, including Hertz System, Inc. v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0636; U. S. Natural Resources, Inc. v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0720; LEGO Juris A/S v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0840; L’Oréal v. Rampe Purda/Privacy --Protect.org, WIPO Case No. D2010-0870 and The RueDuCommerce Company v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-1632, the name “Rampe Purda” was conjoined with that of “Privacy--Protect.org” as respondent. A Search of the Finnish Population Register disclosed no-one by the name “Rampe Purda” living in Finland. The street address given for Rampe Purda was Luovontie 176.
These “Rampe Purda” cases demonstrated a pattern of abusive behaviour by the respondent of registering domain names confusingly similar to well-known trademarks, with no rights or legitimate interests thereto, and using the resulting domain names in connection with “pay per click” websites to possibly divert users to competitors of the trademark owners and to create a revenue stream for the respondent.
The same pattern of abusive behavior also appears in the present case.
In the present case, however, the name conjoined with that of “Privacy--Protect.org” as Respondent is Dyk Dylina, apparently living in the same street in Hailuoto as Rampe Purda, namely Luovontie 11. Like Rampe Purda, the Finnish Population Register has no record of a Dyk Dylina living in Finland. In these circumstances, the Panel in this case agrees with the panel in The Saul Zaentz Company d/b/a Tolken Enterprises v. Eurobox Ltd./“The Saul Zaentz Company, supra, that the Respondent’s use of a proxy service creates a negative inference about its objectives. As, however, this appears to be the first time that the name Dyk Dylina appears in UDRP proceedings (as per the WIPO case file search tool), the Panel in this case will merely draw a negative inference, and not apply the concept of a pattern of abusive behaviour in reaching a decision.
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the domain name of the respondent be transferred to the complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trade mark or service mark (“mark”) in which the complainant has rights; and
(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.
A. Identical or Confusingly Similar
There is no doubt that the Complainant enjoyed registered trademark and common law rights in its trademarks ENCOMPASS and ENCOMPASS INSURANCE at the dates of registration of the disputed domain names in this case. It is well established in proceedings under the Policy that mere misspellings are not sufficient to avoid a finding of confusing similarity between a trademark and a domain name. The Panel finds that the misspellings in the disputed domain names are examples of “typosquatting”, and finds that the Complainant has succeeded in satisfying the test of paragraph 4(a)(i).
B. Rights or Legitimate Interest
It is well established in proceedings under the Policy that it is sufficient that a Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the domain name, in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the domain name, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the present case, the Respondent failed to take part in these proceedings, and the Panel finds that the Complainant has presented a prima facie case that the Respondent lacks either rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has satisfied the test of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the panel in the National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,case, supra, that typosquatting is inherently parasitic and of itself evidence of bad faith, and finds that the Complainant has satisfied the requirement of paragraph 4(a)(iii) that the disputed domain names were registered in bad faith.
The Panel also finds that the evidence presented to him of the use of the disputed domain names in directing users to links to competing services to those of the Complainant, is both liable to mislead users and to be to the possible detriment of the Complainant. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(iii) that the disputed domain names have been registered and 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 names <encompassinsuance.com> and <encompassinsureance.com> be transferred to the Complainant.
George R. F. Souter
Dated: April 5, 2011