WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Yorkshire Enterprises Limited/Whois Privacy Services Pty Ltd.
Case No. D2011-0354
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 Yorkshire Enterprises Limited of St Johns, Antigua and Barbuda;
Whois Privacy Services Pty Ltd. of Australia.
2. The Domain Name and Registrar
The disputed domain name <encompassinusrance.com> (“the Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2011. On February 23, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On February 24, 2011, Fabulous.com. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 the Respondent of the Complaint, and the proceedings commenced on February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2011.
The Center appointed Jon Lang as the sole panelist in this matter on March 30, 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. Over the past decade, Encompass Insurance companies have established themselves as prominent entities.
The Complainant adopted the ENCOMPASS trademark in approximately September 2000 and has continuously used this trademark since that time to identify its insurance-related products and services.
The Complainant is the owner of numerous United States trademark registrations that incorporate the ENCOMPASS trademark. For instance, the Complainant obtained United States registration (U.S. Reg. No. 2837616) for the word and design mark ENCOMPASS INSURANCE for “insurance underwriting services in the fields of liability and property insurance” on May 4, 2004; United States registration (U.S. Reg. No. 3168764) for the word mark ENCOMPASS for “insurance underwriting in the field of liability and property insurance” on November 7, 2006; and United States registration (U.S. Reg. No. 3402552) for the word and design mark ENCOMPASS EDGE for “property and casualty insurance underwriting services provided to independent insurance agents in the nature of evaluating and assigning risk levels in connection with the issuance of policies” on March 25, 2008.
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 Domain Name <encompassinusrance.com> was registered on May 19, 2008, over eight years after the Complainant adopted the ENCOMPASS/ENCOMPASS INSURANCE trademark.
The Complainant has not authorised the Respondent to use the ENCOMPASS/ENCOMPASS INSURANCE trademarks in the Domain Name.
5. Parties’ Contentions
The Domain Name incorporates a common and predictable misspelling of the Complainant’s ENCOMPASS INSURANCE trademark in that it transposes the letters “u” and “s” in the word “insurance”, changing the Complainant’s ENCOMPASS INSURANCE trademark to “encompass inusrance”.
At the time the complaint was first raised by the Complainant, the Domain Name directed consumers to a website that featured a variety of advertising links in the field of insurance such as “Car Insurance”, “Auto Insurance”, “Auto Insurance Company”, “Car Insurance Quote”, “Home Insurance”, “Auto Insurance Quotes”, among others. If, for instance, a visitor clicked on the link for “Car Insurance”, they were directed to another webpage featuring pay-per-click advertising for some of the Complainant’s competitors in the insurance market, e.g. Liberty Mutual and MetLife.
On December 10, 2010, the Complainant wrote to the Respondent advising that it was violating the Complainant’s rights. The Respondent did not respond.
Since learning of the Respondent’s true identity, the Complainant has become aware that the Respondent has been involved in numerous other UDRP proceedings where it has been found to have acted in bad faith e.g. BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; Community America Credit Union v. Yorkshire Enterprises Limited / Whois Privacy Services Pty Ltd, WIPO Case No. D2010-1620; Reebok International Limited v. Yorkshire Enterprises Limited, WIPO Case No. D2008-1839; Intelius Inc. v Yorkshire Enterprises Limited, NAF Claim No. FA1336980; and American Airlines v. Yorkshire Enterprises Limited, NAF Claim No. FA1302679.
Moreover, the Respondent has registered a domain name that incorporates another of the Complainant’s trademarks, the ALLSTATE mark in respect of which the Complainant has a pending proceeding against the Respondent.
The Domain Name is confusingly similar to the Complainant’s ENCOMPASS/ENCOMPASS INSURANCE trademark
The Complainant has rights in the trademarks ENCOMPASS/ENCOMPASS INSURANCE. In light of the Complainant’s longstanding use and promotion of its ENCOMPASS/ENCOMPASS INSURANCE trademarks over the past decade, they are widely recognisable. It is well established that use of a 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 authorised or is controlling the disputed website. The content of the webpage associated with the Domain Name adds to the likelihood of confusion and features pay-per-click advertisements for the Complainant’s direct competitors in the insurance market.
The Respondent Has No Rights or Legitimate Interest in the Domain Name
The Respondent is not commonly known by the ENCOMPASS trademark or by any of the terms that comprise the Domain Name. Even if it was, the name is confusingly similar to the well-known ENCOMPASS/ENCOMPASS INSURANCE trademarks when used in connection with insurance-related services and its adoption came long after the Complainant’s adoption of those marks.
The Respondent’s use of a privacy service provides evidence that the Respondent is attempting to hide its activities from scrutiny. This, in combination with the use made of the Domain Name by the Respondent, creates a negative inference.
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 Domain Name. The use of a confusingly similar domain name that diverts Internet users to a website offering products or services in competition with a complainant does not constitute a bona fide offering of goods or services. The Respondent is also not making a bona fide offering of goods and services or legitimate noncommercial or fair use.
The Domain Name was Registered and is being Used in Bad Faith
The Respondent’s use of the entirety of the Complainant’s trademarks ENCOMPASS/ENCOMPASS INSURANCE (subject only to transposition of the letters “u” and “s” in the word “insurance”) in the Domain Name causes a likelihood of confusion. The Respondent stands to benefit financially from this confusion by Internet users being directed to a website that features advertising links for other insurance companies.
Bad faith exists where a respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, and this is the case here.
Bad faith can be established where the respondent is using a well-known trademark and there is no legitimate use. Moreover, it has been held that the “practice of typosquatting, of itself, is evidence of bad faith registration of a domain name”. ESPN, Inc. v. XC2, WIPO Case No. D2005-0444. The term “inusrance” is not a common or understandable English word. It is merely a misspelling of the word “insurance” contained in the Complainant’s ENCOMPASS INSURANCE trademark.
The Respondent is using the Domain Name for commercial gain by directing Internet users to a website that features advertising links to the Complainant’s direct competitors. It is likely that the Respondent is generating revenue from this practice. The exploitation of the reputation of trademarks and profiting from the diversion of Internet users is an indication of bad faith.
Furthermore, the Respondent is responsible for the content of the website located at the Domain Name.
Finally, and as earlier mentioned, the Respondent has been involved in a number of other UDRP proceedings and in those cases, the relevant domain names have been transferred to the Complainant. In these cases, the panels found that the domain names had been registered in bad faith. In addition, again as earlier mentioned, the Complainant itself has a prior pending proceeding under the Policy against the Respondent based on registration and use of the domain name <allstatew.com>, which incorporates the Complainant’s ALLSTATE trademark.1 The Respondent has, therefore, engaged in a pattern of bad faith registration and use under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Domain Name is almost visually identical to the trademark ENCOMPASS INSURANCE, the only variance being the transposition of the ”s” and ”u”. The Domain Name is also very similar to the trademark ENCOMPASS, it encapsulating the mark in its entirety. The mark is also very much the dominant element of the Domain Name. The Complainant clearly has rights in the ENCOMPASS INSURANCE and ENCOMPASS trademarks. In the case of the ENCOMPASS INSURANCE trademark, the Respondent appears to have registered a common misspelling or typographical error, a practice known as “typosquatting”. In the case of both trademarks, given the similarity with the Domain Name, there is clearly a possibility, if not likelihood, that Internet users will think that the owner of the Domain Name is in fact the owner of the Complainant’s marks to which it is similar, or that there is some form of association between the Respondent and the Complainant. The Domain Name is similar to the marks in which the Complainant clearly has rights, and the Panel is satisfied that it is confusingly similar for the purposes of the Policy. Thus, this element of paragraph 4 of the Policy has been established.
B. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, there is no evidence to suggest that the Respondent is known by the Domain Name, nor of any legitimate noncommercial or fair use. In the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the website to which the Domain Name resolves, given the links to commercial third-party (competitor) sites that one finds there.
A respondent can also show, so as to establish rights or legitimate interests, that it is using a domain name in connection with a bona fide offering of goods or services. But promoting competing goods or services using a domain name confusingly similar to a complainant’s mark, is not a bona fide offering. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said: “To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001)”.
The Respondent in this case is not licensed in any way by the Complainant. There is no affiliation at all, and the Complainant has satisfied a prima facie case that the Respondent lacks rights or legitimate interests in
the Domain Name. The Respondent therefore carries the burden of demonstrating such rights or legitimate interests, but has taken no part in these proceedings and has failed to do so. The Complainant has therefore also satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website 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 the website or of a product or service on the website.
In Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 it was said: “Using a domain name ‘to redirect Internet users to websites that host links to external websites, including websites of [c]omplainant’s competitors,’ is evidence of bad faith. Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031 (March 5, 2003) ”. This appears to be the position here.
In Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said: “It has been held that actual or constructive knowledge of the [c]omplainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such right. Previous cases have also established that the deliberate choice and registration of a famous mark as [the] domain names suggests, in the absence of an explanation from the [r]espondent, that the registrations were made in bad faith”.
It seems likely that the Respondent knew of the Complainant’s rights in the marks ENCOMPASS/ENCOMPASS INSURANCE, or at least that someone other than the Respondent was very likely to have rights in those marks, prior to registration of the Domain Name. Indeed it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of the Domain Name. It is also difficult to arrive at a conclusion other than that the Domain Name has been registered to take unfair advantage of the Complainant’s rights.
In all the circumstances, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, which contains links to sites of competitors, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of goods or services available via that website. Accordingly, the Panel finds, for the purposes of the Policy, that the 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 <encompassinusrance.com> be transferred to the Complainant.
Dated: April 13, 2011
1 Which the Panel notes, appears (since the Complaint was filed) to have been decided in the Complainant’s favor, and against the Respondent.