WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Domain Admin Taranga Services Pty Ltd
Case No. D2011-0177
1. The Parties
Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, P.C., United States of America.
Respondent is Domain Admin Taranga Services Pty Ltd, of Wellington, New Zealand.
2. The Domain Names And Registrar
The disputed domain names are <aallstate.com>, <allsstate.com>, <allstae.com>, <allstatehomeownerinsurance.com> and <allstaterentersinsurance.com>, which are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011, covering the domain names <aallstate.com> and <allsstate.com>. A second Complaint was filed with the Center on January 31, 2011, covering the domain name <allstaterentersinsurance.com>. A third Complaint was filed with the Center on January 31, 2011, regarding the domain name <allstatehomeownerinsurance.com>. A fourth Complaint was filed with the Center on February 1, 2011, regarding the domain name <allstae.com>. On February 1, 2, and 3, 2011, the Center transmitted by email to Moniker Online Services, LLC the corresponding requests for registrar verification in connection with the disputed domain names. On February 2, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for each of the disputed domain names, which differed from the named Respondent and contact information in the four Complaints. The Center sent an email communication to Complainant on February 3, 2011, February 7, 2011, and February 14, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On February 10, 2011, Complainant requested the consolidation of the first, third and fourth Complaints, and filed an amended Complaint. On February 17, 2011, Complainant requested the consolidation of the second Complaint and again filed an amended and consolidated Complaint.
The Center verified that the Complaint, as consolidated and amended, 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 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on March 28, 2011. This Panel finds that it was properly constituted. This 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 is an insurance company established in Illinois, United States of America. Complainant has provided insurance services all over the United States of America since its founding in 1931.
Complainant has rights over the ALLSTATE trademark, for which it holds several registrations, including: ALLSTATE, registration No. 717,683 with the United States Patent and Trademark Office (USPTO), registered in 1961, in class 102; ALLSTATE, registration No. 761,091 with the USPTO, registered in 1963, in class 102; and ALLSTATE.COM, registration No. 3,164,784 with the USPTO, registered in 2006, international class 36.
The disputed domain names were registered on the following dates: <allsstate.com> on November 18, 2005; <aallstate.com> on November 9, 2004; <allstae.com> on June 13, 2004; <allstatehomeownerinsurance.com> on February 16, 2006; and <allstaterentersinsurance.com> on February 16, 2006.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant is the largest publicly held personal lines insurer in the United States of America. 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 of America.
Complainant has continuously used the ALLSTATE trademark since its founding in 1931. ALLSTATE is the trademark used to identify products, services, activities and events related to Complainant. Complainant received its first federal trademark registration for ALLSTATE in 1961, at least forty four years prior to Respondent’s registration of the disputed domain names.
Complainant owns numerous trademark registrations in the United States of America for its ALLSTATE trademark, and in 2006 obtained the trademark registration in the United States of America for its ALLSTATE.COM trademark. Further, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademarks in jurisdictions around the world.
Complainant has devoted hundreds of millions of dollars to advertising and promoting its services in the United States of America under the ALLSTATE and ALLSTATE.COM trademarks. In addition to its own advertising and promotional efforts, Complainant and its services have been the subject of numerous articles in the media, including national and international print, radio and television. As a result of Complainant’s extensive promotional efforts, and the wide acceptance of its services promoted in connection with the ALLSTATE and ALLSTATE.COM trademarks, the trademarks have become one of the most widely-recognized brands among consumers.
Complainant has registered over one thousand ALLSTATE-based domain names worldwide, including among others <allstate.com> registered in May 1995, <allstate.org> registered in July 1998 and <allstate.net> registered in July 1997.
On December 10, 2010, Complainant advised the then registrant of the disputed domain names that it was violating Complainant’s rights by using the disputed domain names1. The communications were sent by email to the address provided on the registration, without Complainant having received any response.
Since becoming aware of Respondent’s true identity as part of this proceeding, Complainant has learned that Respondent appears to have a history of registering domain names that are confusingly similar to the marks of others2. Respondent has been the subject of numerous prior proceedings pursuant the Policy. In each prior proceeding, Respondent was found to have acted in bath faith and the subject domain name was ordered to be transferred to the complainant (e.g., WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; American Apparel, Inc. v. Moniker Privacy Services/ Domain Admin, Taranga Services Pty Ltd, WIPO Case No. D2010-0461; Eidos Interactive Limited v. Moniker Privacy Services/ Taranga Services Pty Ltd, WIPO Case No. D 2009-0124; American Airlines, Inc. v. Domain Admin a/k/a Taranga Services Pty Ltd., NAF Claim No. FA1306277; Frederick's of Hollywood Group Inc. v. Domain Admin c/o Taranga Services Pty Ltd., NAF Claim No.: FA1301302; Capital One Fin. Co. v. Domain Admin c/o Taranga Servs. Pty Ltd., NAF Claim No. FA1285637.
The disputed domain names are confusingly similar to the trademarks in which Complainant has rights.
Respondent’s <allsstate.com>, <aallstate.com> and <allstae.com> disputed domain names wholly incorporate common typographical errors of Complainant’s well-known ALLSTATE and ALLSTATE.COM trademarks.
The disputed domain name <allsstate.com> differs from Complainant’s ALLSTATE.COM trademark only by the addition of a single letter- an additional “s”. Notably, the additional letter simply repeats the letter that precedes it. The disputed domain name <aallstate.com> differs from Complainant’s ALLSTATE.COM trademark only by the addition of a single letter- an additional “a”. Again the additional letter simply repeats the letter that precedes it. Therefore, such additions increases the likelihood that some percentage of Internet users who are attempting to directly navigate to the website located at Complainant’s <allstate.com> domain name will mistype the ALLSTATE trademark as “allsstate” or “aallstate”. The disputed domain name <allstae.com> differs from Complainant’s ALLSTATE trademark only by the omission of one letter - the second “t.”
Typosquatting takes “unfair advantage” of Complainant’s well-known ALLSTATE and ALLSTATE.COM trademarks and associated business reputation. Three of the disputed domain names feature a common and predictable misspelling of the ALLSTATE and ALLSTATE.COM trademarks, changing “allstate” to”aallstate”, “allsstate” or “allstae” respectively.
The disputed domain names <allstatehomeownerinsurance.com> and <allstaterentersinsurance.com> wholly incorporate the ALLSTATE and ALLSTATE.COM trademarks. The disputed domain name <allstatehomeownerinsurance.com> differs from Complainant’s trademarks only by the addition of the descriptive words “homeowner” and “insurance”, words that are closely associated with Complainant’s business and serve to further bolster Respondent’s efforts to associate itself with Complainant. Similarly, the disputed domain name <allstaterenterinsurance.com> differs from Complainant’s trademarks only by the addition of the descriptive words “renters” and “insurance”. These terms merely describe Complainant’s long-standing insurance business and do nothing to dispel the confusing similarity between the disputed domain names and Complainant’s trademarks. As stated above, Complainant offers property insurance in connection with the ALLSTATE and ALLSTATE.COM trademarks.
In light of Complainant’s widespread use and promotion of its ALLSTATE and ALLSTATE.COM trademarks over the past several decades, this trademark is one of the most well-known and recognizable marks in the United States of America. Prior UDRP panels have determined that the ALLSTATE trademark is famous and/or widely known Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent is not commonly known by the ALLSTATE or ALLSTATE.COM trademark. Complainant has not authorized Respondent to use the ALLSTATE or ALLSTATE.COM trademark in the disputed domain names.
Any adoption of the confusingly similar disputed domain names was done with complete knowledge of Complainant and its rights, and with intent to trade off Complainant’s goodwill.
Respondent registered the disputed domain names between November 2004 and February 2006, that is, approximately forty three to forty five years after Complainant adopted the ALLSTATE trademark in 1961, and approximately nine to eleven years after Complainant registered the <allstate.com> domain name.
Respondent’s <allsstate.com>, <aallstate.com> and <allstatehomeownerinsurance.com> disputed domain names all redirect Internet users to Respondent’s <allstaterentersinsurance.com> disputed domain name. The website located at the disputed domain name <allstaterentersinsurance.com> features a variety of advertising links concerning the field of insurance, including links to Complainant and its direct competitors in the insurance market. Respondent’s <allstae.com> disputed domain name redirects Internet users to the third-party website ”wwwalliedinsurance.com”.
The use of a well-known trademark or the misspelling of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use.
Respondent is not making a noncommercial use of the disputed domain names. The use of a confusingly similar domain name to offer products or services in competition with Complainant does not constitute a bona fide offering of goods or services. Likewise, the use of a confusingly similar domain name to divert Internet users to a third-party site offering products or services in competition with Complainant does not constitute a bona fide offering of goods or services. Further, such use implies that Respondent is receiving compensation for such advertising; this is a purely commercial use. Therefore, Respondent is not making a legitimate noncommercial use of the disputed domain names, but instead is misleading and diverting consumers for commercial purposes.
Respondent’s use of the confusingly similar disputed domain names is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to the Policy.
Respondent registered and is using the disputed domain names in bath faith.
Bad faith exists where Respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Respondent’s use of a common typographical misspelling of the ALLSTATE and ALLSTATE.COM trademarks in the disputed domain names causes likelihood of confusion.
Respondent stands to benefit financially from this confusion by directing Internet users to websites that feature advertising links.
Panels have found bad faith where the respondent is using a well-known trademark and there is no legitimate use of the mark in the domain name. Respondent registered the disputed domain names in bad faith since the disputed domain names contains a common misspelling of and are confusingly similar to Complainant’s well-known ALLSTATE and ALLSTATE.COM trademarks, and there is no legitimate use.
Bad faith exists where, as here, there can be no question that Respondent knew or should have known about Complainant’s trademark rights before registering the disputed domain names. Respondent’s disputed domain names are being directed to websites that feature advertising links to Complainant itself as wells as its competitors. At the time of the registration of the disputed domain names, Respondent had actual or constructive knowledge of Complainant’s ALLSTATE and ALLSTATE.COM trademarks; this knowledge is further evidence of Respondent’s bad faith.
It is a longstanding principle that the practice of “typosquatting”, of itself, is evidence of bad faith registration of a domain name.
Respondent is using the disputed domain names for commercial gain by redirecting Internet users to websites that feature advertising links to Complainant and its direct competitors, and benefiting from the likely confusion between Complainant’s trademarks and the disputed domain names. It is likely that Respondent is generating revenue from this practice. The exploitation of the reputation of trademarks and profit from the diversion of Internet users is an indication of bad faith according to numerous previous decisions.
Respondent’s use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny. Respondent has used a privacy service to shield his/her identity in registering the disputed domain names comprised of Complainant’s famous trademarks or common typographical misspellings thereof. These circumstances create a negative inference about Respondent’s efforts to hide its identity.
Respondent has a history of registering domain names that are confusingly similar to the trademarks of others. It is clear from Respondent’s pattern of conduct, that Respondent registered and used the disputed domain names in bad faith under the Policy.
Complainant requests that the disputed domain names be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As a preliminary note, and based on paragraphs 3(c) and 10(e) of the Rules, this Panel agrees with the Center’s determination in acceding to Complainant’s request of consolidating multiple complaints into one due to the fact that, at the time such consolidations were made, the Center had not yet officially notified Respondent of the several complaints and thus at that time the proceedings had not commenced yet as per paragraph 4(c) of the Rules.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant3. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the ALLSTATE and ALLSTATE.COM trademarks.
Since the addition of the generic top-level domain (gTLD), here ".com”, after a domain name is technically required, it is well established that such element is disregarded when assessing whether a domain name is identical or confusingly similar to a trademark.4
The disputed domain names <allsstate.com> and <aallstate.com> entirely incorporate the ALLSTATE trademark. The disputed domain name <allstae.com> seems to incorporate the ALLSTATE trademark in its entirety except for a letter “t”.
The only difference between Complainant’s ALLSTATE trademark and the disputed domain names <allsstate.com> and <aallstate.com> is the addition of the single letters “s” or “a” respectively; and the only difference between Complainant’s trademark and the disputed domain name <allstae.com> is the omission of the letter “t”. Such minor variations in said disputed domain names are not enough to neither avoid similarity nor prevent the likelihood of confusion. Prior panel decisions support this Panel’s view (Pfizer Inc. v. Phizer's Antiques and Robert Phizer, WIPO Case No. D2002-0410; Sanofi-aventis v. Transure Enterprise Ltd., Host Master, WIPO Case No. D2008-1636).
The disputed domain names <allstatehomeownerinsurance.com> and <allstaterenterinsurance.com> entirely incorporate the ALLSTATE trademark as well. They only differ from Complainant’s trademark ALLSTATE by the addition of the descriptive words “homeownerinsurance” and “rentersinsurance”, respectively, which are descriptive of the products and services that Complainant offers and sells. The addition of such descriptive terms is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior panel decisions support this Panel’s view (Cfr. Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; and Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102).
Therefore, this Panel finds that all the disputed domain names are confusingly similar to Complainant’s ALLSTATE trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant asserts that it has never authorized Respondent to use the ALLSTATE trademark in the disputed domain names and that Respondent has never been commonly known by such trademark.
Complainant contends that Respondent is using the disputed domain names in order to divert Internet users to websites with links leading to commercial websites relating to the insurance field and thus Respondent is clearly taking advantage of Complainant’s reputation and the similarity to its trademarks with the purpose of diverting Internet users through such links to other websites unrelated to Complainant’s official website.
There is evidence in the record showing that Respondent is not using the websites associated with the disputed domain names to offer its own products or services, but rather to show sponsored links and related categories links with the name of firms and/or products competing with Complainant.
Such use of Complainant’s trademarks by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain names.5
From the documentation that is on the record there is no indication that may lead this Panel to consider that Respondent might have rights or legitimate interests on the disputed domain names, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using five domain names which are almost identical to and/or entirely incorporate Complainant’s trademarks, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain names6.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain names is in bad faith.
Respondent registered the disputed domain names between 2004 and 2006, that is, approximately forty three years after Complainant’s registration of the ALLSTATE trademark in 1961, and approximately nine years after Complainant created the domain name <allstate.com> in 1995.
Taking into consideration the aforesaid and the insurance products provided by Complainant, it is clear that Respondent should have been fully aware of the existence of Complainant’s trademarks at the time it obtained the registration of the disputed domain names.
The use of a domain name for a website which generates pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s trademarks, coupled with just a minor typographical error variation (practice commonly known as typosquatting7) or the addition of descriptive terms directly associated with complainant’s activities, and where the website associated to the disputed domain name shows sponsored links to competitors, there is no doubt that Respondent is intentionally attempting to attract internet users for financial gain creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain names, when in fact there is no such connection.8
Additionally, there are precedents evidencing Respondent’s substantially similar conduct in other cases, which is indicative of bad faith as well.
Further, Respondent’s failure to reply to Complainant’s cease-and-desist communications is also indicative of bad faith (see Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). Such finding is still valid even where a privacy protection service is provided by a third party, since such third party provider would be expected to forward such cease-and-desist letters to its principal (i.e. the underlying registrant)9.
In light of the above, this Panel considers that Complainant has established the bad faith of Respondent in registering and using the disputed domain names.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain names <aallstate.com>, <allsstate.com>, <allstae.com>, <allstatehomeownerinsurance.com> and <allstaterentersinsurance.com> be all transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: April 11, 2011
1 The notice was sent by email to Moniker Privacy Services.
2 At the time of the filling of the original Complaint, Moniker Privacy Services appeared as registrant of the disputed domain names, according to the contact information stated in the publicly-available WhoIs database.
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
5 In the same sense see: Terroni Inc. v. Gioacchino Zerbo, WIPO Case No.D2008-0666; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; Lo Monaco Hogar, S.L. v. MailPlanet.com, Inc., WIPO Case No.D2005-0896.
6 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given...Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion.” (Emphasis in original).
7 See Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517.
8 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “Policy, paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. See also Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name <internetexplorer.com> with sponsored links to competitors”.
9 See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062: “such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. […] Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting”.