WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Callum Macgregor/Privacy--Protect.org
Case No. D2011-0244
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 Callum Macgregor of Highland, United Kingdom of Great Britain and Northern Ireland; Privacy--Protect.org of Shanghai, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <allstatema.com>, <allstatemahem.com>, <allstatemayheminsurance.com>,
<allstateroadservice.com>, <whyallstateagent.com>, and <wwwallstateagent.com> are registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011 and February 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 9, 2011, the Registrar 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 Complainant on February 9, 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 filed an amended Complaint and a consolidation request to consolidate Complaints D2011-0241, D2011-0245 and D2011-0261 into Case D2011-0244. The consolidation request was accepted by the Center on February 11, 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 Respondent of the Complaint, and the proceedings commenced on February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2011.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 14, 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
The trademark upon which the Complaint is based is ALLSTATE. According to the documentary evidence and contentions submitted, the ALLSTATE trademark was first registered in the United States under U.S. Reg. No. 0717683 on June 27, 1961 for insurance services. Complainant also owns U.S. Reg. No. 0761091 as of December 3, 1963 and U.S. Reg. No. 0840187 as of December 5, 1967 for the same services. On October 31, 2006, Complainant obtained U.S. Reg. No. 3164784 for ALLSTATE.COM in connection with financial services. In June 2010 Complainant obtained U.S. Reg. Nos. 3811642 and 3801141 for ALLSTATE ROADSIDE SERVICES in connection with financial services. Complainant has also a pending trademark registration for MAYHEM for insurance services, which mark has been used since July 2010.
Complainant is a well-known insurance company which was founded in 1931 and provides insurance services all over the United States. Complainant owns a large number of domain names containing the ALLSTATE trademark, including <allstate.com>, <allstate.org> and <allstate.net>, which were registered in the period of May 10, 1995 to July 17, 1998.
The domain name <allstatema.com> was registered on November 29, 2008. The domain names <whyallstateagent.com> and <wwwallstateagent.com> were registered on June 8, 2010. The domain name <allstateroadservice.com> was registered on June 23, 2010. The domain names <allstatemahem.com> and <allstatemayheminsurance.com> were registered on August 25, 2010. The websites to which such domain names resolve display advertising links in the field of insurances, including links to Complainant’s direct competitors in the insurance market.
Complainant sent a cease and desist letter to Respondent on December 10, 2010. Complainant states that Respondent never replied.
5. Parties’ Contentions
Complainant argues that the disputed domain names are confusingly similar to the trademarks in which Complainant has rights because (i) the incorporation of a mark in full within a disputed domain name is sufficient to establish confusingly similarity between the mark and the disputed domain name, particularly where the incorporated mark is well-known, because users are likely to believe that the trademark holder authorized or is controlling the disputed website; (ii) a prior WIPO panel has determined that the ALLSTATE trademark is famous; (iii) some of the disputed domain names include typographical errors, a practice which is known as “typosquatting"; and (iv) the content of the webpage that Internet users are directed to adds to the likelihood of confusion.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) Respondent is not commonly known by the names “allstatemahem”, “allstatemayheminsurance”, “wwwallstateagent”, “whyallstateagent”, “allstateroadservice” and “allstatema”, but even if it were any adoption of a name which is confusingly similar to Complainant’s trademarks was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant's goodwill; and (ii) Respondent is not making a noncommercial use of the disputed domain names, and 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.
Finally, Complainant contends that Respondent registered and uses the disputed domain names in bad faith because (i) bad faith exists where, as in the instant case, a respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of its website; (ii) bad faith exists where, as in the instant case, a respondent uses a well-known trademark and there can be no question that respondent knew or should have known about complainant's trademark rights before registering its domain name; (iii) the practice of typosquatting, of itself, is evidence of bad faith registration of a domain name; (iv) 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; (v) Respondent's use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny; (vi) Respondent appears to be engaged in a pattern of registering and using the disputed domain names in bad faith; and (vii) Respondent is responsible for the content of the websites located at the disputed domain names.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Status of Respondent
When the Complaint was filed, the disputed domain names were registered in the name of “Privacy-Protect.org”, which is obviously a proxy service to enable “real” owners of domain names to conceal their identities. By the time the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names, the identity of the actual registrant was disclosed. Both the proxy service and Callum Macgregor have been served with copies of the Complaint and neither has responded. The practice of having two respondents to a proceeding under the Policy where one is a proxy service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases, as it helps to inform interested parties. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
B. Consolidation of Multiple Domain Names
Paragraph 10(e) of the Rules empowers panels to consolidate multiple domain names in accordance with the Policy and the Rules as paragraph 3(c) of the Rules establishes that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Given that the Registrar has disclosed information confirming that the beneficial holder of each dispute domain name is the same, i.e., Callum Macgregor, the Panel finds that the Center’s acceptance of the consolidation request was appropriate and fair.
C. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
D. Identical or Confusingly Similar
The Panel notes that the notoriety of the ALLSTATE trademark has been confirmed in previous WIPO decisions. See Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175 (“[g]iven its long and widespread use and extensive recognition, the ALLSTATE brand is among those that may be fairly described as famous or well known”; Allstate Insurance Company v. WXN, WIPO Case No. D2010-2165. In addition, the Panel notes that all the disputed domain names incorporate the ALLSTATE trademark in its entirety.
The Panel agrees with previous UDRP decisions which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon AG v. Mti Networks Ltd, WIPO Case No. D2005-0258 and AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758. The likelihood of confusion is greater where the disputed domain name incorporates a famous or well-known trademark, as in the instant case.
Further, the disputed domain name <allstateroadservice.com> reproduces partially the ALLSTATE ROADSIDE SERVICES trademark and the disputed domain names <allstatemahen.com> and <allstatemayheminsurance.com> also reproduce the MAYHEM trademark. The disputed domain name <allstateroadservice.com> was registered at approximately the same time as Complainant secured the U.S. trademark registrations for the ALLSTATE ROADSIDE SERVICES mark, but first use of such trademark by Complainant started on June 6, 2009 as shown on the records of the USPTO.
Also, the MAYHEM trademark was filed on October 21, 2010 and its first use started on July 9, 2010 as shown on the records of the USPTO. Therefore, the domain names <allstatemahen.com> and <allstatemayheminsurance.com> were registered after Complainant started using the MAYHEM trademark. The Panel understands that it is not necessary in the instant case to determine whether Complainant has successfully asserted common-law or unregistered trademark rights since Respondent used the ALLSTATE and MAYHEM trademarks together in the domain names <allstatemahen.com> and <allstatemayheminsurance.com>, therefore creating a clear association between the two trademarks, one of which is famous or well-known.
The Panel also concurs with previous UDRP decisions relating to “typosquatting”, the practice of misspelling an element of the mark which has consistently been regarded as creating domain names confusingly similar to the relevant mark. See, e.g. Deutsche Bank AG v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201.
This is the position here. In fact, the disputed domain names <allstatemahem.com>, <wwwallstateagent.com> and <allstateroadservice.com> reproduce Complainant’s registered trademarks except for certain typographical errors which are customarily made by an Internet user. The circumstances of “typosquatting” in this case do create confusing similarity.
The likelihood of confusion is greater where the disputed domain name incorporates the famous or well-known ALLSTATE trademark and adds either the descriptive word “insurance”, such as in <allstatemayheminsurance.com> or the generic word “agent”, such as in <whyallstateagent.com> and <wwwallstateagent.com>, all of which are words closely related to Complainant’s business. The same result is achieved in the disputed domain name <allstatema.com> where Respondent added the letters “ma”, which may be regarded as an abbreviation for the State of Massachusetts. The addition of geographic or generic words does nothing to differentiate the disputed domain names from Complainant’s ALLSTATE trademark. In fact, it has been decided that the addition of generic or descriptive terms to an otherwise distinctive trademark is to be considered confusingly similar to a complainant’s trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 and F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC. v. Mattew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain names <allstatema.com>, <allstatemahem.com>, <allstatemayheminsurance.com>, <allstateroadservice.com>, <whyallstateagent.com> and <wwwallstateagent.com> are clearly confusingly similar to Complainant’s registered trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
E. Rights or Legitimate Interests
Respondent is using the disputed domain names to resolve to websites with click-through advertisements pointing to various websites, including those competing with Complainant and those offering services unrelated to Complainant’s products. The websites to which the disputed domain names resolve are entirely in English.
The issue as to whether use of a domain name for purposes of offering “sponsored links” creates a right or legitimate interest to a domain name has been addressed in previous WIPO UDRP decisions. In similar circumstances, the consensus view is that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819 and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.
In addition, the Panel sees no plausible explanation for Respondent’s adoption and use of the names “allstatemahem”, “allstatemayheminsurance”, “wwwallstateagent”, “whyallstateagent”, “allstateroadservice” and “allstatema” in the disputed domain names and, accordingly, concludes that the disputed domain names were selected and used by Respondent to take advantage of the notoriety enjoyed by the ALLSTATE trademark and the association with other trademarks used by Complainant, with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain names, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
F. Registered and Used in Bad Faith
In light of the reputation of the ALLSTATE trademark, the reproduction by Respondent of that trademark with typographical errors, in association with other trademarks used by Complainant and/or in combination with descriptive or generic terms shows that Respondent in all likelihood knew of the existence of Complainant’s trademarks and of the notoriety of ALLSTATE worldwide, and intended to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s trademarks .
This Panel also concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name may be a further indication of bad faith. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-441. In addition, “[t]yposquatting is inherently parasitic and of itself evidence of bad faith”, as one panel held before. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
A contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain names would have revealed Complainant’s long standing trademark registrations as well as Complainant’s filing of other trademarks already in use by Complainant. See, for instance, RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242. Such behavior as is present in this case is what some case precedents have termed as “opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
The Panel also finds that Respondent is obviously not making any legitimate noncommercial or fair use of the disputed domain names.
As decided in a previous WIPO UDRP decision, “[t]he proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free-ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent. In light of the above, the Panel concludes that knowledge of the mark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion (and thus allow the Respondent to free-ride on the Complainant’s goodwill), is the proper test”. See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.
The Panel takes further the view that in this case the content of the websites is relevant in the finding of bad faith use. As indicated before, Respondent’s websites contained online directories featuring sponsored links to third parties, including those competing with Complainant and those offering services unrelated to Complainant’s products. Accordingly, the Panel is convinced by all the evidence produced in this case and by Respondent’s default that Respondent intended to free ride on Complainant’s reputation and goodwill by diverting Internet users and customers to a website for commercial gain.
There are two final elements which are relevant in the resolution of this dispute. Complainant contends that Respondent's use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny, and that Respondent appears to be engaged in a pattern of registering and using the disputed domain names in bad faith. See Priceline.com v. Callum Macgregor, NAF Claim No. FA1303928; Baylor University v. Callum Macgregor, NAF Claim No.FA1340159; Barclays Bank PLC v. Privacy Protect/Callum Macgregor, WIPO Case No. D2010-1988.
The practice of using a proxy service to achieve registration of domain names creates a potential for abuse by cybersquatters. While there can be valid reasons for a person wishing to protect privacy by means of a proxy service, that is a factor pointing in direction of bad faith in a great variety of cases. See Barclays Bank PLC v. Privacy Protect/Callum Macgregor, supra. The Panel also finds that Complainant’s contention that Respondent appears to be engaged in a pattern of registering and using the disputed domain names in bad faith is warranted. The facts in Barclays Bank PLC v. Privacy Protect/Callum Macgregor, supra are similar to the instant case to the extent that Respondent, using the same proxy service, registered a well-known trademark and the website associated with the disputed domain name was used for “pay per click” or sponsored advertising services.
In short, the manner in which Respondent has used and is using the disputed domain names demonstrates that the disputed domain names were registered, were used and still are being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 names <allstatema.com>, <allstatemahem.com>, <allstatemayheminsurance.com>, <allstateroadservice.com>, <whyallstateagent.com> and <wwwallstateagent.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: March 28, 2011