WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Hemang Infrasructure Private Limited
Case No. D2011-0262
1. The Parties
Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., United States of America.
Respondent is Hemang Infrasructure Private Limited of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name is <allstqte.com> which is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8 and 10, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name and a reminder, respectivley. On February 11, 2011, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 14, 2011, providing the registrant and contact information disclosed by Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 17, 2011.
The Center verified that the Complaint, 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 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 25, 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 provides insurance services all over the United States 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, class 102; ALLSTATE, registration No. 761,091 with the USPTO, registered in 1963, class 102; and ALLSTATE.COM, registration No. 3,164,784 with the USPTO, registered in 2006, international class 36.
The disputed domain name was created on June 9, 2005.
5. Parties’ Contentions
Complainant 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 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 name.
Complainant owns numerous trademark registrations in the United States for its ALLSTATE trademark and in 2006 obtained the trademark registration in the United States for its ALLSTATE.COM trademark. Further, Complainant owns numerous 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 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 January 12, 2011, Complainant advised the registrant of the disputed domain name that it was violating Complainant’s rights by using the disputed domain name.1 The letter was 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 proceeding2, Complainant learned that Respondent has a history of registering domain names that are confusingly similar to the marks of others. Respondent has been the subject of numerous proceedings pursuant to the Policy. To Complainant’s knowledge, in each prior proceeding, Respondent was found to have acted in bath faith and the subject domain names were ordered to be transferred to the rightful trademark owner (e.g., LEGO Juris A/S v. HEMANG INFRASRUCTURE PRIVATE LIMITED / PrivacyProtect.org, Domain Admin, WIPO Case No. D2010-1847; AOL Inc. v. Hemang Infrasructure Private Limited, NAF Claim No. FA 1358011; Legg Mason & Co., LLC v. Hemang Infrasructure Private Limited, NAF Claim No. FA1009001347287; Tyra Banks and Telepictures Productions Inc. v. Hemang Infrastructure Private Limited, NAF Claim No. FA1006001330940; Lifetime Brands, Inc. v. Hemang Infrasructure Private Limited, NAF Claim No. FA1005001327173.
1. The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.
Respondent’s disputed domain name includes a common typographical error of Complainant’s well-known ALLSTATE and ALLSTATE.COM trademarks. The disputed domain name differs from Complainant’s trademarks only by changing the second “a” to the letter “q”. Notably, the letter “q” is located directly above the letter “a” on the standard English keyboard.
Typosquatting takes “unfair advantage” of Complainant’s well-known ALLSTATE and ALLSTATE.COM trademarks and associated business reputation. Respondent’s disputed domain name features a common and predictable misspelling of the ALLSTATE and ALLSTATE.COM trademarks, changing “Allstate” to “Allstqte”.
In light of Complainant’s widespread use and promotion of its ALLSTATE and ALLSTATE.COM trademarks over the past several decades, these trademarks are ones of the most well-known and recognizable marks in the United States. A prior UDRP administrative panel has determined that the ALLSTATE trademark is famous (Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175).
2. Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the ALLSTATE and ALLSTATE.COM trademarks. Complainant has not authorized Respondent to use the ALLSTATE and ALLSTATE.COM trademarks in the disputed domain name.
Any adoption of the confusingly similar domain name was done with complete knowledge of Complainant and its rights, and with intent to trade off Complainant’s goodwill.
Respondent registered the disputed domain name on June 9, 2005, approximately forty four years after Complainant adopted the ALLSTATE trademark in 1961, and approximately ten years after Complainant registered the <allstate.com> domain name.
The website located at the disputed domain name features a variety of advertising links concerning the field of insurance, including links to Complainant and its direct competitors in the insurance market.
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 name. The use of a confusingly similar domain name that diverts Internet users to a website 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 name, but instead is misleading and diverting consumers for commercial purposes.
Respondent’s use of the confusingly similar domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to the Policy.
3. Respondent registered and is using the disputed domain name in bath faith.
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. Respondent’s use of a common typographical misspelling of the ALLSTATE and ALLSTATE.COM trademarks in the disputed domain name causes likelihood of confusion.
Respondent stands to benefit financially from this confusion by directing Internet users to a website that features advertising links.
UDRP panels have found bad faith where a 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 name in bad faith since the disputed domain name contains a common misspelling of and is 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 a respondent knew or should have known about a complainant’s trademark rights before registering the disputed domain name. Respondent’s disputed domain name is being directed to a website that featured advertising links to Complainant itself as wells as its competitors. At the time of the registration of the disputed domain name, 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. It is likely that some percentage of consumers attempting to navigate directly to Complainant’s website located at “www.allstate.com” may mistakenly type the disputed domain name <allstqte.com> rather than <allstate.com>.
Respondent is using the disputed domain name for commercial gain by directing Internet users to a website that features advertising links to Complainant and its direct competitors, and benefiting from the likely confusion between Complainant’s trademark and the disputed domain name. 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 UDRP 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 its identity in registering the disputed domain name comprised of a predictable and common typographical misspelling of Complainant’s famous ALLSTATE and ALLSTATE.COM trademarks. These circumstances create a negative inference about Respondent’s efforts to hide its identity.
Respondent has been a party of other UDRP proceedings which resulted in a finding of Respondent’s bad faith and transferred the disputed domain names to various complainants. These prior proceedings are evidence of a pattern of bad faith registration and use of the domain names, which stands as evidence that Respondent has registered and used the disputed domain name in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
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”.
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) “.com” after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.4
The disputed domain name entirely incorporates the ALLSTATE trademark. The only difference between Complainant’s ALLSTATE trademark and the disputed domain name is the substitution of the second letter “a” for the letter “q” in “allstate”. Such change is not enough to neither avoid confusing similarity nor prevent the likelihood of confusion. Prior UDPR panel decisions support this Panel’s view (Pfizer Inc., A Delaware Corporation 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).
Therefore, this Panel finds that the disputed domain name is 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 name.
Complainant asserts that it has never authorized Respondent to use the ALLSTATE trademark in the disputed domain name and that Respondent has never been commonly known by such trademark.
Complainant contends that Respondent is using the disputed domain name in order to divert Internet users to a website 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 case file showing that Respondent is not using the website associated with the disputed domain name 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 name.5
Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. From the documentation that is on the case file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, 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 a domain name which is almost identical to Complainant’s trademarks, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name6.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
The disputed domain name was registered in 2005, approximately forty four years after Complainant’s registration of the ALLSTATE trademark in 1961, and approximately 10 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 name.
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 “typosquatting”7), and where the website associated to the disputed domain name shows sponsored links to competitors, there is no doubt to the Panel 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 name, 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 letter is also indicative of bad faith in this case (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, it is found that the registration of the disputed domain name was, on the face of it, made in bad faith and that the disputed domain name 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, this Panel orders that the domain name <allstqte.com> be transferred to Complainant.
Dated: April 8, 2011
1 The email communication was sent to PrivacyProtect.org.
2 At the time of filing the original Complaint, PrivacyProtect.org appeared as the registrant of the disputed domain name, according to the contact information stated in the 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”.
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 Caso 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”.
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”.