WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Privacyprotect.org / Gerente de Dominia
Case No. D2011-0269
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 Privacyprotect.org of Munsbach, Luxembourg / Gerente de Dominia of Santiago, Chile.
2. The Domain Names and Registrar
The disputed domain names <allstateaboutme.com>, <allstatenj.com>, <allstatle.com> and <allstatse.com> (the “Domain Names”) are registered with Power Brand Center Corp. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2011. On February 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 14, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 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 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2011.
The Center appointed James McNeish Innes as the sole panelist in this matter on April 1, 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
Complainant is the largest publically held personal lines insurer in the United States. It was founded in 1931 and 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-three (43) years prior to Respondent’s registration of the Domain Names. In 2009, Complainant’s revenues were approximately USD 32 billion dollars. It has generated billions of United States dollars in sales of products and/or services under the ALLSTATE trademark in the United States. It owns numerous trademark registrations in the United States for its ALLSTATE trademark. Complainant obtained its first United States registration (United States Registration Number. 0717683) for the word mark ALLSTATE for “underwriting of the following types of insurance: life, annuity, accident, and health” on June 27, 1961. In addition, Complainant owns numerous foreign trademark registrations for the ALLSTATE trademark in jurisdictions around the world. It has devoted hundreds of millions of United States dollars to advertising and promoting its services in the United States under the ALLSTATE trademark. As a result of Complainant’s extensive promotional efforts and the wide acceptance of its services promoted in connection with the ALLSTATE trademark, the ALLSTATE trademark has become one of the most widely recognized brands among consumers. As part of its communications and marketing program, Complainant has registered over one thousand (1000) ALLSTATE-based domain names worldwide (including common typographical errors of the ALLSTATE trademark). Complainant’s domain names include: <allstate.com>, <allstate.org> and <allstate.net>. Complainant registered the <allstate.com> domain name in May 1995. Complainant subsequently registered <allstate.net> in July 1997 and <allstate.org> in July 1998.
5. Parties’ Contentions
Complainant contentions include the following:
a. Registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive. Janus International Holding Co. v. Scott Rademacher, WIPO Case No.: D2002-0201 (March 5, 2002). Complainant has registered the ALLSTATE trademark in the United States (“U.S.”) and abroad. Complainant owns approximately thirty (30) trademark registrations for the ALLSTATE trademark, as well as a trademark registration for ALLSTATE.COM. Several of Complainant’s trademark registrations are incontestable under U.S. law. Complainant obtained its first U.S. trademark registration at least forty-three (43) years prior to Respondent’s registration of the Domain Names at issue. Therefore, Complainant has established prima facie evidence of validity and inherent distinctiveness of its ALLSTATE trademark.
b. Prior administrative panels have determined that the ALLSTATE trademark is famous and/or widely known. See, e.g., Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175 (November 6, 2009) (“Given 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 (February 3, 2011) (noting that the ALLSTATE trademark is “widely known” and stating that “[a]s a result of its successful marketing efforts and expenditures surrounding its brand, Complainant’s ALLSTATE marks enjoy some degree of renown”).
c. Respondent’s <allstatenj.com> Domain Name wholly incorporates Complainant’s well-known ALLSTATE trademark in its entirety. The Domain Name differs from Complainant’s ALLSTATE.COM trademark only by the addition of the letter “nj” – the abbreviation for New Jersey. The addition of a geographic reference does nothing to differentiate this Domain Name from Complainant’s ALLSTATE trademark.
d. Respondent’s <allstateaboutme.com> Domain Name also wholly incorporates Complainant’s ALLSTATE trademark. The Domain Name differs from Complainant’s trademark only by the addition of the descriptive words “about me.” The addition of these descriptive words does nothing to distinguish this Domain Name from Complainant’s trademark.
e. Respondent’s <allstatse.com> and <allstatle.com> Domain Names both include common typographical errors of Complainant’s well-known ALLSTATE trademark. “Typosquatting” is a form of cybersquatting in which a respondent registers and uses a domain name that is a common misspelling or predictable mistyping of a distinctive mark in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website. Typosquatting takes “unfair advantage” of Complainant’s well-known ALLSTATE trademark and associated business reputation. Respondent’s Domain Names features a common and predictable misspelling of the ALLSTATE trademark, changing ALLSTATE to “allstatse” or “allstatle” respectively. The words comprising the <allstatse.com> and <allstatle.com> Domain Names are not English words. Rather, they are merely predictable misspellings of Complainant’s ALLSTATE trademark.
f. Respondent is not commonly known by the ALLSTATE trademark or by any of the terms that comprise the Domain Names <allstatenj.com>, <allstateaboutme.com>, <allstatse.com> or <allstatle.com>. Even assuming arguendo that Respondent is known by the names “allstatenj,” “allstateaboutme,” “allstatse” or “allstatle,” these names are confusingly similar to Complainant’s well-known ALLSTATE trademark when used in connection with insurance-related services (as discussed above) and their adoption came long after Complainant’s adoption of its ALLSTATE trademark. Thus, any adoption of the confusingly similar “allstatenj,” “allstateaboutme,” “allstatse” or “allstatle” 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 Names. See Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (February 28, 2001) (“[I]t is beyond credulity that the respondent’s corporate name was chosen in the absence of knowledge of the complainant’s famous trademark. Under these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy cannot apply.”).
g. The use of a well-known trademark in domain names for websites that simply contain hyperlinks is not a legitimate commercial use. Further, the use of a confusingly similar domain names that divert Internet users to a website offering products or services in competition with Complainant does not constitute a bona fide offering of goods or services. Respondent is not making a noncommercial use of the Domain Names. The “parked” web pages that correspond to the Domain Names feature sponsored links, which lead to the websites of unrelated third parties offering insurance-related services that directly compete with those offered by Complainant.
h. Respondent’s use of Complainant’s ALLSTATE trademark in the Domain Names causes likelihood of confusion. As noted above, Respondent stands to benefit financially from this confusion by redirecting Internet users to a website that features advertising links for insurance companies. See Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (September 7, 2003) (finding that creating revenue from misdirected traffic constitutes bad faith). It is worth noting, however, that in order to find commercial gain “the gain does not need to be derived by the Respondent himself.” Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (February 14, 2008) (finding bad faith based on “parking” webpage).
i. Respondent registered the Domain Names in bad faith since the Domain Names wholly incorporate Complainant’s well-known ALLSTATE trademark, or a common typographical error thereof, and there is no legitimate use. Respondent’s bad faith is all the more apparent given Complainant’s widespread use and promotion of its ALLSTATE trademark, and Complainant’s numerous U.S. trademark registrations. There can be no question that Respondent knew or should have known about Complainant’s trademark rights before registering its Domain Names. At the time of registration of the Domain Names, Respondent had actual or constructive knowledge of Complainant’s ALLSTATE trademark. Such knowledge may be inferred based on Complainant’s registration of its trademarks with the United States Patent and Trademark Office and their substantial fame in the United States and abroad.
j. Further, the registration information from the WhoIs database indicates that Respondent is offering the <allstateaboutme.com> Domain Name for sale. Where the domain name is based upon another’s intellectual property, the registration and offer for sale is in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(a) That the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(b) That Respondent has no rights or legitimate interests in respect of the Domain Names.
(c) That the Domain Names have been registered and are being used in bad faith.
A.Identical or Confusingly Similar
Two separate issues fall for consideration: (1) Does Complainant have rights in a trademark; and (2) are the Domain Names identical or confusingly similar to any such mark. On the record Complainant has established rights in its mark and registration. They have also demonstrated continued commercial usage since 1931.
Complainant argues that the Domain Names are identical or confusingly similar to its mark for the following reasons:
(a) The Domain Names <allstateaboutme.com>, <allstatenj.com>, <allstatle.com> and <allstatse.com> are confusingly similar to Complainant’s trademark;
(b) The only difference between Respondent’s Domain Names and Complainant’s trademark is the addition of letters or words which has nothing to distinguish Respondent’s Domain Names from Complainant’s trademarks; and
(c) The Domain Names incorporate non-distinctive words and are confusingly similar to Complainant’s trademark.
The Panel accepts Complainant’s contentions, and finds, based on the case record, that the Domain Names are confusingly similar to Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of Respondent. The Panel finds that Respondent has no rights or legitimate interests in the Domain Names. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(b) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Respondent has made no Response in this connection. Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts Complainant’s assertion that Respondent has attempted to attract Internet users to its web sites by creating confusion with Complainant’s mark, and finds, based on the case record, that the Domain Names have been registered and are being used in bad faith. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <allstateaboutme.com>, <allstatenj.com>, <allstatle.com> and <allstatse.com> be transferred to Complainant.
James McNeish Innes
Dated: April 11, 2011