WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Privacyprotect.org, Domain Admin / Bridge Port Enterprises Limited
Case No. D2011-0459
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, Domain Admin of Munsbach, Luxembourg / Bridge Port Enterprises Limited of Bridge Port, St. Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The Disputed Domain Name <allstatework.com> is registered with Answerable.com (I) Pvt Ltd. (the “Registrar”).
3. Procedural History
The Original Complaint which included the Disputed Domain Name, among others, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names which were the subject of the Original Complaint. On March 1, 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 Original Complaint.
The Center provided to the Complainant the registrant and contact information disclosed by the Registrar, and on March 8, 2011 the Complainant separated the Disputed Domain Name <allstatework.com> from the Original Complaint and filed an amended Complaint in this regard on the same date.
The Center verified that the amended Complaint (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 Respondent of the Complaint, and the proceedings commenced on March 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 15, 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 owns numerous trademark registrations in the United States for its ALLSTATE trademark. Complainant obtained its first United States registration (U.S. Reg. No. 717,683) for the word mark ALLSTATE for “underwriting of the following types of insurance: life, annuity, accident, and health” on June 27, 1961. On December 3, 1963, it obtained a United States registration (U.S. Reg. No. 761,091) for the word mark ALLSTATE for the “business of making, writing, and underwriting of insurance.” On December 5, 1967, Complainant obtained a United States registration (U.S. Reg. No. 840,187) for the design mark ALLSTATE for “insurance underwriting services.”
On October 31, 2006, Complainant obtained a United States registration (U.S. Reg. No. 3,164,784) for ALLSTATE.COM for a variety of services, including insurance services.
In addition to the United States trademark registrations mentioned above, Complainant owns over thirty (30) additional United States registrations for the ALLSTATE trademark for a wide range of goods and services including investment advisory services, banking, mortgage lending, and financial services.
The Disputed Domain Name was created on January 7, 2007.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to trade marks in which Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove each of the following, namely that:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix. Absent the domain suffix the Disputed Domain Name comprises the Complainant’s ALLSTATE trademark with the addition of the term “work”. Further, it has been decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is generally to be considered confusingly similar to the registered trademark.
The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights in the ALLSTATE trademarks, is not commonly known by the Disputed Domain Name, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Name.
Complainant has alleged, and Respondent has not denied, that Respondent is not commonly known by the Disputed Domain Name.
In addition, Complainant has supported its contention that Respondent is using the Disputed Domain Name with an intent to trade off Complainant’s goodwill. Specifically, Complainant has provided evidence that Respondent is using the Disputed Domain Name to redirect Internet users to third-party websites in direct competition with Complainant. Prior panels have found that operating a link farm parking page using a mark in a domain name, and providing links to services competitive with the mark owner, supports a finding of no rights or legitimate interests (Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021).
In this case, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “Allstate” in the Disputed Domain Name and, accordingly, concludes that the Disputed Domain Name was selected and used by Respondent to take advantage of the notoriety associated with the “Allstate” name, with the intent to attract for commercial gain Internet users (see Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao, WIPO Case No. D2011-0198).
For all of the foregoing reasons, the Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when a respondent attempts to attract, for commercial gain, Internet users to the respondent’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or of a product or service on the respondent’s website.
Registered In Bad Faith
The Panel finds that Respondent likely knew of Complainant’s marks when it registered the Disputed Domain Name given that Complainant has used the ALLSTATE marks in connection with insurance services for about eighty years, and is one of the largest and best-known providers of such services nationwide (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397).
Based upon the foregoing evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Used In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner (See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433).
Here, Respondent appears to have intended to use the Disputed Domain Name to promote competing services based upon the confusing similarity between Complainant’s ALLSTATE marks and the Disputed Domain Name <allstatework.com> (See The Vanguard Group, Inc v. Venta, WIPO Case No. D2001-1335).
Likewise, in view of the Panel, the existence of a previous case where Respondent was ordered to transfer a domain name (see Grundfos A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2008-1263) can be considered as further evidence of bad faith on the part of Respondent.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <allstatework.com> be transferred to Complainant.
Pablo A. Palazzi
Dated: April 29, 2011