WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allstate Insurance Company v. Caleb Blessing Amaji, UTE Global
Case No. D2020-3097
1. The Parties
The Complainant is Allstate Insurance Company, United States of America, represented by SILKA AB, Sweden.
The Respondent is Caleb Blessing Amaji, UTE Global, Nigeria.
2. The Domain Names and Registrar
The disputed domain name <allstategroup.online> and <allstategroups.xyz> (“Disputed Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 20, 2020, 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 the Complainant on November 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 23, 2020.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 18, 2021. 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 Complainant operates an insurance business in the United States, founded in 1931, currently having issued more than 113 million policies. The Complainant holds a portfolio of registrations for the trademark ALLSTATE, and variations of it, including United States Registration No. 717683, registered on June 27, 1961.
The Complainant owns numerous domain names that comprise or contain the trademark ALLSTATE, including the domain name <allstate.com>.
The Disputed Domain Name <allstategroup.online> was registered on October 22, 2020, and the Disputed Domain Name <allstategroups.xyz> was registered on October 28, 2020. The Disputed Domain Name <allstategroup.online> redirected to a website that purported to provide banking services and the Disputed Domain Name <allstategroups.xyz> is inactive.
5. Parties’ Contentions
The Complainant cites its United States trademark registrations including No. 717683, that was registered on June 27, 1961, and numerous other registrations in the United States for the mark ALLSTATE, as prima facie evidence of ownership.
The Complainant submits that the mark ALLSTATE is well-known and that its rights in that mark that predate the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each Disputed Domain Name incorporates in its entirety the ALLSTATE trademark and that the similarity is not removed by the addition of the words “group” or “groups”, or the additions of the generic Top-Level Domains (“gTLD”) “.online” or “.xyz”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name <allstategroup.online> because it resolved to a website purporting to offer banking services under the ALLSTATE brand, and <allstategroups.xyz> is not in active use. The Complainant contends that such a respondent has no rights or legitimate interests in the Disputed Domain Names.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the prior use and “the Complainant’s extensively used and well-known trademark” and the probability that the Disputed Domain Names were registered in the apparent execution of a phishing scheme to obtain “sensitive financial information”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that each Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ALLSTATE in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Names are identical or confusingly similar to the ALLSTATE trademark, the Panel observes as follows:
-The Disputed Domain Name <allstategroup.online> is comprised of: (a) an exact reproduction of the Complainant’s trademark ALLSTATE; (b) with the word “group” added; (c) followed by the gTLD “.online”.
- The Disputed Domain Name <allstategroups.xyz> is comprised of: (a) an exact reproduction of the Complainant’s trademark ALLSTATE; (b) with the word “groups” added; (c) followed by the gTLD “.xyz”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names in each case, specifically: “allstategroup” and “allstategroups”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, as in this case, the words “group” or “groups” i.e.: “allstate”. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Allstate Insurance Company v. Gabriel Sosa, WIPO Case No. D2019-2381, “the disputed domain names are confusingly similar to Complainant’s ALLSTATE mark as they each incorporate the ALLSTATE mark in its entirety at the head of each of the disputed domain names.”).
This Panel accepts the Complainant’s contention that the addition of the word “group” and “groups”, respectively, after the Complainant’s registered trademark in each Disputed Domain Name is an additional element that does not serve to distinguish the Disputed Domain Names (see: Accenture Global Services Limited v. Milano Mariah, WIPO Case No. D2019-1067 (“The addition of the descriptive word “groups” does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark”); Statoil ASA v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-1682 (“the additions of a gTLD and the term “groups” fail to distinguish the domain name from the incorporated mark”). See also the WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists ways that a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Panel accepts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because (i) the Disputed Domain Name <allstategroup.online> is misleadingly redirecting Internet users to a web page purporting to provide ALLSTATE branded banking services, thereby illegitimately passing off the Complainant’s goodwill and reputation for its own benefit, as evidenced by screen captures supporting that contention; (ii) the Disputed Domain Name <allstategroups.xyz> is parked and; (iii) Respondent has not acquired or owned any trademark or service mark rights in the name ALLSTATE and has not been commonly known by the name ALLSTATE; and (iv) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. (see also: Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”)).
Further, the composition of the Disputed Domain Names consists of the Complainant’s trademark and a descriptive term, which in this Panel’s view carries a risk of affiliation that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.
On the issue of registration, this Panel accepts the Complainant’s uncontested submission that “the Respondent must have been aware that Internet users may reasonably believe that the Disputed Domain Names and resolving website would be owned, controlled, established or otherwise associated with the Complainant”.
The panel accepts that the trademark ALLSTATE is such a distinctive trademark in the insurances field that it would be inconceivable that the Respondent might have registered the Disputed Domain Names without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175(“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. Whois Privacy Services Pty Ltd / Abadaba S.A., Domain Admin, WIPO Case No. D2010-2228, (“the Complainant’s ALLSTATE trademark is well-known”.); Allstate Insurance Company v. c/o ALLSTATESUTOINSURANCE.COM / E-Promote, WIPO Case No. D2011-0004, (“In light of Complainant's widespread use and promotion of its ALLSTATE trademark over the past several decades, this trademark is one of the most well-known and recognizable marks in the United States”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Allstate Insurance Company v. Anunet Pvt Ltd., WIPO Case No. D2011-0060).
Further, a gap of years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (being confusingly similar to the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Names nearly 60 years after the Complainant established registered trademark rights in the ALLSTATE mark.
On the issue of use, the evidence is that the Disputed Domain Name <allstategroup.online> redirected to a fake ALLSTATE branded banking page unconnected with any bona fide supply of goods or services by the Respondent and the Disputed Domain Name <allstategroups.xyz> does not currently resolve to an active website. Numerous previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark ALLSTATE and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Names, <allstategroup.online> and <allstategroups.xyz>, be transferred to the Complainant.
Date: January 28, 2021