Allstate Insurance Company v. Stavros Tosounidis / Diamond Bailey Consolidated Commercial Services LTD
Claim Number: FA1105001389795
Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Massachusetts, USA. Respondent is Stavros Tosounidis / Diamond Bailey Consolidated Commercial Services LTD (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstate-insurance.info>, registered with GoDaddy.com Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2011; the National Arbitration Forum received payment on May 23, 2011.
On May 23, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <allstate-insurance.info> domain name is registered with GoDaddy.com Inc. and that Respondent is the current registrant of the name. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@allstate-insurance.info. Also on May 31, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allstate-insurance.info> domain name is confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstate-insurance.info> domain name.
3. Respondent registered and used the <allstate-insurance.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a corporation principally operating in the insurance industry. Complainant has generated billions of dollars to date in revenues, earning $32 billion in revenues in 2009 alone. Complainant obtained registration for the ALLSTATE mark (e.g., Reg. No. 717,683 issued June 27, 1961) through the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <allstate-insurance.info> domain name on January 3, 2011. Respondent uses the disputed domain name to resolve to a parked website featuring competing hyperlinks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established rights in the ALLSTATE mark through its registrations with the USPTO (e.g., Reg. No. 717,683 issued June 27, 1961). The Panel finds this is prima facie evidence of validity, and is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Additionally, the fact that Respondent operates in a different country than Complainant does not preclude Complainant’s establishment of rights in its mark for the puropses of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain name differs from Complainant’s mark in three ways: 1) the domain name includes the word “insurance;” 2) the domain name contains a hyphen between the words “ALLSTATE” and “insurance;” and 3) the domain name contains the genreic top-level domain (“gTD”) “.info.” Respondent’s use of the term “insurance” in its domain name merely describes Complainant’s line of business, and is not sufficient to rebut a confusingly similar claim under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The fact that the disputed domain name contains a hyphen is also insufficient to rebut a confusingly similar claim under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Moreover, the fact that the domain name contains the gTLD “.info” is insufficient to rebut a confusingly similar claim under Policy ¶ 4(a)(i). See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“). Consequently, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights or legitimate interests in the domain name <allstate-insurance.info>. Having made a prima facie case, the burden now shifts to Respondent to prove that it does in fact have such rights or interests under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Generally, when Respondent fails to submit a response it is viewed as strong evidence of a concession that Respondent lacks rights or legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). For the sake of fairness, however, the Panel will still examine the record to determine if such rights or legitimate interests exist pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the ALLSTATE trademark or by any of the terms that comprise the <allstate-insurance.info> domain name. The Panel finds no evidence in the record to suggest that the Respondent is commonly known by any of the terms that comprise the <allstate-insurance.info> domain name, as required by Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). The WHOIS information identifies the domain name registrant as “Stavros Tosounidis / Diamond Bailey Consolidated Commercial Services LTD,” which bears no resemblance to the disputed domain name. Additionally, Complainant alleges that it has neither authorized nor licensed the Respondent to use or register the <allstate-insurance.info> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that the Respondent is not commonly known by any portion of the <allstate-insurance.info> domain name for the purposes of Policy ¶ 4(c)(ii).
Respondent uses the <allstate-insurance.info> domain name to direct visitors to a parked website which contains hyperlinks to Complainant’s competitors in the insurance business, for which Respondent likely receives click-through fees. The Panel finds that the use of a confusingly similar domain name to operate a parked website featuring hyperlinks to the Complainant’s competitors’ websites neither constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The finds that the Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel assumes that Respondent receives click-through fees from the hyperlinks featured on its website, thereby realizing a commercial gain as envisioned by Policy ¶ 4(b)(iv). Respondent is able to generate web traffic, and in turn realize a commercial gain, through the use of a domain name which is confusingly similar to Complainant’s mark. Respondent capitalizes on visitors’ mistaken belief that they are accessing information endorsed by Complainant. The Panel holds that this type of strategy constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstate-insurance.info> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 7, 2011
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