Allstate Insurance Company v. mga enterprises limited
Claim Number: FA1107001400140
Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Massachusetts, USA. Respondent is mga enterprises limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enconpassinsurance.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2011; the National Arbitration Forum received payment on July 26, 2011.
On July 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enconpassinsurance.com> 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 July 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@enconpassinsurance.com. Also on July 28, 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 August 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <enconpassinsurance.com> domain name is confusingly similar to Complainant’s ENCOMPASS INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <enconpassinsurance.com> domain name.
3. Respondent registered and used the <enconpassinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allstate Insurance Company, began operating under the ENCOMPASS mark in 2000 for the purpose of selling personal property and casualty insurance products for independent agents. Complainant sells its services and products through over 3,300 insurance agents in the United States. Complainant owns multiple trademark registrations for its ENCOMPASS INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,837,616 registered May 4, 2004).
Respondent, mga enterprises limited, registered the <enconpassinsurance.com> domain name on November 15, 2005. The disputed domain name resolves to a parked website that features hyperlinks to third-parties that offer products and services in competition with Complainant’s insurance products and services.
Respondent has been a respondent in a previous UDRP case between itself and Complainant in which the disputed domain name was transferred to Complainant. See Allstate Ins. Co. v. Domains by Proxy, Inc. / mga enterprises ltd., D2011-0053 (WIPO Mar. 6, 2011). Respondent has also been a respondent in six other prior UDRP proceedings in which the disputed domain names were transferred to their respective complainants. See Hilton Worldwide v. MGA Enterps. Ltd., D2010-1064 (WIPO Aug. 27, 2010); see also Humana Inc. v. MGA Enterps. Ltd., D2006-1405 (WIPO Feb. 23, 2007); see also Lauth Group v. MGA Enterps. Ltd., FA 1124267 (Nat. Arb. Forum Feb. 6, 2008); see also Exxon Mobile Corp. v. MGA Enterps. Ltd., FA 1124267 (Nat. Arb. Forum Aug. 26, 2006); see also Univision Commc’ns Inc. v. MGA Enterps. Ltd., FA 1336097 (Nat. Arb. Forum Sept. 6, 2010); see also Vanguard Trademark Holdings USA LLC v. MGA Enterps. Ltd., FA 1337424 (Nat. Arb. Forum Sept. 9, 2010).
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The first prong of this analysis is to determine whether or not Complainant owns rights in the ENCOMPASS INSURANCE mark. Previous panels have determined that a federal trademark registration is sufficient to establish rights in a mark for the purpose of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its trademark registrations for its ENCOMPASS INSURANCE mark with the USPTO (e.g., Reg. No. 2,837,616 registered May 4, 2004). See Annex D. Past panels have further held that a complainant is not required to register a trademark within the country where respondent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant has established rights in its ENCOMPASS INSURANCE mark pursuant to Policy ¶ 4(a)(i).
The second prong of Policy ¶ 4(a)(i) is whether the <enconpassinsurance.com> domain name is identical or confusingly similar to Complainant’s ENCOMPASS INSURANCE mark. Prior panels have found a domain name that contains a common misspelling of a complainant’s mark, along with the removal of a space and the addition of a generic top-level domain (“gTLD”), to be confusingly similar to the complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <enconpassinsurance.com> domain name features Complainant’s entire mark except for the replacement of the letter “m” with the letter “n” in the “ENCOMPASS” part of the mark. The disputed domain name also does not contain the space found in the mark and includes the gTLD “.com.” Based on established precedent, the Panel concludes that Respondent’s <enconpassinsurance.com> domain name is confusingly similar to Complainant’s ENCOMPASS INSURANCE mark under Policy ¶ 4(a)(i).
The Panel has determines that both prongs of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in respect of the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <enconpassinsurance.com> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations 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.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The Panel first examines whether Respondent is commonly known by the <enconpassinsurance.com> domain name. Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name and the respondent fails to present any evidence in support of a commonly known by finding. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In this case, the WHOIS information identifies the domain name registrant as “mga enterprises limited,” which the Panel determines is not similar to the <enconpassinsurance.com> domain name. Respondent has failed to present any evidence that it is commonly known by the disputed domain name, and the Panel fails to find any such evidence in the record. Consequently, the Panel concludes that Respondent is not commonly known by the <enconpassinsurance.com> domain name under Policy ¶ 4(c)(ii).
The Panel next examines whether Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have maintained that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent uses the disputed domain name to resolve to a parked website containing hyperlinks to a complainant’s competitors. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Respondent’s <enconpassinsurance.com> domain name resolves to a website that features hyperlinks, some of which are entitled, “Get a Quote in 20 Seconds,” “Free Auto Insurance Quote,” “AARP Health Insurance,” and “Encompass Insurance.” See Annex F. According to Complainant, these hyperlinks resolve to Complainant’s competitors in the insurance industry. As Respondent presumably receives click-through fees from the hyperlinks, the Panel concludes that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <enconpassinsurance.com> domain name pursuant to Policy ¶ 4(c)(iii).
While not a specific element under Policy ¶ 4(a)(ii), past panels have found that evidence of typosquatting is further affirmation that a respondent lacks rights and legitimate interests. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). In this case, Respondent’s <enconpassinsurance.com> domain name contains a common misspelling of Complainant’s ENCOMPASS INSURANCE mark that replaces the letter “m” with the letter “n.” As Complainant notes in its Complaint, the letter “m” and the letter “n” are adjacent on the QWERTY keyboard. The Panel determines that there is sufficient evidence of typosquatting, which is further affirmation that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
As the Panel concludes that Respondent has failed to meet any of the Policy ¶ 4(c) elements, the Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Complainant presents no evidence or allegations under Policy ¶ 4(b)(i) so the Panel elects to ignore analyzing Respondent’s registration and use under Policy ¶ 4(b)(i).
Policy ¶ 4(b)(ii) instructs the Panel to examine whether or not Respondent registered and uses the disputed domain name as a part of a pattern. Past panels have held that prior UDRP proceedings involving a respondent, in which disputed domain names were transferred to the respective complainants, were evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). As to the case at hand, Respondent has been a respondent in a previous UDRP case between itself and Complainant in which the disputed domain name was transferred to Complainant. See Allstate Ins. Co. v. Domains by Proxy, Inc. / mga enterprises ltd., D2011-0053 (WIPO Mar. 6, 2011). Respondent has also been a respondent in six other prior UDRP proceedings in which the disputed domain names were transferred to their respective complainants. See Hilton Worldwide v. MGA Enterps. Ltd., D2010-1064 (WIPO Aug. 27, 2010); see also Humana Inc. v. MGA Enterps. Ltd., D2006-1405 (WIPO Feb. 23, 2007); see also Lauth Group v. MGA Enterps. Ltd., FA 1124267 (Nat. Arb. Forum Feb. 6, 2008); see also Exxon Mobile Corp. v. MGA Enterps. Ltd., FA 1124267 (Nat. Arb. Forum Aug. 26, 2006); see also Univision Commc’ns Inc. v. MGA Enterps. Ltd., FA 1336097 (Nat. Arb. Forum Sept. 6, 2010); see also Vanguard Trademark Holdings USA LLC v. MGA Enterps. Ltd., FA 1337424 (Nat. Arb. Forum Sept. 9, 2010). Due to these prior UDRP proceedings, the Panel determines that Respondent registered and uses the <enconpassinsurance.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Policy ¶ 4(b)(iii) allows a complainant to demonstrate a respondent’s bad faith registration and use by providing evidence that respondent’s registration and use disrupts to the business of the complainant. Prior panels have concluded that a respondent’s registration and use of a disputed domain name to provide a parked website containing hyperlinks to a complainant’s competitors disrupts a complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent’s <enconpassinsurance.com> domain name resolves to a website that features hyperlinks to Complainant’s competitors in the insurance industry. See Annex F. As Internet users interested in Complainant’s insurance products and services may purchase similar products or services from Complainant’s competitors due to Respondent’s registration and use of the disputed domain name, the Panel holds that Respondent registered and uses the <enconpassinsurance.com> domain name in bad faith according to Policy ¶ 4(b)(iii).
Policy ¶ 4(b)(iv) instructs the Panel to decide whether Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Previous panels have maintained that a respondent’s registration and use of a disputed domain name to resolve to a parked website featuring hyperlinks to a complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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). As noted above, Respondent’s <enconpassinsurance.com> domain name resolves to a website featuring the aforementioned hyperlinks. As this Panel noted previously, Respondent likely profits from click-through fees from the hyperlinks. Thus, the Panel holds that Respondent’s registration and use of the <enconpassinsurance.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
While not a specific provision of Policy ¶ 4(b), prior panels have found that evidence of typosquatting is further support for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). As the Panel has already determined that Respondent has engaged in typosquatting, the Panel holds that Respondent’s typosquatting is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use under 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 <enconpassinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 20, 2011
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