Allstate Insurance Company v. Brian McFedries
Claim Number: FA1501001601235
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Brian McFedries (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstate-lifeinsurance.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2015; the National Arbitration Forum received payment on January 22, 2015.
On January 22, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <allstate-lifeinsurance.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2015 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-lifeinsurance.com. Also on January 23, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant, Allstate Insurance Company (“Allstate”), owns approximately 100 active U.S. trademark applications and registrations (dating to 1961) that encompass “ALLSTATE” for a wide range of goods and services, including but not limited to registrations for insurance services, investment advisory services, mortgage lending, and financial services. Allstate also owns substantial common law rights to “ALLSTATE” marks (as a result of continuous business use of “ALLSTATE” since Allstate’s inception more than 80 years ago), and numerous U.S. state law registrations for “ALLSTATE” marks. Furthermore, Allstate owns numerous trademark registrations and/or common law rights encompassing “ALLSTATE” in many foreign jurisdictions including but not limited to Canada, the European Union and India. The Complaint refers to all of these applications, registrations and rights (U.S., state or foreign) collectively as the “‘ALLSTATE’ Mark.” Examples of registrations of the “ALLSTATE” Mark include but are not limited to:
The ‘683, ‘091, ‘187 and ‘784 Registrations are active and “incontestable” under U.S. law.
FACTUAL AND LEGAL GROUNDS
Introduction to Allstate Insurance Company
Allstate is the largest publicly-held personal lines property and casualty insurer in the United States and a “FORTUNE® 100” company having more than 60,000 employees and representatives. In 2013, Allstate’s revenues and assets exceeded US$34 billion and US$120 billion, respectively. Founded in 1931, Allstate first became publicly traded in 1993 (NYSE: ALL) and its market capitalization exceeded $26 billion in 2014. Additional information about Allstate is available at its website at the URL http://www.allstate.com.
Since its inception more than 80 years ago, Allstate has continually used the “ALLSTATE” Mark for various goods and services. During that time, Allstate has expended hundreds of millions (if not billions) of today’s dollars on advertising and promoting the “ALLSTATE” Mark. In addition to its own advertising and promotional efforts, numerous print, radio and television media worldwide have featured articles and/or programs about Allstate. Allstate has also won many awards, including but not limited to:
In view of the above, Allstate’s “ALLSTATE” Mark has become famous and commands tremendous worldwide goodwill and recognition.
As part of its business, Allstate became the registrant of the domain name “allstate.com” in 1995 and launched a corresponding web site soon thereafter. Allstate is also the registrant of thousands of other domain names featuring the “ALLSTATE” Mark, including but not limited to (Allstate registration date shown in parentheses):
• “allstate.net” (1997)
• “allstate.org” (1998)
• “allstatelifeinsurance.com” (2002)
• “allstatelifeinsurance.net” (2002)
• “allstate-insurance.com” (2002)
• “allstateinsurancecompany.com” (2004)
• “insurance-allstate.com” (2008)
• “car-insurance-allstate.com” (2009)
• “carinsurancebyallstate.com” (2010)
Because of the fame and renown of Allstate and the “ALLSTATE” Mark, cybersquatters frequently seek to register domain names featuring the “ALLSTATE” Mark. Allstate defends itself against cybersquatting, and has recovered many domain names from cybersquatters, including but not limited to:
· “carinsuranceallstate.com” (Allstate Ins. Co. v. Fundacion Private Whois / Domain Administrator, FA 1535144 (NAF Jan. 29, 2014));
· “allstateinsurancequotes.org” (Allstate Ins. Co. v. Jeremy Ehrenthal / East Coast Health Ins., FA 1426920 (NAF Feb. 28, 2012));
· “allstateflod.com” (Allstate Ins. Co. v. Whois Privacy Service, D2012-0183 (WIPO March 27, 2012));
· “allstatefiancial.com,” “allstatefinacial.com,” “myallstatefinancal.com,” “myallstatefinancail.com” and “myallstatefiancial.com” (Allstate Ins. Co. v. Mike Morgan, FA 1426490 (NAF March 7, 2012));
· “allstateinteractivequote.us” and “allstatenet.us” (Allstate Ins. Co. v. Integrated Capital Group, FA 1392593 (NAF July 13, 2011)); and
· “allstatescottsdale.com” (Allstate Ins. Co. v. Sean Olivier, FA 1390705 (NAF July 13, 2011)).
UDRP panelists have found that the “ALLSTATE” Mark is, inter alia, “famous” and “well known.” For example:
Similarly, the U.S. Patent and Trademark Office (“USPTO”) has recognized the fame of Allstate’s “ALLSTATE” Mark. For example, in a USPTO office action denying registration of a third party’s proposed mark “YOU'RE IN GOOD HANDS WITH ALLSTATE” (U.S. Serial No. 85132070), the USPTO stated that “[a]lthough Allstate is not connected with the goods and/or services provided by applicant under the applied-for mark, Allstate and the Good Hands marks are so famous that consumers would presume a connection.”
The Registrant-Respondent
According to WHOIS records, Respondent “Brian McFedries” (“Respondent”) is the registrant for “allstate-lifeinsurance.com” (the “Disputed Domain Name”). Respondent became the registrant of the Disputed Domain Name in June 2014, more than 80 years after Allstate began using the “ALLSTATE” Mark and approximately 20 years after Allstate became the registrant of “allstate.com.”
Respondent appears to operate a web site accessible via the Disputed Domain Name (“Respondent’s Web Site”) at the URL http://ceglife.com/bmcfed.html that features insurance offerings (and links to insurance offerings) that compete with Allstate’s insurance offerings. Allstate does not have any relationship or association with Respondent. Allstate has not authorized Respondent to use Allstate’s “ALLSTATE” Mark, or to register domain names incorporating the “ALLSTATE” Mark.
Legal Framework
In order to prevail on a complaint, a complainant must prove that the following three elements are present. See UDRP Policy ¶4(a)(i)-(iii).
[a.] The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; UDRP Policy ¶4(a)(i); UDRP Rule 3(b)(ix)(1).
Allstate has rights to the “ALLSTATE” Mark, as evidenced by the ‘683, ‘091, ‘187 and ‘784 Registrations, as well as the “ALLSTATE LIFE” Mark, as evidenced by the ‘938 Registration. Registrations’. These registrations are prima facie evidence of Allstate’s valid rights to the “ALLSTATE” and “ALLSTATE LIFE” Marks under UDRP Policy ¶4(a)(i). See, e.g., Allstate Ins. Co. v. Stavros Tosounidis, FA 1389795 (NAF July 7, 2011).
The Disputed Domain Name, “allstate-lifeinsurance.com,” is effectively identical, or at the very least confusingly similar, to Allstate’s “ALLSTATE” and “ALLSTATE LIFE” Marks.
As a threshold matter, the additional term “.com” in the Disputed Domain Name has no impact on the question of whether the Disputed Domain Name is confusingly similar to the “ALLSTATE” and “ALLSTATE LIFE” Marks because it corresponds to a required signifier of a common generic Top Level Domain (“gTLD”). See Research in Motion Limited v. Input Inc, Domain Manager, D2011-2197 (WIPO March 13, 2012) (finding with a “.com” domain name that “[t]he top level domain of the disputed domain name is to be ignored for the purposes of assessing similarity as it is a functional requirement of the domain name system”).
Similarly, the inclusion of a hyphen and “lifeinsurance” or “insurance” in the Disputed Domain Name does not mitigate the confusing similarity between “allstate-lifeinsurance.com” and Allstate’s “ALLSTATE” or “ALLSTATE LIFE” Marks. See, e.g., Am. Family Life Assurance Co. of Columbus v. defaultdata.com a/k/a Brian Wick, FA 123896 (NAF Oct. 14, 2002) (“It is simply inconceivable to the Panel, given the long-term use by [c]omplainant of its mark AFLAC and the resulting widespread public recognition attained by that mark both taken in view of [c]omplainant's activities in providing its insurance services under its AFLAC marks and the extensive promotion that [c]omplainant provided of its mark AFLAC, that an Internet user familiar with the mark AFLAC would think that a web site accessible by <aflacinsurance.com> was not affiliated in some manner with [c]omplainant.”). Even if these terms were relevant, and they are not, Allstate has rights to variants of the “ALLSTATE” Mark featuring these terms, including its “ALLSTATE LIFE” Mark.
In view of the above, the Disputed Domain Name is effectively identical to Allstate’s “ALLSTATE” and “ALLSTATE LIFE” Marks – or at least confusingly similar thereto – and Allstate has proven the first element of UDRP Policy ¶4(a). See also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (NAF Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element . . . .”).
[b.] The Respondent has no rights to or legitimate interests in respect of the domain name; UDRP Policy ¶4(a)(ii); UDRP Rule 3(b)(ix)(2).
Respondent has no rights to or legitimate interests in the Disputed Domain Name, “allstate-lifeinsurance.com.”
As a threshold matter, to prove the second element of UDRP Policy ¶4(a), Allstate only needs to establish a prima facie case that Respondent lacks rights to and legitimate interests in the Disputed Domain Name. Then the burden shifts to Respondent to prove that Respondent does have rights to or legitimate interests in the Disputed Domain Name. See, e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (NAF Aug. 18, 2006). This initial burden on the complainant is “light.” AOL LLC v. Gerberg, FA 780200 (NAF Sept. 25, 2006).
Turning to the merits, Allstate first reiterates that it does not have any relationship or association with Respondent. Moreover, Allstate has not authorized Respondent to use Allstate’s “ALLSTATE” Mark, or to register domain names incorporating the “ALLSTATE” Mark.
Second, Respondent has not used and is not using the Disputed Domain Name “in connection with a bona fide offering of goods or services” pursuant to UDRP Policy ¶4(c)(i), and has not made and is not “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” pursuant to UDRP Policy ¶4(c)(iii).
In this regard, when Internet users interested in Allstate, for example, type the Disputed Domain Name into the address bar of web browsing software, they are erroneously directed to Respondent’s Web Site featuring third-party insurance offerings (and links to insurance offerings) that compete with Allstate’s offerings. As another example, Internet users are erroneously directed to the Disputed Domain Name when they input terms from the Disputed Domain Name (including the “ALLSTATE” Mark) into a search engine and click on search engine result links.
As stated in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (NAF 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 [UDRP] Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶4(c)(iii).” See also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006). Similarly, use based on exploitation of consumer confusion caused by the Disputed Domain Name’s confusing similarity to the “ALLSTATE” Mark and/or Allstate’s domain names also is not qualifying activity under UDRP Policy ¶4(c)(i) and (iii). See, e.g., Am. Family Life Assurance Co. of Columbus v. defaultdata.com a/k/a Brian Wick, FA0208000123896 (NAF Oct. 14, 2002) (finding no rights or legitimate interests where “respondent, in choosing a domain name that at its essence completely incorporates [c]omplainant's mark AFLAC and appends to it the generic term ‘insurance’, not only has intentionally sought to create a confusingly similar name but also is opportunistically exploiting Internet user confusion by diverting, through re‑direction and diversion, Internet users away from [c]omplainant's site to [r]espondent's web site for the latter's own benefit.”); Big Dog Holdings, Inc. v. Day, FA 93554 (NAF Mar. 9, 2000) (finding no legitimate use when respondent was diverting consumers to its own website by using complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (NAF Mar. 21, 2000) (finding that use of complainant’s mark “as a portal to suck surfers into a site sponsored by respondent hardly seems legitimate”).
Other panels have found that a respondent’s use of a disputed domain name to provide a website featuring competing hyperlinks is not qualifying activity under UDRP Policy ¶4(c)(i) and (iii). See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007).
Third, further to UDRP Policy ¶4(c)(ii), nothing in the public record (including WHOIS records) suggests that Respondent is commonly known by the Disputed Domain Name. See Tercent Inc. v. Yi, FA 139720 (NAF Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that respondent is commonly known by the disputed domain name, is a factor in evaluating Policy ¶4(c)(ii)); see also Gallup Inc. v. Amish Country Store, FA 96209 (NAF Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark).
Finally, in keeping with the burden shifting associated with this element of UDRP Policy ¶4(a), if Respondent fails to respond to this Complaint, the panel may construe such a failure as an implicit admission that Respondent lacks rights to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (NAF June 29, 2004) (“The failure of respondent to respond to the complaint functions both as an implicit admission that respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that complainant’s reasonable allegations are true.”); see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (NAF July 31, 2000) (holding that respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
In view of the above, Allstate has, at the very least, met its burden under the second element in Policy ¶4(a), and has proven that Respondent has no rights to or legitimate interests in the Disputed Domain Name.
[c.] The domain name was registered and is being used in bad faith; UDRP Policy ¶4(a)(iii); UDRP Rule 3(b)(ix)(3).
Respondent registered and is using “allstate-lifeinsurance.com” in bad faith.
First, further to UDRP Policy ¶4(b)(iii), Respondent has pointed the Disputed Domain Name to Respondent’s Web Site. Respondent’s Web Site features third-party insurance offerings (and links to insurance offerings) that compete with Allstate’s offerings and accordingly disrupt Allstate’s business. Indeed, Internet users that intended to view and potentially purchase Allstate’s insurance policies may end up buying competing policies after mistakenly visiting Respondent’s Web Site. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (NAF July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name “eebay.com” in bad faith where the respondent has used the domain name to promote competing auction sites); S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); See Am. Airlines, Inc. v. Tex. Int’l Prop. Associates, FA 914854 (NAF Apr. 10, 2007) (holding that where the respondent’s website featured links to complainant’s and others’ websites, the respondent’s use of a disputed domain name that was confusingly similar to the complainant’s mark constituted disruption to complainant’s business under UDRP Policy ¶4(b)(iii)).
Second, further to UDRP 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 Allstate’s “ALLSTATE” Mark. Quite simply, Respondent capitalizes on visitors’ mistaken belief that they are accessing information that Allstate endorses. This business model 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 (NAF 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 (NAF 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); H-D Michigan, Inc. v. Petersons Auto, FA 135608 (NAF Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its website by using the complainant’s marks); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (NAF Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Even if Respondent alleges that it did not have actual knowledge of the “ALLSTATE” Mark (although it is difficult to see how Respondent could not have actual knowledge given the fame of Allstate’s “ALLSTATE” Mark), at least the ‘683, ‘091, ‘187 and ‘784 Registrations 4 bestow upon Respondent constructive notice of Allstate’s rights in the “ALLSTATE” Mark. Respondent’s registration of a domain name which is identical and confusingly similar to Allstate’s trademark, in spite of Respondent’s actual or constructive knowledge of Allstate’s rights in the mark, is evidence of bad faith registration and use pursuant to UDRP Policy ¶4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (NAF Oct. 4, 2002) (“complainant’s OXICLEAN mark is listed on the Principal Register of the [U.S. Patent and Trademark Office], a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the [c]omplainant’s mark when it registered the subject domain name.”); Albrecht v. Natale, FA 95465 (NAF Sept. 16, 2000) (finding registration in bad faith where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated complainant’s name); Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
For at least the above reasons, Allstate has proven that Respondent registered and is using the Disputed Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
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.”).
Complainant uses the ALLSTATE trademark in its insurance and related financial businesses. The ALLSTATE mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 717,683, registered June 27, 1961). A registration with a governmental authority, such as the USPTO, is sufficient evidence of Complainant’s interests in the registered mark under Policy ¶4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, Complainant has satisfactorily demonstrated its rights under Policy ¶4(a)(i).
Complainant claims the <allstate-lifeinsurance.com> domain name takes its entire mark and merely adds, “lifeinsurance,” a generic term which relates to ALLSTATE insurance company’s life insurance business. Likewise, adding the hyphen to the domain name does nothing to distinguish the domain name from the trademark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business); Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The gTLD must be disregarded when considering whether or not a domain name is confusingly similar to a mark under Policy ¶4(a)(i) because every domain name requires either a gTLD or ccTLD. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). To hold otherwise would eviscerate the UDRP. The disputed domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known as <allstate-lifeinsurance.com> domain name and has never been licensed by Complainant to utilize the ALLSTATE mark in any manner. The WHOIS states “Brian McFedries” is the registrant of record for the disputed domain name. There is no obvious connection between that name and <allstate-lifeinsurance.com>. Respondent has provided no information suggesting Respondent is known as <allstate-lifeinsurance.com>. Therefore, there is no basis for finding Respondent is commonly known as <allstate-lifeinsurance.com> under Policy ¶4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
The domain name forwards to another web site promoting competing insurance offerings from CEG insurance services. The disputed domain name is not used in connection with a bona fide offerings under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See 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).”). It is clear Respondent is using Complainant’s mark to falsely promote Respondent’s life insurance business.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is disrupting Complainant’s business by using a domain name incorporating Complainant’s entire mark to promote Respondent’s competing insurance offerings. This is true. Such a use constitutes bad faith registration and use pursuant to Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Respondent is profiting because Internet users might believe Complainant is associated with the <allstate-lifeinsurance.com> domain name and its underlying content. Respondent only uses the domain name to forward to a CEG insurance company website that directly competes with ALLSTATE. Such a use constitutes bad faith registration and use under Policy ¶4(b)(iv). See 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).
Complainant claims Respondent registered the domain name with actual knowledge of Complainant’s interest in the ALLSTATE trademark. Respondent is located in California and is in the insurance business. It is inconceivable to this Panel that Respondent has never heard of Complainant at some time during the course of Complainant’s 80 year history of selling insurance. Clearly, Respondent actually knew about Complainant’s mark and intended to profit by using it. This constitutes bad faith registration and use under Policy ¶4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. . . Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶4(a)(iii).”) .
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <allstate-lifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, February 25, 2015
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