Allstate Insurance Company v. TELLNET DIRECT RESPONE SYSTEMS MAIN / TELLNET COMMUNICATIONS INC
Claim Number: FA1506001622622
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is TELLNET DIRECT RESPONE SYSTEMS MAIN / TELLNET COMMUNICATIONS INC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstate.center>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2015; the Forum received payment on June 3, 2015.
On June 4, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <allstate.center> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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.center. Also on June 5, 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.
A timely Response was received and determined to be complete on June 25, 2015.
On July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant holds many United States Patent and Trademark Office (“USPTO”) registrations for the ALLSTATE mark, the earliest of which holds the Registration Number 717,683 (registered June 27, 1961).
Complainant uses the mark in connection with its insurance offerings. Respondent’s <allstate.center> creates confusion in the mind of a reasonably prudent Internet user as there is a distinct similarity which follows from the domain’s insignificant addition of the “.center” generic top-level domain (“gTLD”) to the mark.
In respect of the disputed domain name, Respondent has no rights or legitimate interests. This point is demonstrated by an absence of any evidence which would support Respondent as commonly known by <allstate.center>. Further, the disputed domain name’s resolution to a pay-per-click page which directs Internet users to at least one competitor of Complainant lacks a bona fide offering of goods or services and fails to evince a legitimate noncommercial or fair use.
Bad faith registration and use of the <allstate.center> domain name under Policy ¶ 4(b)(iii) is present in this case as the resolving site diverts Internet users away from Complainant’s legitimate business offerings on the Internet and toward its competitors. Further, while Respondent presumably profits from such redirection, Policy ¶ 4(b)(iv) attraction for commercial gain should be found by this Panel. Finally, Respondent had actual or constructive knowledge of the ALLSTATE mark when registering and using the disputed domain name.
B. Respondent
Respondent contends as follows:
Without admitting any of the contentions made by Complainant in its Complaint, Respondent consents to transfer the <allstate.center> domain name, stating in its Response: “The Respondent consents to the remedy requested by the Complainant and agrees to [transfer/cancel] the disputed domain name(s) on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.”
Complainant has trademark rights in the ALLSTATE mark.
Respondent registered the at-issue domain name after Complainant acquired rights in ALLSTATE.
Respondent, via its formal Response to the Complaint, consents to having the at-issue domain name transferred to Complainant.
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:
(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.
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
Here, since there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Nat. Arb. Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the ALLSTATE mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <allstate.center> domain name is fashioned by simply adding the top-level domain name “.center” to Complainant’s ALLSTATE trademark. This change to the ALLSTATE mark is insufficient to materially distinguish the domain name from Complainant’s ALLSTATE trademark under the Policy. Therefore, the Panel finds that Respondent’s<allstate.center> domain name is identical to Complainant’s ALLSTATE trademark. See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“[T}he 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)”).
In light of the foregoing, Respondent’s consent-to-transfer the at-issue domain name to Complainant compels the Panel to order that the <allstate.center> domain name be transferred as requested. The Panel finds no reason to provide further analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstate.center> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 2, 2015
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