Allstate Insurance Company v. Falin McMellon
Claim Number: FA1703001721524
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Falin McMellon (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstate.claims> (the “Domain Name”), registered with GoDaddy.com, LLC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2017; the Forum received payment on March 13, 2017.
On March 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Domain 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” or “UDRP”).
On March 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2017 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.claims. Also on March 16, 2017, 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 March 20, 2017.
On April 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Founded in 1931, Complainant is the largest publicly-held personal lines property and casualty insurer in the United States. It is the registrant of the trademark ALLSTATE in many countries in relation to insurance services, including United States registration Nos. 0717683, registered on June 27, 1961 and 0761091, registered on December 3, 1963. It is also the registrant of United States trademark ALLSTATE.COM, No. 3164784, registered on October 31, 2006, and numerous domain names incorporating the word “allstate”.
The ALLSTATE mark is famous and well known, as has been demonstrated by Complainant and found by many UDRP panelists.
The Domain Name, registered by Respondent on December 20, 2016, is identical or confusingly similar to Complainant’s ALLSTATE mark.
Respondent appears to operate a web site accessible via the Domain Name that features links to third party insurance offerings that compete with Complainant’s insurance offerings. Complainant does not have nor has it ever had any relationship or association with Respondent and has not authorized Respondent to use its ALLSTATE mark on Respondent’s web site nor to register domain names incorporating the ALLSTATE mark.
Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not used and is not using the Domain Name “in connection with a bona fide offering of goods or services” pursuant to 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 Policy ¶ 4(c)(iii). Nothing in the public record (including WHOIS records) suggests that Respondent is commonly known by the Domain Name pursuant to UDRP Policy ¶ 4(c)(ii).
The Domain Name was registered and is being used in bad faith. Respondent’s web site features links to third party insurance offerings that compete with those of Complainant and accordingly disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii).
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 ALLSTATE mark. Respondent capitalizes on visitors’ mistaken belief that they are accessing information that Complainant endorses. This constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Even if Respondent alleges that he 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 that mark), Complainant’s U.S. registrations provide Respondent with constructive notice of Complainant’s rights in that mark. Respondent’s registration of a domain name which is identical and confusingly similar to Complainant’s trademark, in spite of such actual or constructive knowledge, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
ALLSTATE and ALLSTATE.COM are indeed registered as trademarks. However, Complainant does not have rights in “Allstate.Claims” because that mark is not registered with USPTO.
Respondent has legitimate interests in the Domain Name because Respondent legally purchased it when it became available. Respondent is not misleading or confusing to Complainant’s potential or current customers.
Based on previous legal cases regarding larger corporations trying to bully people into turning over rightful ownership of a domain name there are two main precedents that were set and are now policy in domain ownership disputes, namely if the owner of the domain name is using it in bad faith or is directing traffic to a competitor of the complainant’s business. Respondent is doing neither.
Based on this complaint, this Complainant would be filing a complaint if ANYONE owned 645 other domain extensions that pertain to the word “Allstate”, such as Allstate.Actor, Allstate.Academy, Allstate.Accountants, Allstate.Ads, Allstate.Africa, Allstate.Apartments, Allstate.Architect, Allstate.Art, Allstate.Associates, Allstate.Attorney, Allstate.Auction, Allstate.Auto, Allstate.Autos, Allstate.Bar, Allstate.Bargains, Allstate.Bet, Allstate.Build.
If Complainant would like to legally purchase and use the Domain Name it should make a reasonable offer at current market prices.
Complainant has established all the elements entitling it to the relief which it seeks.
Rules ¶15(a) 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."
Policy ¶4(a) requires that Complainant must prove each of the following three elements to obtain an order that the 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 has shown that it has rights in the trademark ALLSTATE. The Domain Name comprises the ALLSTATE mark together with the gTLD “.claims”, which does nothing to detract from the distinctiveness of Complainant’s mark and indeed evokes the very services Complainant provides. Accordingly, the Panel finds the Domain Name to be identical or confusingly similar to Complainant’s mark.
Policy ¶4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of Policy ¶4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the ALLSTATE mark is famous and widely known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
The WHOIS information associated with this case identifies Respondent as “Falin McMellon” and in the absence of any evidence in the record suggesting otherwise, the Panel concludes that Respondent is not commonly known by the Domain Name. See e.g., Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006).
Although Respondent purchased the Domain Name when it was available for registration, his registration of it was, as mentioned above, subject to the Policy, which provides that a domain name may be transferred to a trademark owner or cancelled under certain circumstances. Thus, Respondent’s mere registration of the Domain Name does not demonstrate rights or legitimate interests.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.8 (omitting citations, “a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis.”
Panels have found that “[r]espondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with [c]omplainant’s . . . services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o., FA1412001594837 (Forum Jan. 22, 2015).
The Panel finds Respondent responsible for the web site hosted by GoDaddy and for the links on that web site to competitors of Complainant. Accordingly Respondent has no rights or legitimate interests in respect of the Domain Name.
Policy ¶ 4(a)(iii) sets out the conjunctive requirement that Complainant establish both that Respondent has registered the Domain Name in bad faith and that Respondent is using the Domain Name in bad faith. Complainant invokes Policy ¶4(b)(iii) and (iv), which set out illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for purposes of Policy ¶4(a)(iii):
“(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
As mentioned, the Panel has found that Complainant’s ALLSTATE mark is famous and well known and that Respondent is to be held responsible for the links appearing on the website to which the Domain Name resolves.
As to Policy ¶4(b)(iii), although the Panel accepts Complainant’s assertion that the Domain Name disrupts Complainant’s business by directing Internet users to links to Complainant’s competitors, the Panel is not satisfied that Respondent is a competitor of Complainant.
As to Policy ¶4(b)(iv), the Panel is satisfied, on the balance of probabilities, that Respondent was aware of Complainant and its famous ALLSTATE mark when registering the Domain Name and that, by using the Domain Name to resolve to the GoDaddy parking page without taking steps to prevent the display of links to Complainant’s competitors, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s ALLSTATE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on that website.
Hence, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant 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.claims> Domain Name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 10, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page