Allstate Insurance Company v. Protection Domain / ITWEB Domain Protection
Claim Number: FA1505001621872
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Protection Domain / ITWEB Domain Protection (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstateinsuranceonline.com>, registered with Visesh Infotecnics Ltd. d/b/a Signdomains.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2015; the Forum received payment on May 29, 2015.
After numerous requests, the Registrar, Visesh Infotecnics Ltd. d/b/a Signdomains.com, has not confirmed to the National Arbitration that the <allstateinsuranceonline.com> domain name is registered with Visesh Infotecnics Ltd. d/b/a Signdomains.com or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On June 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@allstateinsuranceonline.com. Also on June 15, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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’s Contentions
1. Complainant owns the ALLSTATE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 717,683, registered June 27, 1961). Complainant uses the ALLSTATE mark in connection with its insurance offerings, including life, accident, and health. The <allstateinsuranceonline.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name incorporates Complainant’s mark in its entirety, adds the generic words “insurance” and “online,” and attaches the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Nothing in the public record, including the WHOIS record, suggests that Respondent is commonly known by the disputed domain name. Further, Complainant has not authorized Respondent to use Complainant’s ALLSTATE mark or to register the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the domain name. Respondent uses the disputed domain name to divert Internet users seeking Complainant’s website to a website of Respondent for Respondent’s benefit. Internet users are erroneously directed to Respondent’s website, which features third-party insurance offerings that compete with Complainant’s offerings. See Compl., at Attached Ex. 8.
3. Respondent is using the disputed domain name in bad faith. Respondent’s disputed domain name features third-party insurance offerings that compete with and disrupt Complainant’s business. Respondent seeks financial gain by attracting Internet users to its website through use of Complainant’s mark. Further, Respondent had constructive and/or actual knowledge of Complainant’s mark at the time of registration.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <allstateinsuranceonline.com> domain name is confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstateinsuranceonline.com> domain name.
3. Respondent registered or used the <allstateinsuranceonline.com> domain name 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:
(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.
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 contends that it owns the ALLSTATE mark through its registration with the USPTO (e.g., Reg. No. 717,683, registered June 27, 1961). Complainant asserts that it uses the ALLSTATE mark in connection with its insurance offerings, including life, accident, and health. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also 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.”). Accordingly, even though Respondent reportedly resides in Panama, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant argues that the <allstateinsuranceonline.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name incorporates Complainant’s mark in its entirety, adds the generic words “insurance” and “online,” and attaches the gTLD “.com.” Previous panels have held that the addition of generic words to a registered mark is not sufficient to create distinctiveness. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Further, prior panels have repeatedly held that the addition of a gTLD is irrelevant to the analysis of confusing similarity. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel therefore finds that the disputed domain name is confusingly similar to the ALLSTATE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that nothing in the public record, including the WHOIS record, suggests that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name refers to “Protection Domain / ITWEB Domain” as the registrant of record. See Compl., at Attached Ex. 7. Further, Complainant contends that it has not authorized Respondent to use Complainant’s ALLSTATE mark or to register the disputed domain name. As Respondent has not provided any evidence to the contrary, the Panel finds Complainant’s contentions sufficient to establish Respondent’s lack of rights to the disputed domain name according to 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 that it is commonly known by the domain name).
Complainant argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the domain name. According to Complainant, Respondent uses the disputed domain name to divert Internet users seeking Complainant’s website to a website of Respondent for Respondent’s benefit. Complainant states that Internet users are erroneously directed to Respondent’s website, which features third-party insurance offerings that compete with Complainant’s offerings. See Compl., at Attached Ex. 8. Previous panels have found that use of a disputed domain name to offer competing third-party hyperlinks does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel concludes that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s disputed domain name features third-party insurance offerings that compete with and disrupt Complainant’s business. The Panel sees that Internet users may reach a website for “Allied Auto Insurance” through Complainant’s disputed domain name. See Compl. At Attached Ex. 8. Previous panels have found that the use of third-party hyperlinks that disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). This Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent seeks financial gain by attracting Internet users to its website through use of Complainant’s mark. According to Complainant, Respondent is able to generate web traffic, and in turn realize commercial gain, through the use of the domain name that incorporates Complainant’s mark. Prior panels have found that third-party hyperlinks are typically associated with referral fees, and a respondent’s use on its resolving website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Further, Complainant alleges that Respondent had constructive and/or actual knowledge of Complainant’s mark at the time of registration. Complainant claims that it is difficult to see how Respondent could not have actual knowledge, given the fame of the ALLSTATE mark. Further, Complainant insists that its USPTO registrations bestow upon Respondent constructive knowledge of the ALLSTATE mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstateinsuranceonline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 24, 2015
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