Complainant is Allstate Insurance Company of Northbrook, Illinois, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, P.C., United States of America.
Respondent is Private Whois Service of Nassau, Bahamas.
The disputed domain name <allstatr.com> is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On February 4, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 28, 2011.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 8, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The trademark upon which the Complaint is based is ALLSTATE. According to the documentary evidence and contentions submitted, the ALLSTATE trademark was first registered in the United States under U.S. Reg. No. 0717683 on June 27, 1961 for insurance services. Complainant also owns U.S. Reg. No. 0761091 as of December 3, 1963 and U.S. Reg. No. 0840187 as of December 5, 1967 for the same services. On October 31, 2006, Complainant obtained U.S. Reg. No. 3164784 for ALLSTATE.COM in connection with financial services.
Complainant is a well-known insurance company which was founded in 1931 and provides insurance services all over the United States. Complainant owns a large number of domain names containing the ALLSTATE trademark, including <allstate.com>, <allstate.org> and <allstate.net>, which were registered in the period of May 10, 1995 to July 17, 1998.
The disputed domain name <allstatr.com> was registered with Internet.bs Corp. on August 17, 2008. Complainant sent a cease and desist letter to Respondent on December 10, 2010. Complainant states that Respondent never replied.
Complainant argues that the disputed domain name is confusingly similar to the trademark in which Complainant has rights because (i) the incorporation of a mark in full within a disputed domain name is sufficient to establish confusingly similarity between the mark and the disputed domain name, particularly where the incorporated mark is well-known, because users are likely to believe that the trademark holder authorized or is controlling the website at the disputed domain name; (ii) a prior UDRP panel has determined that the ALLSTATE trademark is famous, (iii) the disputed domain name includes a common typographical error of Complainant's well-known ALLSTATE trademark, a practice which is known as “typosquatting”, and (iv) the content of the webpage that Internet users are directed to adds to the likelihood of confusion.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is not commonly known by the ALLSTATE trademark, but even if it were, any adoption of the confusingly similar “allstatr” name was done with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant's goodwill; (ii) Respondent's use of a privacy service provides evidence that Respondent is attempting to hide its activities from scrutiny; (iii) Respondent is not making a noncommercial use of the disputed domain name and the use of a well-known trademark or the misspelling of a well-known trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) bad faith exists where, as in the instant case, a respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website; (ii) bad faith exists where, as in the instant case, a respondent uses a well-known trademark and there can be no question that respondent knew or should have known about complainant's trademark rights before registering its domain name; (iii) the practice of typosquatting, of itself, is evidence of bad faith registration of a domain name; and (iv) the exploitation of the reputation of trademarks and profit from the diversion of Internet users is an indication of bad faith according to numerous previous decisions.
Respondent did not reply to Complainant’s contentions.
The consensus view is that Respondent’s default does not automatically result in a decision in favor of Complainant and that Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The Panel agrees with previous UDRP decisions relating to “typosquatting”, the practice of misspelling an element of the mark which has consistently been regarded as creating domain names confusingly similar to the relevant mark. See, e.g.Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201.
In the Panel’s view this is the position here. In fact, the disputed domain name incorporates Complainant’s registered trademark in its entirety except for the last letter, which is “r” rather than “e”, it being known that those two letters are displayed side by side in a computer’s keyboard. The circumstances of “typosquatting” in this case do create confusing similarity.
The likelihood of confusion is greater where the disputed domain name incorporates a famous or well-known trademark. The Panel notes that the notoriety of the ALLSTATE trademark has been confirmed in a previous UDRP decision. See Allstate Insurance Company v. Domain Supermarket, WIPO Case No. D2009-1175 (“Given its long and widespread use and extensive recognition, the ALLSTATE brand is among those that may be fairly described as famous or well known”).
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain name <allstatr.com> is clearly confusingly similar to the ALLSTATE trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The practice of using a proxy service to achieve registration of domain names creates a potential for abuse by cybersquatters. Such practice makes it difficult to review whether a respondent has rights or legitimate interests regarding a disputed domain name. While there can be valid reasons for a person wishing to protect privacy by means of a proxy service, the fact that the identity of the registrant is not disclosed by the registrar may not work against a complainant in making its case.
The Panel concurs with the finding of a previous panel that “the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’”. The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156. Therefore and taking into account the circumstances of this case, the Panel draws such a negative inference from Respondent’s use of a proxy service.
Also, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In fact, the website to which the disputed domain name resolves contains a variety of advertising links concerning the field of insurance and other subjects, including Complainant’s website. As one panel held before,“[t]he use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website is not developed by Respondent but provided by the Parking Service Provider.” See Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent by defaulting has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
In light of the reputation of the ALLSTATE trademark, the reproduction by Respondent of that trademark with a typographical error shows that Respondent in all likelihood knew of the existence of Complainant’s trademark and of its notoriety worldwide and intended to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s trademark. As one panel held before, “[t]yposquatting is inherently parasitic and of itself evidence of bad faith”. National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
This Panel also concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a further indication of bad faith. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant’s long standing trademark registrations. See, for instance, RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242. This practice is what some case precedents have termed as “opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
The Panel also finds that the use of the disputed domain name at a pay-per-click website containing links to competitors of Complainant is further evidence of bad faith registration and use of the disputed domain name by Respondent.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <allstatr.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: March 21, 2011
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