Allstate Insurance Company v. Reed Mueller
Claim Number: FA1102001371156
Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Massachusetts, USA. Respondent is Reed Mueller (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstateinsuranceauto.com>, registered with Moniker Online Services, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2011; the National Arbitration Forum received payment on February 7, 2011.
On February 4, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <allstateinsuranceauto.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2011 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@allstateinsuranceauto.com. Also on February 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 March 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 makes the following assertions:
1. Respondent’s <allstateinsuranceauto.com> domain name is confusingly similar to Complainant’s ALLSTATE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <allstateinsuranceauto.com> domain name.
3. Respondent registered and used the <allstateinsuranceauto.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allstate Insurance Company, owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALLSTATE family of marks:
ALLSTATE 717,683 June 27, 1961
ALLSTATE 761,091 December 3, 1963
ALLSTATE 840,187 December 5, 1967
ALLSTATE.COM 3,164,784 October 31, 2006
Complainant uses its ALLSTATE marks in connection with the provision of insurance and related services throughout the United States.
Respondent, Reed Mueller, registered the disputed domain name on February 9, 2007. The <allstateinsuranceauto.com> domain name previously resolved to a pay-per-click advertising site featuring links related to the insurance industry including, “Auto Insurance Quotes,” “Auto Insurance,” and “Cheap Car Insurance.” The disputed domain name currently resolves to an inactive website.
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."
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.”).
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.
Complainant claims rights in its ALLSTATE mark based on its registration of the mark with the USPTO:
ALLSTATE 717,683 June 27, 1961
ALLSTATE 761,091 December 3, 1963
ALLSTATE 840,187 December 5, 1967
ALLSTATE.COM 3,164,784 October 31, 2006
Prior panels have found that a complainant’s registration of its mark with the USPTO conclusively establishes that complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, this Panel finds that Complainant’s longstanding registration of its ALLSTATE mark is evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <allstateinsuranceauto.com> domain name is confusingly similar to Complainant’s ALLSTATE.COM mark. Complainant asserts that the disputed domain name differs from Complainant’s ALLSTATE.COM mark only by the addition of the descriptive terms “insurance” and “auto.” The Panel finds that the addition of two terms, specifically those that relate to Complainant’s business, does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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). Therefore, the Panel concludes that, pursuant to the requirements of Policy ¶ 4(a)(i), Respondent’s <allstateinsuranceauto.com> domain name is confusingly similar to Complainant’s ALLSTATE.COM mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden then shifts to Respondent to provide evidence that it does have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). The Panel finds that the allegations set forth in the Complaint establish a prima facie case. Respondent’s lack of rights and legitimate interests may also be inferred from Respondent’s failure to submit a Response in these proceedings. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, in the interest of fairness, the Panel elects to consider the evidence on record to determine Respondent’s rights or legitimate interests in the disputed domain name, if any.
Complainant argues that it does not appear that Respondent is commonly known by the ALLSTATE mark or by any of the terms that comprise the <allstateinsuranceauto.com> domain name. The WHOIS information for the disputed domain name indicates the registrant is “Reed Mueller.” The Panel cannot find any evidence in the record that would support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel is left to conclude that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s <allstateinsuranceauto.com> domain name previously resolved to a pay-per-click advertising site featuring links related to the insurance industry including, “Auto Insurance Quotes,” “Auto Insurance,” and “Cheap Car Insurance.” Complainant argues that Respondent’s use of its ALLSTATE mark in a domain name resolving to a website that simply contained hyperlinks was not a bona fide offering of goods or services. Complainant further argues that Respondent was not making a noncommercial or fair use of the disputed domain name as the links on Respondent’s resolving website likely earned Respondent revenue in the form of click-through fees obtained when Internet users clicked on the sponsored links. The Panel agrees with Complainant’s arguments and finds that Respondent failed to use the disputed domain name for either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant alleges that, although Respondent has since changed the contents of the website resolving from the <allstateinsuranceauto.com> domain name, Respondent’s inactive holding of the disputed domain name still does not grant Respondent rights or legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent’s failure to make an active use of the disputed domain name is further evidence in support of the Panel’s findings that Respondent lacks rights and legitimate interests in the <allstateinsuranceauto.com> domain name under ¶¶ 4(c)(i) and 4(c)(iii) of the Policy. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that, until recently, Respondent’s disputed domain name resolved to a website featuring advertising links to the websites of Complainant and Complainant’s direct competitors. The Panel finds that Respondent’s registration and use of the disputed domain name to redirect Internet users to the competitors of Complainant constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that bad faith exists where Respondent registers and uses a disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Panel agrees and finds that Respondent’s registration and previous use of the disputed domain name to display pay-per-click advertising links to Complainant’s competitors in the insurance industry shows bad faith pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum 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).
Complainant indicates that at some point after Complainant contacted Respondent and informed Respondent of its infringing behavior, Respondent altered the content on its resolving website. Complainant contends that Respondent’s website resolving from the <allstateinsuranceauto.com> domain name currently fails to resolve to an active website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstateinsuranceauto.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 24, 2011
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