national arbitration forum

 

DECISION

 

Allstate Insurance Company v. Charlie Kalopungi / AA7 Group Ltd

Claim Number: FA1102001371161

 

PARTIES

Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Massachusetts, USA.  Respondent is Charlie Kalopungi / AA7 Group Ltd (“Respondent”), Seychelles.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <allstatemotroclub.com> and <allstatenetwork.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

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 7, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <allstatemotroclub.com> and <allstatenetwork.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  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@allstatemotroclub.com and postmaster@allstatenetwork.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 John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <allstatemotroclub.com> domain name is confusingly similar to Complainant’s ALLSTATE MOTOR CLUB mark.

 

Respondent’s <allstatenetwork.com> domain name is confusingly similar to Complainant’s ALLSTATE.COM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <allstatemotroclub.com> and <allstatenetwork.com> domain names.

 

3.    Respondent registered and used the <allstatemotroclub.com>, <allstatenetwork.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Allstate Insurance Company, is a publicly held insurer that provides insurance services all over the United States. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for its ALLSTATE MOTOR CLUB mark (Reg. No. 759,366 issued October 29, 1963). Complainant also owns a USPTO trademark registration for its ALLSTATE.COM mark (Reg. No. 3,164,784 issued October 31, 2006).

 

Respondent, Charlie Kalopungi / AA7 Group Ltd, registered its <allstatemotroclub.com> and <allstatenetwork.com> domain names on June 7, 2010. Both disputed domain names resolve to generic pay-per-click links web pages that advertise for numerous third-parties offering insurance-related services in competition with Complainant.

 

Respondent has been the respondent in at least four other UDRP proceedings in which the domain names were transferred to the respective complainants. See Autosales Inc. v. Kalopungi, D2010-1081 (WIPO Aug. 26, 2010); see also Credit Industriel et Commercial S.A. v. Kalopungi, D2010-1914 (WIPO Jan. 19, 2011); see also Five Star JV LLC v. Kalopungi, FA 1357736 (Nat. Arb. Forum Dec. 20, 2010); see also Florida Dept. of Mgmt. Servs. V. Kalopungi, D2010-1389 (WIPO Oct. 28, 2010).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for its ALLSTATE MOTOR CLUB mark (Reg. No. 759,366 issued October 29, 1963). The Panel finds that a USPTO trademark registration is sufficient evidence to conclude that Complainant has rights in the ALL STATE MOTOR CLUB for the purposes of Policy ¶ 4(a)(i), regardless of the location of Respondent’s residence or business operations. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Complainant also owns a USPTO trademark registration for its ALLSTATE.COM mark (Reg. No. 3,164,784 issued October 31, 2006). The Panel again determines that Complainant has provided substantive evidence through this trademark registration of its rights in the ALLSTATE.COM mark pursuant to Policy ¶ 4(a)(i), even when Respondent’s residence or business operations are outside the U.S. 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).    

 

Complainant argues that Respondent’s <allstatemotroclub.com> domain name is confusingly similar to Complainant’s ALL STATE MOTOR CLUB mark because the only differences are the deletion of the spaces between terms, the transposition of the letters “r” and “o” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that transposing two letters of Complainant’s does not alleviate confusing similarity. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel also finds that deleting spaces and adding a gTLD are not relevant to the confusingly similar analysis because spaces are not permitted and gTLDs are required in domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel concludes that Respondent’s <allstatemotroclub.com> domain name is confusingly similar to Complainant’s ALLSTATE MOTOR CLUB mark.   

 

Complainant also asserts that Respondent’s <allstatenetwork.com> domain name is confusingly similar to Complainant’s ALLSTATE.COM mark as the only difference is the insertion of the generic term “network” into Complainant’s mark. The Panel finds that such a minor change does not distinguish the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business). The Panel therefore holds that Respondent’s <allstatenetwork.com> domain name is confusingly similar to Complainant’s ALLSTATE.COM mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names and accompanies such allegations with sufficient evidence to establish the prima facie case required by Policy ¶ 4(a)(ii). Subsequently, Respondent now bears the burden to demonstrate that it does possess rights and legitimate interests in the disputed domain names. Since Respondent has failed to respond to the Complaint, however, the Panel finds Complainant’s allegations to be true and holds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names). In an effort to make a complete determination on the issue of Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.

 

Complainant alleges that Respondent is not commonly known by the <allstatemotroclub.com> and <allstatenetwork.com> domain names. The WHOIS information for the disputed domain names lists the registrant as “Charlie Kalopungi / AA7 Group Ltd,” which does not appear connected with the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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 contends that Respondent’s <allstatemotroclub.com> and <allstatenetwork.com> domain names resolve to generic websites populated with pay-per-click links. Complainant argue that these links advertise third-parties operating within the insurance industry in competition with Complainant. The Panel finds that registering the disputed domain names in order to maintain such pay-per-click links web pages is not consistent with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).

 

Complainant asserts that Respondent’s <allstatemotroclub.com> domain name differs from Complainant’s mark only by a minor misspelling: the transposition of the letters “r” and “o.” The Panel finds that Respondent registered this misspelling of the disputed domain name in order to capitalize on the fame of Complainant’s mark and divert unsuspecting Internet users to Respondent’s resolving website. The Panel concludes that this practice is typosquatting, which is evidence supporting a lack of rights and legitimate interests on the part of Respondent under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant’s LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights and legitimate interests in the disputed domain names”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in at least four other UDRP proceedings in which the domain names at issue were transferred to the respective complainants. See Autosales Inc. v. Kalopungi, D2010-1081 (WIPO Aug. 26, 2010); see also Credit Industriel et Commercial S.A. v. Kalopungi, D2010-1914 (WIPO Jan. 19, 2011); see also Five Star JV LLC v. Kalopungi, FA 1357736 (Nat. Arb. Forum Dec. 20, 2010); see also Florida Dept. of Mgmt. Servs. V. Kalopungi, D2010-1389 (WIPO Oct. 28, 2010). Complainant alleges that this pattern of registering domain names that appropriate others’ mark serves as evidence of Respondent’s bad faith registration and use pursuant to Policy          ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).

 

Complainant alleges that Respondent’s <allstatemotroclub.com> and <allstatenetwork.com> domain names redirect Internet users to websites that facilitate competition with Complainant and disrupt Complainant’s business by advertising pay-per-click links to Complainant’s competitors in the insurance industry. The Panel finds that attempting to redirect Complainant’s intending customers to Complainant’s competitors under Complainant’s mark thus represents bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).

 

Complainant asserts that Respondent’s <allstatemotroclub.com> and <allstatenetwork.com> domain names are intended to attract Internet users seeking Complainant’s insurance products and services. When the Internet users are diverted to Respondent’s websites and then click on any of the third-party links, the Respondent presumably receives compensation in the form of “click-through” fees. The Panel finds Respondent’s efforts to mislead Internet users and attract Complainant’s business for its own commercial gain constitute bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

The Panel has previously found that Respondent is engaged in typosquatting. This behavior is further evidence supporting the Panel’s finding that Respondent registered and uses the <allstatemotroclub.com> and <allstatenetwork.com> domain names in bad faith according to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatologica.com> domain name was a “simple misspelling” of the complainant’s DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <allstatemotroclub.com> and <allstatenetwork.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 22, 2011

 

 

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