national arbitration forum

 

DECISION

 

Allstate Insurance Company v. Ruben Garcia

Claim Number: FA1102001371267

 

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 Ruben Garcia (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alstateins.com>, registered with FABULOUS.COM PTY LTD.

 

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.

 

Tyrus R. Atkinson, Jr., 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 6, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <alstateins.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names.  FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@alstateins.com.  Also on February 22, 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 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

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

 

2.    Respondent does not have any rights or legitimate interests in the <alstateins.com> domain name.

 

3.    Respondent registered and used the <alstateins.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Allstate Insurance Company, provides insurance services in the United States under its ALLSTATE mark.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALLSTATE mark (e.g., Reg. No. 717,683 issued June 27, 1961).

 

Respondent, Ruben Garcia, registered the <alstateins.com> domain name on October 3, 2005.  The disputed domain name resolves to a website featuring advertisement hyperlinks to Complainant’s competitors.

 

Respondent has been a respondent in multiple prior UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants.  See Automattic Inc. v. Garcia, FA 1341002 (Nat. Arb. Forum Oct. 5, 2010); see also Hot Topic, Inc. v. Garcia, FA 1301618 (Nat. Arb. Forum Feb. 17, 2010); see also RingCentral, Inc. v. Garcia, FA 1301347 (Nat. Arb. Forum Feb. 17, 2010); see also Donaldson Co., Inc. v. Garcia, FA 1294372 (Nat. Arb. Forum Dec. 28, 2009).

 

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

 

In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the past panels determined that a trademark registration with the USPTO was sufficient to establish rights in a mark under Policy ¶ 4(a)(i).  In Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panel concluded that the complainant was not required to register the mark within the country respondent resides in.  Based on this precedent, the Panel holds that Complainant’s trademark registrations with the USPTO for its ALLSTATE mark (e.g., Reg. No. 717,683 issued June 27, 1961) is sufficient to establish rights under Policy ¶ 4(a)(i).

 

In CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002), the panel held that the removal of a letter to create a common misspelling did not sufficiently distinguish a disputed domain name from a complainant’s mark.  In Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), the panel found that the addition of a descriptive term also did not prevent the domain name from being confusingly similar to the mark.  In Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), the panel determined that the addition of a generic top-level domain (“gTLD”) is irrelevant because a gTLD is required in a domain name.  In this case, Respondent’s <alstateins.com> domain name includes Complainant’s ALLSTATE mark after removing the letter “l,” and adds an abbreviation of the descriptive term “insurance,” which describes Complainant’s insurance business, and the gTLD “.com.”  In compliance with the decisions of past panels, this Panel concludes that Respondent’s <alstateins.com> domain name is confusingly similar to Complainant’s ALLSTATE mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <alstateins.com> domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  In this case, the Panel finds Complainant made a sufficient prima facie case.  In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name.  However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panels determined that a respondent was not commonly known by a disputed domain name when the respondent did not present any evidence in support of such a fact, no evidence in the record supported such a fact, the complainant did not authorize the respondent to use the mark, and the WHOIS information was not similar to the domain name.  In the case at hand, Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that Respondent is commonly known by the <alstateins.com> domain name.  Complainant asserts that Respondent is not authorized to use Complainant’s ALLSTATE mark and that Complainant adopted the ALLSTATE mark before Respondent began using it in the domain name.  The WHOIS information identifies the domain name registrant as “Ruben Garcia,” which the Panel determines is not similar to the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the <alstateins.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Past panels, in Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), have held that the use of a disputed domain name to resolve to a website featuring hyperlinks to a complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  Respondent uses its <alstateins.com> domain name to resolve to a website that features hyperlinks to the websites of Complainant’s competitors in the insurance industry.  Consequently, the Panel holds that Respondent’s use of the <alstateins.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). 

 

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

 

Registration and Use in Bad Faith

 

In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) and Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003), the panels determined that evidence of prior UDRP proceedings in which the respondent was ordered to transfer domain names to the respective complainants is evidence of bad faith registration and use under Policy ¶ 4(b)(ii).  Respondent has been a respondent in multiple prior UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants.  See Automattic Inc. v. Garcia, FA 1341002 (Nat. Arb. Forum Oct. 5, 2010); see also Hot Topic, Inc. v. Garcia, FA 1301618 (Nat. Arb. Forum Feb. 17, 2010); see also RingCentral, Inc. v. Garcia, FA 1301347 (Nat. Arb. Forum Feb. 17, 2010); see also Donaldson Co., Inc. v. Garcia, FA 1294372 (Nat. Arb. Forum Dec. 28, 2009).  For this reason, the Panel finds Respondent’s registration and use of the <alstateins.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii).

 

Prior panel decisions, such as those in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), have confirmed that a respondent’s registration and use of a domain name to operate a website hosting hyperlinks to a complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  Respondent’s <alstateins.com> domain name resolves to a website that features third-party hyperlinks to Complainant’s competitors in the insurance industry.  Therefore, the Panel concludes that Respondent’s registration and use of the <alstateins.com> domain name was, and is, in bad faith pursuant to Policy ¶ 4(b)(iii).

 

When a respondent receives click-through fees from hyperlinks found on the website resolving from a confusingly similar disputed domain name, past panels have held, as they did in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), that such a use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  Respondent’s <alstateins.com> domain name resolves to a website that features the aforementioned hyperlinks.  Complainant alleges, and the Panel infers, that Respondent receives click-through fees each time an Internet user clicks on a hyperlink.  As Respondent is using a confusingly similar domain name, the Panel finds that Respondent is attempting to profit by creating confusion among Internet users as to Complainant’s affiliation with the disputed domain name.  Thus, the Panel determines that Respondent’s use and registration of the <alstateins.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).

 

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 <alstateins.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 29, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page