Allstate Insurance Company v. Paulo Kann
Claim Number: FA1102001375157
Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Massachusetts, USA. Respondent is Paulo Kann (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstatw.com>, registered with GO CHINA DOMAINS, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2011; the National Arbitration Forum received payment on February 28, 2011.
On February 28, 2011, GO CHINA DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <allstatw.com> domain name is registered with GO CHINA DOMAINS, INC. and that Respondent is the current registrant of the name. GO CHINA DOMAINS, INC. has verified that Respondent is bound by the GO CHINA DOMAINS, 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 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@allstatw.com. Also on February 28, 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 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <allstatw.com> domain name is confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstatw.com> domain name.
3. Respondent registered and used the <allstatw.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 mark (e.g., Reg. No. 717,683 issued June 27, 1961) in connection with insurance related products and services.
Respondent, Paulo Kann, registered the disputed domain name on November 5, 2009. The disputed domain name resolves to pay-per-click advertising website and features a variety of advertising links concerning the field of insurance, including links to Complainant’s direct competitors.
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 asserts rights in its ALLSTATE mark by virtue of its registrations of the mark with the USPTO (e.g., Reg. No. 717,683 issued June 27, 1961). The Panel finds that Complainant’s longstanding registration of the mark conclusively establishes Complainant’s rights in the mark pursuant to 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 Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant asserts that Respondent’s <allstatw.com> domain name is confusingly similar to Complainant’s ALLSTATE mark. The disputed domain name merely replaces the letter “e” in the mark with the letter “w” in the domain name. As required, the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the alteration of a single letter of Complainant’s mark, coupled with the addition of the gTLD, does not create a domain name distinct from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that, for the purposes of Policy ¶ 4(a)(i), Respondent’s <allstatw.com> domain name is confusingly similar to Complainant’s ALLSTATE mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. Upon establishment of such a prima facie case, which the Panel finds Complainant has made here, the burden shifts to Respondent to come forth with evidence that would prove Respondent does have rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent’s failure to respond results in its failure to uphold its burden and allows the Panel to presume that Respondent lacks any right or legitimate interest in the domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Despite the allowable presumption in favor of Complainant, the Panel elects to review the record in its entirety to make a complete determination as to Policy ¶ 4(a)(ii) rights and legitimate interests.
Complainant alleges that Respondent is not commonly known by the <allstatw.com> domain name or by the ALLSTATE mark. The WHOIS information indicates that the registrant of the disputed domain name is “Paulo Kann,” which the Panel finds is not similar in any way to the disputed domain name. Based on the evidence present, the Panel finds that Respondent is not commonly known by the <allstatw.com> domain name and thus lacks rights and legitimate interests in the disputed domain name pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent is using the disputed domain name to feature pay-per-click advertisements to Complainant’s competitors in the insurance industry, likely receiving commercial gain each time an Internet users selects one of the displayed links and clicks on it. The Panel finds that Respondent’s use of the disputed domain name cannot be said to be one 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). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
Respondent’s disputed domain name takes advantage of a common typographical error by replacing a single letter in Complainant’s ALLSTATE mark with a letter adjacent on the QWERTY keyboard. The Panel finds that this amounts to typosquatting which can be said to provide independent evidence that Respondent lacks rights and legitimate interests in the disputed domain name 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 or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s disputed domain name resolves to a website the features links to Complainant’s competitors in the insurance industry. An Internet user searching for Complainant may instead find themselves on Respondent’s website and may click on one or more of the displayed links, thereby finding themselves at the website of an insurance provider other than Complainant. The Panel finds that this causes a disruption to Complainant’s business and as such is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); 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).”).
Respondent’s registration and use of the disputed domain name likely benefits Respondent commercially by way of click-through or other fees paid to Respondent when visitors to Respondent’s resolving website click on one of the displayed advertising links. The Panel finds that Respondent’s registration and use of a confusingly similar disputed domain name, that attempts to profit off of Internet users’ likely belief that the disputed domain name and resolving website are in some way affiliated with Complainant, is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See 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); 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)).
As established above, Respondent is engaging in typosquatting through its registration and use of a disputed domain name that relies on a common typographical error, namely the replacement of a single letter of Complainant’s mark with one adjacent on the QWERTY keyboard. The Panel finds that typosquatting, in and of itself, is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Policy 4(a)(iii) is 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 <allstatw.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 29, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page