national arbitration forum

 

DECISION

 

Allstate Insurance Company v. Integrated Capital Group

Claim Number: FA1105001389770

 

PARTIES

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 Integrated Capital Group (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <allstateinteractivequote.biz>, <allstateinteractivequote.org>, <allstateinteractivequote.com>, and <allstateinteractivequote.info>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2011; the National Arbitration Forum received payment on May 20, 2011.

 

On June 3, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <allstateinteractivequote.biz>, <allstateinteractivequote.org>, <allstateinteractivequote.com>, and <allstateinteractivequote.info> domain names is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@allstateinteractivequote.biz, postmaster@allstateinteractivequote.org, postmaster@allstateinteractivequote.com, and postmaster@allstateinteractivequote.info.  Also on June 7, 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 June 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.

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 <allstateinteractivequote.biz>, <allstateinteractivequote.org>, <allstateinteractivequote.com>, and <allstateinteractivequote.info> domain names are confusingly similar to Complainant’s ALLSTATE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <allstateinteractivequote.biz>, <allstateinteractivequote.org>, <allstateinteractivequote.com>, and <allstateinteractivequote.info> domain names.

 

3.    Respondent registered and used the <allstateinteractivequote.biz>, <allstateinteractivequote.org>, <allstateinteractivequote.com>, and <allstateinteractivequote.info> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Allstate Insurance Company, owns the ALLSTATE mark which it uses in connection with its insurance services, including allowing consumers to obtain a quote for Complainant’s insurance services directly online. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 717,683 issued June 27, 1961).

 

Respondent, Integrated Capital Group, registered the disputed domain names on January 27, 2011. The domain names each resolve to websites which display a variety of advertising links to Complainant and Complainant’s competitors in the insurance industry.

 

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 contends that it has established rights in the ALLSTATE mark through registration with federal trademark authorities. Panels have found in the past that registration with a federal trademark authority is sufficient for a complainant to demonstrate that it has obtained rights in a mark. 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Complainant has provided evidence of trademark registrations for its ALLSTATE mark with the USPTO (e.g., Reg. No. 717,683 issued June 27, 1961). The Panel finds that Complainant has rights in the ALLSTATE mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain names are confusingly similar to its ALLSTATE mark. Panels have determined that the addition of a generic top-level domain (“gTLD”) is insufficient to distinguish a domain name from a trademark. See 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”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Furthermore, the addition of descriptive terms fail to distinguish the domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Respondent’s domain names all fully-incorporate Complainant’s mark. Each of the disputed domain names is followed by the descriptive phrase “interactivequote.” Finally, each domain name is also followed by a gTLD. The Panel finds that the addition of a descriptive phrase and a gTLD fails to distinguish the domain names from Complainant’s mark. The Panel finds that the disputed domain names are confusingly similar to the ALLSTATE mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Once a complainant has made an assertion and supported it by making a prima facie case, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the domain names. 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”); see also 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”). The Panel finds that Complainant has made a prima facie  case. Once the burden shifts to the respondent, if the respondent has not responded to the Complaint, the panel may assume that the respondent lacks all rights and legitimate interests in the disputed domain names. 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 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”). The Panel will, however, review the record for information showing that Respondent does have rights or legitimate interests in the domain names under Policy ¶ 4(c).

 

Complainant next contends that Respondent is not commonly known by the disputed domain names. The information available concerning the affiliations of a respondent, including the WHOIS information for a domain name, demonstrate whether a respondent is commonly known by a disputed domain name. 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). The WHOIS information identifies “Integrated Capital Group” as the domain name registrant. This does not suggest that Respondent is commonly known by the disputed domain names. Additionally, Complainant has not authorized Respondent to use its ALLSTATE mark in any capacity. As such, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Previous panels have found that when a respondent uses a domain name to advertise goods or services competing with the complainant, the respondent lacks rights and legitimate interests in the domain names. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also  Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). Respondent uses the confusingly similar domain names to display a variety of advertising links to Complainant’s website and Complainant’s competitors’ websites. The Panel finds that this use of the disputed domain names by Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). The Panel finds that this demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

 

The Panel finds that Policy ¶ 4(a)(ii) is met.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the disputed domain names is an intentional disruption of its business practices and therefore demonstrates bad faith registration and use on the part of Respondent. Panels have found that the registration and use of a domain name for the purpose of interfering with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv)”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Respondent’s domain names are confusingly similar to Complainant’s mark which ensures that some of the Internet users seeking Complainant will reach Respondent’s domain names instead. These domain names display advertising links to Complainant and Complainant’s direct competitors. As such, many of those who seek to find Complainant’s services will redirect themselves to Complainant’s competitors. Therefore, Complainant will generate less business because of the disruption. The Panel finds that Respondent’s usage of the disputed domain names demonstrates its bad faith registration and use under Policy ¶ 4(b)(iii).

 

Complainant contends that the disputed domain names are being used by Respondent because of their attraction for commercial gain, demonstrating Policy ¶ 4(b)(iv) bad faith registration and use. Panels have found that the use of a domain name to divert Internet users in a way which generates monetary gain for the respondent is evidence of bad faith registration and use. 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)(iv) 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 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). Respondent uses the disputed domain names to advertise links to Complainant’s website and to Complainant’s competitors’ websites, likely receiving referral fees from Complainant’s competitors for each Internet user who clicks through from the disputed domain names. The Panel finds that Respondent chose the disputed domain names for their confusing similarity to Complainant’s mark so as to obtain the highest possible amount of Internet traffic. The Panel infers that this was done because of the commercial gain possible by advertising Complainant’s competitors on the domain names. The Panel finds that Respondent’s registration and use of the disputed domain names was done in bad faith pursuant to Policy ¶ 4(b)(iv) and in violation of Policy ¶ 4(a)(iii).

 

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

 

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 <allstateinteractivequote.biz>, <allstateinteractivequote.org>, <allstateinteractivequote.com> and <allstateinteractivequote.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  June 29, 2011

 

 

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