Allstate Insurance Company v. Yell Adworks Inc.
Claim Number: FA1105001389792
Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Massachusetts, USA. Respondent is Yell Adworks Inc (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstateinsurancedurand.com>, registered with Tucows, 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.
Bruce E. Meyerson as Panelist.
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 May 20, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <allstateinsurancedurand.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@allstateinsurancedurand.com. Also on May 24, 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 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <allstateinsurancedurand.com> domain name is confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstateinsurancedurand.com> domain name.
3. Respondent registered and used the <allstateinsurancedurand.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allstate Insurance Company, is the owner of the ALLSTATE mark. The mark is used by Complainant in the insurance industry to identify products, services, activities, and events related to Complainant. Complainant owns multiple trademark registrations for its ALLSTATE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 717,683 issued June 27, 1961).
Respondent, Yell Adworks Inc., registered the disputed domain name on October 4, 2010. The disputed domain name resolves to an inactive website that displays the message, “Welcome to the Future Site of http://allstateinsurancedurand.com.”
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 that it has established rights in the ALLSTATE mark. Registration with a federal trademark authority is sufficient for the Panel to determine that rights in a mark have been established. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)). Complainant has provided evidence of its registration of the ALLSTATE mark with the USPTO (e.g., Reg. No. 717,683 issued June 27, 1961). As such, the Panel finds that Complainant has established rights in the ALLSTATE mark through under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <allstateinsurancedurand.com> domain name is confusingly similar to Complainant’s ALLSTATE mark. It is well-established that the addition of a generic top-level domain (gTLD”) is insufficient to distinguish a disputed domain name from a registered mark. See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Additionally, panels have determined that the addition of a descriptive word such as “insurance” is insufficient to distinguish a respondent’s domain name from a complainant’s mark. See American 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 American Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”) Lastly, Respondent sought to differentiate the disputed domain name with the addition of a geographic identifier, [D]urand, which is a small town in Wisconsin. Geographic identifiers also fail to differentiate a disputed domain name from a complainant’s mark. See Gannet Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark”); see also America Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis”). As a result, the Panel finds that the disputed domain name, <allstateinsurancedurand.com>, is confusingly similar to Complainant’s ALLSTATE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights or legitimate interests in the <allstateinsurancedurand.com> domain name. Once a complainant has made a prima facie case support of its allegations, the burden shifts to the respondent to provide evidence that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. V. Admin, Domain, FA 8731137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names”). In the present case, the Panel has determined that Complainant has made a prima facie case. The Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name due to Respondent’s failure to respond to the Complaint. Nevertheless, the Panel will determine whether Respondent has rights or legitimate interests after examining the evidence. See America Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant argues that Respondent is not commonly known by the <allstateinsurancedurand.com> domain name and does not have permission from Complainant to use its ALLSTATE mark. Respondent has not presented any evidence that it is commonly known as <allstateinsurancedurand.com>. The WHOIS information identifies the registrant as “Yell Adworks Inc.” The Panel finds no evidence in the record that suggests that Respondent is commonly known by the disputed domain name. As a result, the Panel has determined that Respondent is not commonly known by the <allstateinsurancedurand.com> 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation”).
Respondent uses the <allstateinsurancedurand.com> domain name to resolve to a website that is under construction, and thus inactive. The Panel finds that Respondent has failed to make an active use of the disputed domain name and thus Respondent’s usage is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)”); 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 Complainant has satisfied Policy ¶ 4(a)(ii).
The list of factors in Policy ¶ 4(b) outlining the standards for bad faith do not constitute a complete and exclusive list. Rather, the Panel has the authority to consider the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also
Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant contends that the inactive holding of the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). The Panel agrees. 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). Given that Respondent holds the disputed domain name as an inactive webpage, the Panel finds that the Respondent’s registration and use of the <allstateinsuarancedurand.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant has met the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstateinsurancedurand.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 20, 2011
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