national arbitration forum

 

DECISION

 

Allstate Insurance Company v. Guowei Hai Gui

Claim Number: FA1105001390423

 

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 Guowei Hai Gui (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <allstateroadside.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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2011; the National Arbitration Forum received payment on May 25, 2011.

 

On May 25, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <allstateroadside.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name.  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 June 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@allstateroadside.com.  Also on June 1, 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 28, 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 <allstateroadside.com> domain name is confusingly similar to Complainant’s ALLSTATE mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Allstate Insurance Company, was established in 1931 as an insurance company within the United States.  Complainant owns the ALLSTATE mark which it uses in the promotion of its insurance products, services, activities, and events.  Complainant holds numerous trademark registrations for its ALLSTATE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 761,091 issued Dec. 3, 1963). 

 

Respondent registered the <allstateroadside.com> domain name on October 10, 2004.  The disputed domain name resolves to a directory website featuring advertising links to Complainant and Complainant’s direct competitors in the insurance industry.

 

Respondent has been subject to prior UDRP proceedings that resulted in findings of bad faith and transfer of the disputed domain names.  See Allstate Ins. Co. v. Guowei Hai Gui, FA 1371355 (Nat. Arb. Forum March 22, 2011); see also Allstate Ins. Co. v. Guowei Hai Gui, D 2011-0176 (WIPO March 29, 2011).

 

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 argues that it has established rights in the ALLSTATE mark.  Previous panels have determined that trademark rights can be established by registration with a national trademark authority.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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.”).  Complainant is not required to register its mark within China, where Respondent resides or operates, as long as it holds a trademark registration in some jurisdiction.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).  Here, Complainant holds a number of trademark registrations for its ALLSTATE mark with the USPTO (e.g., Reg. No. 761,091 issued Dec. 3, 1963).  The Panel finds that Complainant has confirmed its rights in the ALLSTATE mark through its registration with the USPTO, according to Policy ¶ 4(a)(i).

 

Complainant also maintains that Respondent’s <allstateroadside.com> domain name is confusingly similar to Complainant’s ALLSTATE mark.  The entire ALLSTATE mark is used within the disputed domain name and is changed only by adding the descriptive word “roadside” and by adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that attaching a descriptive word, which here references Complainant’s automobile insurance business, only increases the confusing similarity of the disputed domain name to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).  The Panel also finds that the addition of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark.  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.”).  Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s ALLSTATE mark under Policy ¶ 4(a)(i). 

 

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

 

Rights or Legitimate Interests

 

Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name.  In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.  Here, Complainant has presented a prima facie showing in support of its allegations against Respondent.  Due to Respondent’s failure to respond to the Complaint, the Panel is allowed to assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).  However, the Panel will first determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to a conclusion.

 

Complainant asserts that Respondent is not commonly known by the <allstateroadside.com> domain name.  The WHOIS information identifies the domain name registrant as “Guowei Hai Gui,” which is not similar to the disputed domain name.  Complainant makes no mention of ever having authorized or licensed Respondent to use its ALLSTATE mark within the disputed domain name.  Thus, the Panel finds accordingly that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Respondent’s <allstateroadside.com> domain name points to a directory website which features links to Complainant and third-party links to websites directly competing with Complainant’s insurance business.  Respondent likely generates click-through fees from these links.  The Panel decides that Respondent’s use of the disputed domain name to direct Internet traffic to 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 under Policy ¶ 4(c)(iii).  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also 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).

 

Complainant contends that Respondent is offering the disputed domain name for sale.  Respondent’s resolving website states, “The domain allstateroadside.com may be for sale by its owner!” and “BUY THIS DOMAIN.”  The corresponding link leads to a <sedo.com> website which offers to facilitate the purchase of the disputed domain names.  The Panel finds that Respondent’s general attempt to sell the disputed domain name illustrates that it lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s <allstateroadside.com> domain name contains the statements “The domain allstateroadside.com may be for sale by its owner!” and “BUY THIS DOMAIN” with a corresponding link to a website facilitating domain name sales. The Panel finds that Respondent’s apparent willingness to sell the disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

Complainant alleges that Respondent has prior UDRP proceedings, including some involving Complainant, that resulted in findings of bad faith and transfer of the disputed domain names.  See Allstate Ins. Co. v. Guowei Hai Gui, FA 1371355 (Nat. Arb. Forum March 22, 2011); see also Allstate Ins. Co. v. Guowei Hai Gui, D 2011-0176 (WIPO March 29, 2011).  The Panel finds that Respondent has engaged in a pattern of bad faith use and registration under 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 Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

The <allstateroadside.com> domain name resolves to a website containing links to Complainant and to Complainant’s competitors.  Internet users intending to purchase Complainant’s insurance products and services may find Respondent’s website due to the confusingly similar disputed domain name and purchase similar products and services from one of the featured competitors instead.  The Panel finds that such registration and use disrupts Complainant’s business, which constitutes bad faith under 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 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).

 

The Panel infers that Respondent collects click-through fees from the aforementioned third-party links.  Respondent’s disputed domain name creates a likelihood of confusion as to Complainant’s sponsorship of, or association with, the resolving website and featured links.  Respondent tries to capitalize off this confusion through the receipt of click-through fees.  The Panel finds that this is evidence of bad faith use and registration under 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

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

 

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

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 11, 2011

 

 

 

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