Allstate Insurance Company v. Eduardo Bergel
Claim Number: FA1106001392132
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 Eduardo Bergel (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstat.org>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2011; the National Arbitration Forum received payment on June 6, 2011.
On June 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <allstat.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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@allstat.org. 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 James A. Carmody, Esq., 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 <allstat.org> domain name is confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstat.org> domain name.
3. Respondent registered and used the <allstat.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allstate Insurance Company, is a provider of insurance products and services, including: life, annuity, accident, and health insurance. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 717,683 issued June 27, 1961).
Respondent, Eduardo Bergel, registered the disputed domain name on March 8, 2004. The disputed domain name resolves to a pay-per-click website featuring a variety of advertising links relating to the insurance industry, including links to Complainant and its direct competitors such as Liberty Mutual, AAA Auto Insurance, and MetLife, among others.
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 submits evidence of multiple trademark registrations of its ALLSTATE mark with the USPTO (e.g., Reg. No. 717,683 issued June 27, 1961). Prior panels have concluded that where a complainant has registered its mark with the USPTO, the complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See 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.”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Prior panels have also determined that registration of a mark in the country where a respondent resides or operates is not necessary to establish rights under the Policy, so long as the complainant can establish rights in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also 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). The Panel finds in accordance with prior panels and concludes that Complainant has rights in the ALLSTATE mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO.
Complainant argues that Respondent’s <allstat.org> domain name is confusingly similar to Complainant’s ALLSTATE mark. The disputed domain name differs from Complainant’s mark only in the removal of the letter “e” and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel finds that neither of these alterations is significant enough to properly distinguish the disputed domain name from Complainant’s mark. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel holds that Respondent’s <allstat.org> domain name 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).
Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden of proof will transfer to Respondent to come forward with evidence of its rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that, based on the arguments contained in the Complaint and the evidence submitted in the Annexes, Complainant has met its burden and has established a prima facie case. Respondent, by failing to submit any response in this proceeding, has not only failed to uphold its burden but has given the Panel the right to infer that Respondent does in fact lack rights and legitimate interests in the disputed 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 inference, the Panel elects to examine the record in its entirety to determine whether Respondent has any rights or legitimate interests in the disputed domain name under the factors contained in Policy ¶ 4(c).
Policy ¶ 4(c)(ii) allows Respondent to prove rights or legitimate interests if Respondent can establish that it is commonly known by the disputed domain name. Without the benefit of a Response from Respondent, the Panel must rely on the WHOIS information and any arguments contained in the Complaint. The WHOIS information indicates that the registrant of the disputed domain name is “Eduardo Bergel.” Additionally, Complainant argues that Respondent is not commonly known by the disputed domain name. There does not appear to be anything in the record that would indicate that Respondent is now, or has ever been, commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <allstat.org> 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).
Pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii), Respondent can also establish rights or legitimate interests in the disputed domain name if it provides evidence that it is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent’s <allstat.org> domain name resolves to a pay-per-click website that features links to Complainant’s own website as well as to the websites of Complainant’s competitors, such as Liberty Mutual, AAA Auto Insurance, and MetLife, among others. Prior panels have held that where a respondent is using a disputed domain name to provide pay-per-click links to both the website of the complainant and the complainant’s competitors, the respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services 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)). The Panel agrees and finds accordingly.
Complainant alleges that Respondent’s disputed domain name incorporates a common misspelling of Complainant’s ALLSTATE mark and as such is an example of typosquatting. The Panel finds that typosquatting is 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(b)(iii) allows a Complainant to establish bad faith registration and use where Respondent’s disputed domain name causes a disruption of Complainant’s business. Complainant contends that Respondent’s registration and use of the <allstat.org> domain name to display links to the websites of Complainant’s competitors constitutes such a disruption. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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).”).
Additionally, the Panel is permitted to find bad faith registration and use where Respondent’s disputed domain name intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s sponsorship or affiliation with the disputed domain name. Here, Complainant argues that Respondent registered and is using the confusingly similar disputed domain name in order to profit through the receipt of fees obtained each time an Internet user clicks on one of the displayed links. The Panel finds that Respondent’s behavior demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).
As established previously, Respondent has engaged in typosquatting. The Panel finds that typosquatting, in and of itself, is evidence of bad faith registration and use under 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 Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied 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 <allstat.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 30, 2011
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