Allstate Insurance Company v. Integrated Capital Group
Claim Number: FA1106001392593
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.us> and <allstatenet.us>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2011.
On June 8, 2011, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <allstateinteractivequote.us> and <allstatenet.us> domain names are 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-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 16, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 6, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allstateinteractivequote.us> and <allstatenet.us> domain names are confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstateinteractivequote.us> and <allstatenet.us> domain names.
3. Respondent registered and used the <allstateinteractivequote.us> and <allstatenet.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allstate Insurance Company, owns the ALLSTATE mark. Complainant uses the ALLSTATE mark in connection with its insurance services, many of which are offered online. Complainant has multiple trademark registrations for the ALLSTATE mark 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 <allstateinteractivequote.us> domain name resolves to a parked page which displays links to Complainant’s competitors’ websites. The <allstatenet.us> domain name resolves to an inactive website.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Respolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Where a complainant has registered a mark with a federal trademark authority, panels have determined that the complainant has established rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)); see also 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). Complainant has demonstrated that the ALLSTATE mark is registered with the USPTO (e.g., Reg. No. 717,683 issued June 27, 1961). The Panel finds that Complainant has established rights in its ALLSTATE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the disputed domain names are confusingly similar to its mark. Panels have found that the addition of a country-code top-level domain (“ccTLD”) is insufficient to distinguish a domain name from a mark within it. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a [UDRP] ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). Additionally, the inclusion of terms which are descriptive of Complainant’s business do not provide for less confusion, but rather more. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under UDRP ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity). Respondent fully-incorporated Complainant’s mark in the disputed domain names. The addition of a ccTLD and descriptive terms do not remove the confusingly similar properties of the domain name. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Once a complainant has supported its assertions by making a prima facie case the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain names. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under [UDRP] ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under [UDRP] ¶ 4(a)(ii).”). The Panel finds that Complainant has satisfied the prima facie case requirement, and the burden now shifts to Respondent to dispute the allegations laid against it. Respondent, however, failed to file a response to the Complaint. Therefore, the Panel will continue to review the record to determine if Respondent has rights or legitimate interests, but it may presume that Respondent does not. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Nothing in the record suggests to the Panel that Respondent is the owner of trademarks or service marks which reflect the <allstateinteractivequote.us> and <allstatenet.us> domain names. As such, the panel finds that Respondent does not have rights or legitimate interests in the disputed domain names. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent is not commonly known by the disputed domain names. The information provided by Complainant, including the WHOIS information for the disputed domain name, may provide the Panel with a basis of finding either for or against a determination that Respondent is commonly known by the disputed domain names. See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel does not find any information on the record to suggest that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii) because the WHOIS information does not suggest a link between them and Complainant is not affiliated with and has not authorized Respondent to use the ALLSTATE mark.
The <allstateinteractivequote.us> domain name resolves to a parked page which displays links to Complainant’s competitors’ websites. Panels continually find that the domain name registrant is responsible for the content on a parked website. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”). The Panel finds that Respondent, having allowed the <allstateinteractivequote.us> domain name to be parked, is responsible for the content on the <allstateinteractivequote.us> domain name. Panels have likewise found that the use of a disputed domain name to display links to third-party websites which are in direct competition with the complainant demonstrates a lack of rights and legitimate interests in the domain name as it is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name). The Panel finds that Respondent’s use of the <allstateinteractivequote.us> domain name to display links to Complainant’s competitors to be neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
The <allstatenet.us> domain name resolves to an inactive website. Panels have found that the failure to make an active use of a domain name demonstrates a lack of rights and legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to [UDRP] ¶ 4(a)(ii).”). The Panel finds that Respondent’s failure to actively use the <allstatenet.us> domain name demonstrates Respondent’s lack of rights and legitimate interests in the <allstatenet.us> domain name under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) met.
Complainant contends that Respondent registered the <allstateinteractivequote.us> domain name in bad faith. Panels have found that the registration of a domain name by a respondent in an attempt to disrupt a complainant’s business is evidence of bad faith. 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 UDRP ¶ 4(b)(iii)); 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 UDRP ¶ 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). Respondent’s <allstateinteractivequote.us> domain name resolves to a page which displays links for Internet users to follow which directs them to Complainant’s competitors’ websites. Ultimately, a portion of those Internet users who were originally seeking Complainant’s website, who actually reached Respondent’s website, will follow the links and purchase insurance services from providers in competition with Complainant instead of with Complainant. Therefore, the business which Complainant should have been able to predict will be disrupted by Respondent’s website. The Panel finds that the <allstateinteractivequote.us> domain name is a disruption to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Panels have found that attraction for commercial gain often leads a respondent to register a confusingly similar domain name which is a demonstration of bad faith. Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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 or use pursuant to [UDRP] ¶ 4(b)(iv).”). Respondent’s <allstateinteractivequote.us> domain name resolves to a parked page displaying links to Complainant’s competitors. Respondent, by registering a domain name and allowing it to be parked, likely receives a portion of the profits that the parking host receives for the links on the webpage. Therefore, the registration of the confusingly similar <allstateinteractivequote.us> domain name was likely done as a result of the heightened profitability factor. The Panel finds that the Policy ¶ 4(b)(iv) attraction for commercial gain in registering or using the <allstateinteractivequote.us> domain name demonstrated bad faith on the part of Respondent.
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); 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).
Respondent’s <allstatenet.us> domain name remains inactive. Panels have found that the failure of a respondent to make an active use of a disputed domain name is evidence of bad faith. See 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); see also 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). Respondent’s <allstatenet.us> domain name is inactive. Therefore, the Panel finds that the registration and use of the <allstatenet.us> domain name was done in bad faith by Respondent 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 <allstateinteractivequote.us> and <allstatenet.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2011
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