Allstate Insurance Company v. Mike Morgan
Claim Number: FA1201001426490
Complainant is Allstate Insurance Company (“Complainant”), represented by Geri L. Haight of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., Massachusetts, USA. Respondent is Mike Morgan (“Respondent”), Nova Scotia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com>, registered with MONIKER ONLINE SERVICES, INC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2012; the National Arbitration Forum received payment on January 26, 2012.
On January 26, 2012, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names are registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the names. 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@allstatefiancial.com, postmaster@allstatefinacial.com, postmaster@myallstatefinancal.com, postmaster@myallstatefinancail.com, and postmaster@myallstatefiancial.com. Also on February 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names are confusingly similar to Complainant’s ALLSTATE mark.
2. Respondent does not have any rights or legitimate interests in the <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names.
3. Respondent registered and used the <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allstate Insurance Company, owns a wide array of trademark registrations for the ALLSTATE mark, as well as other marks that include ALLSTATE within the mark, with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 717,683 registered June 27, 1961). Complainant uses its ALLSTATE mark in connection with its insurance services.
Respondent, Mike Morgan, registered the disputed domain names on November 24, 2011. Respondent’s disputed domain names resolve to websites offering links to Complainant and its competitors, Progressive and Liberty Mutual amongst others, in a classic pay-per-click format.
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 claims that it has established its rights in the ALLSTATE mark by registering it with the USPTO (e.g., Reg. No. 717,683 registered June 27, 1961). Because it has furnished sufficient evidence to establish that the mark is registered with the USPTO and that it is the owner of that registration, the Panel finds that Complainant has established its rights in the ALLSTATE mark under Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also 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).
Complainant also claims that Respondent’s <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names are confusingly similar to its ALLSTATE mark. All of the disputed domain names include the entire ALLSTATE mark while adding the generic top-level domain (“gTLD”) “.com” and a misspelling of the descriptive term “financial.” The <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names also include the generic term “my.” The Panel determines that none of the changes differentiate the disputed domain names from the mark in such a way as diminish their confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has shifted the burden of proof to Respondent by making a prima facie case that illustrates how Respondent lacks rights or legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent has not only failed to rebut Complainant’s prima facie case, but has also failed to file any kind of response which allows the Panel to assume it lacks rights or interests in the domains. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will make no such assumptions before examining the entire record and determining whether Respondent has rights or legitimate interests in the disputed domain names based upon the guidelines included in Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent has made no averments to the contrary, nor has it offered any evidence to contradict Complainant’s argument. The WHOIS information identifies the registrant of the disputed domain names as “Mike Morgan.” Based upon the WHOIS information and the lack of other evidence on record, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 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).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to websites offering links to Complainant’s competitors in a directory format. Some of the links resolve to companies like Progressive and Liberty Mutual, large domestic insurers. Complainant submitted sufficient evidence in the form of screenshots to verify the alleged use. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s registration of multiple domain names in this one dispute illustrates a pattern that is intended to prevent Complainant from reflecting its rights in its mark on the Internet. In this dispute, Respondent registered five domain names. Previous panels have held that the registration of multiple domains in one instance demonstrates bad faith under this provision. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s disputed domain names disrupt its business, demonstrating bad faith registration and use. Respondent’s disputed domain names resolve to websites offering links to Complainant’s competitors in the insurance industry, like Progressive and Liberty Mutual. Internet users seeking out Complainant’s insurance may be diverted to Complainant’s competitors’ websites and then purchase insurance from one of those companies rather than from Complainant. The Panel finds that this use disrupts Complainant’s business in a manner that demonstrates bad faith registration and use by Respondent 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also asserts that Respondent registered and is using the disputed domain names for its own commercial gain, constituting bad faith. The disputed domains all resolve to directory websites offering links to third-party businesses. Some of these businesses, like Progressive and Liberty Mutual, are competitors of Complainant in the insurance industry. Respondent presumably generates revenue by collecting click-through fees for each Internet user it diverts to the linked sites. Thus, the Panel finds that Respondent has registered and is using the disputed domain name for the purpose of gaining commercially from Internet user confusion caused by the use of Complainant’s mark, constituting bad faith under Policy ¶ 4(b)(iv). 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)(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 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstatefiancial.com>, <allstatefinacial.com>, <myallstatefinancal.com>, <myallstatefinancail.com>, and <myallstatefiancial.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 7, 2012
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