Allstate Insurance Company v. Somsak Jinaphan / iDigitalAsset LLC
Claim Number: FA1501001601392
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois. Respondent is Somsak Jinaphan / iDigitalAsset LLC (“Respondent”), Virginia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, and <allstate.company>, registered with Enom, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2015; the National Arbitration Forum received payment on January 22, 2015.
On January 23, 2015, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, and <allstate.company> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2015 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@allstate.institute, postmaster@allstate.today, postmaster@allstate.training, postmaster@allstate.education, postmaster@allstate.company. Also on January 26, 2015, 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 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns the ALLSTATE mark in numerous versions through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 0,717,683, registered June 27, 1961). Complainant offers insurance services, investment advisory services, mortgage lending, and financial services and uses the ALLSTATE mark to promote its goods and services. The <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names are confusingly similar to the ALLSTATE mark. Each disputed domain name contains the Complainant’s mark in its entirety and inserts a generic top-level domain.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS record includes nothing to demonstrate that Respondent is commonly known by the disputed domain names. Further, Complainant has never authorized Respondent’s use of the ALLSTATE mark. Respondent’s lack of rights or legitimate interests in the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names is evidenced by Respondent’s failure to use the domain names in connection with a bona fide offering of goods or services and its failure to make a legitimate noncommercial or fair use of the domain names. Respondent’s disputed domain names divert Internet users who are seeking Complainant’s website to Respondent’s websites, which all feature competing hyperlinks to third party insurance offerings. See Compl., at Attached Ex. 8.
iii) Respondent has engaged in bad faith registration and use of the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names. As the disputed domain names are listed for sale, Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant or a competitor for more than the documented out-of-pocket expenses related to the name. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Finally, Respondent had constructive notice of Complainant’s rights in the mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. These <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names were registered April 10, 2014.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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."
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.
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.”).
Complainant owns the ALLSTATE mark in numerous versions through the USPTO (e.g., Reg. No. 0,717,683, registered June 27, 1961). Complainant offers insurance services, investment advisory services, mortgage lending, and financial services and uses the ALLSTATE mark to promote its goods and services. The Panel concludes that Complainant’s valid registration of the ALLSTATE mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See 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).”).
Complainant contends the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names are confusingly similar to the ALLSTATE mark. Each disputed domain name contains the Complainant’s mark in its entirety and inserts a generic top-level domain. Complainant further argues that the addition of various terms, including “.institute,” “.today,” “.training,” “.education,” and “.company” have no impact on the question of whether the disputed domain names are confusingly similar to the ALLSTATE mark because these terms are required signifiers of generic top-level domains. Prior panels have agreed that the addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). This Panel determines that the disputed domain names are confusingly similar under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, as the WHOIS record includes nothing to demonstrate that Respondent is commonly known by the disputed domain names. The Panel notes that the WHOIS information lists “Somsak Jinaphan “ as the registrant of record. See Compl., at Attached Ex. 7. Further, Complainant has never authorized Respondent’s use of the ALLSTATE mark. The Panel agrees that these contentions sufficiently establish Respondent’s lack of rights to the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant asserts that Respondent lacks rights or legitimate interests in the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names, as evidenced by Respondent’s failure to use the domain names in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain names. Respondent’s disputed domain names divert Internet users who are seeking Complainant’s website to Respondent’s websites, which all feature competing hyperlinks to third party insurance offerings. See Compl., at Attached Ex. 8. One such link directly connects Internet users to <geico.com>, one of Complainant’s competitors. See Compl., at Attached Ex. 10. Complainant alleges that Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Panel finds that Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent has engaged in bad faith registration and use of the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, <allstate.company> domain names. As the disputed domain names are listed for sale, Complainant contends Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant or a competitor for more than the documented out-of-pocket expenses related to the name. Respondent’s disputed domain names are offered for sale for US$2,599 each, while <allstate.education> is offered for sale for US$10,000. See Compl., at Attached Ex. 9. Complainant alleges that Respondent’s actions of registering domain names for the purpose of selling them to Complainant qualifies as bad faith registration under Policy ¶ 4(b)(i). The Panel finds that Respondent’s actions of registering disputed domain names for the purpose of selling them to Complainant for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain names satisfy the threshold for bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant also argues that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Respondent’s websites feature links to third party insurance offerings that compete with Complainant’s offerings, and accordingly disrupt complainant’s business. See Compl., at Attached Ex. 8. Internet users that intended to view and potentially purchase Complainant’s insurance policies may likely end up buying competing policies. Prior panels have found that competing hyperlinks have constituted disruption to complainant’s business pursuant to 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)). The Panel agrees that competing hyperlinks featured in the Respondent’s websites resolved by the disputed domain names constitute disruption to complainant’s business pursuant to Policy ¶ 4(b)(iii), and thus represent bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant asserts Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Complainant argues that Respondent generates web traffic and realizes commercial gain through the use of domain names that are confusingly similar to Complainant’s mark. Visitors mistakenly believe they are accessing information endorsed by Complainant, and Respondent presumably reaps the benefit of this confusing similarity. Prior panels have found respondent’s use of competing hyperlinks to constitute bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel agrees that Respondent presumably reaps the benefit of web traffic and realizes commercial gain through the use of domain names that are confusingly similar to Complainant’s mark. The Panel finds that Respondent’s such behavior constitutes bad faith registration and use under Policy ¶ 4(b)(iv) as well.
Finally, Complainant asserts Respondent had constructive notice of Complainant’s rights in the mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant argues that, given the fame of its registered mark, it would be difficult to see how Respondent could not have actual knowledge of the ALLSTATE mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers that Respondent had actual knowledge of Complainant's mark and rights from the fact that the Respondent’s websites resolved by the disputed domain names feature links to third party insurance offerings that compete with Complainant’s offerings, and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allstate.institute>, <allstate.today>, <allstate.training>, <allstate.education>, and <allstate.company> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 27, 2015
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