Allstate Insurance Company v. HI-LIVE / TRIAL VERSION
Claim Number: FA1505001621874
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is HI-LIVE / TRIAL VERSION (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allstate-insurances.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2015; the Forum received payment on May 29, 2015.
On June 2, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <allstate-insurances.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 June 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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-insurances.com. Also on June 3, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 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 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
1. Complainant has registered the ALLSTATE mark with the USPTO (e.g., Reg. No. 717,683, registered June 27, 1961). The mark is used on or in connection with the sale and underwriting of property and casualty insurance.
2. The <allstate-insurances.com> domain name is confusingly similar to the ALLSTATE mark because the domain name contains the entire mark and adds a hyphen, the descriptive term “insurances,” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage containing unrelated hyperlinks, which shows Respondent is engaging in a general attempt to divert Internet traffic.
4. Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion. Respondent also had actual and/or constructive notice of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Two emails were received in which Respondent contends that the domain name was acquired so that it could be resold.
Complainant holds trademark rights for the ALLSTATE mark. Respondent’s domain name is confusingly similar to Complainant’s ALLSTATE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <allstate-insurances.com> domain name, and that Respondent registered and uses the domain name 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 has registered the ALLSTATE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 717,683, registered June 27, 1961). The mark is used on or in connection with the sale and underwriting of property and casualty insurance. Registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <allstate-insurances.com> domain name is confusingly similar to the ALLSTATE mark. The domain name contains the entire mark and adds a hyphen, the descriptive term “insurances,” and the gTLD “.com.” As a general rule, both punctuation-related alterations (such as adding a hyphen) and the addition of a gTLD are insufficient to distinguish a domain name from the mark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also 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). Also, prior panels have found that the addition of a term descriptive of the goods or services offered under the mark at issue results in a confusing similarity between the domain name and the mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore, the Panel finds that the <allstate-insurances.com> domain name is confusingly similar to the ALLSTATE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known as the <allstate-insurances.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the ALLSTATE mark in domain names. “TRIAL VERSION” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. Thus, Respondent cannot have rights or legitimate interests under 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).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this argument, Complainant has shown that the domain name resolves to a webpage containing unrelated hyperlinks, and that Respondent is engaging in a general attempt to divert Internet traffic. The domain name resolves to a webpage that is essentially blank, except for three links that read “cgi-bin/,” “images/,” and “postinfo.html.” Use of a confusingly similar domain name to host a webpage containing unrelated links cannot amount to a bona fide offering or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Panels have also inferred a lack of rights or legitimate interests where it is clear, like the present case, that the respondent was attempting to misdirect Internet traffic. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). Therefore, the Panel finds that Respondent does not have rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support this claim, Complainant has argued that because the <allstate-insurances.com> domain name contains the entire ALLSTATE mark, Internet users who visit the resolving webpage are likely to believe that it is somehow sponsored by or affiliated with Complainant. Complainant further argues that Respondent is presumably profiting from this use. The Panel agrees; use of a domain name to create a likelihood of confusion for commercial gain amounts to bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also contends that in light of the fame and notoriety of its ALLSTATE mark, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds 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 <allstate-insurances.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 8, 2015
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