Allstate Insurance Company v. JUAN CHAVARRIA
Claim Number: FA1501001601355
Complainant is Allstate Insurance Company (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois. Respondent is JUAN CHAVARRIA (“Respondent”), Nicaragua.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insurance-allstate.net>, registered with eNom, 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.
Kenneth L. Port 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 26, 2015, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <insurance-allstate.net> 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 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@insurance-allstate.net. 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 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port 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
Complainant contends that it owns the ALLSTATE trademark in multiple 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 <insurance-allstate.net> domain name is confusingly similar to the ALLSTATE mark. The domain name contains the Complainant’s mark in full, adds the descriptive word “insurance,” inserts a hyphen, and adds a generic top-level domain “.net” to the domain name.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent’s use of the ALLSTATE mark. Respondent’s lack of rights or legitimate interests in the <insurance-allstate.net> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name diverts Internet users who are seeking Complainant’s website to Respondent’s website <insurance-allstate.net>, which features quotes for insurance policies from Complainant’s competitors. See Compl., at Attached Ex. 8.
Finally, Complainant alleges that Respondent has engaged in bad faith registration and use of the <insurance-allstate.net> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Further, Respondent had constructive notice of Complainant’s right’s in the mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <insurance-allstate.net> domain name was registered April 13, 2014.
The Panel accepts as true Complainant’s allegations as the Respondent failed to submit a Response. As such, the Panel agrees that the domain name <insurance-allstate.net> is identical or confusingly similar to Complainant’s famous trademark; that the Respondent has no rights or legitimate interests in or to the domain name at issue here; and the Respondent has registered and is using the subject 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 asserts the <insurance-allstate.net> domain name is confusingly similar to the ALLSTATE mark. The domain name contains the Complainant’s mark in full, adds the descriptive word “insurance,” inserts a hyphen, and adds a generic top-level domain “.net” to the domain name. Prior panels have found that simply adding descriptive words to an otherwise incorporated mark does nothing to distinguish the disputed domain name from the complainant’s registered trademark, particularly when the terms used allude to the Complainant’s business. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Further, prior panels have found that the addition of a hyphen and a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
This Panel determines that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS information for the disputed domain does not suggest Respondent is commonly known by “insurance-allstate.” The Panel notes that the WHOIS record lists “Juan Chavarria” as the registrant of record. See Compl., at Attached Ex. 7. Further, Complainant has never authorized Respondent to use the ALLSTATE trademark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. See 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).
Complainant asserts Respondent’s lack of rights or legitimate interests in the <insurance-allstate.net> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name diverts Internet users who are seeking Complainant’s website to Respondent’s website <insurance-allstate.net>, which features quotes for insurance policies from Complainant’s competitors. See Compl., at Attached Ex. 8. Specifically, Complainant alleges that Respondent’s use based on exploitation of consumer confusion caused by the confusing similarity of the disputed domain name is not qualifying activity under Policy ¶ 4(c)(i). Prior panels have held that such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the subject domain name.
Complainant argues that Respondent has engaged in bad faith registration and use of the <insurance-allstate.net> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent’s website offers quotes for insurance policies that compete with Complainant’s insurance offerings and thus disrupt Complainant’s business. Complainant asserts that such a disruption constitutes bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, this Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Complainant further asserts that Respondent capitalizes on visitors’ mistaken belief that they are accessing information that Complainant endorses. Complainant contends this behavior constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). This Panel agrees that Respondent’s use as described by Complainant demonstrates that Respondent here seeks commercial gain through a likelihood of confusion with Complainant’s mark and offerings of similar serves, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).
Further, Complainant asserts Respondent had constructive notice of Complainant’s right’s in the mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
As such, the Panel finds the Respondent registered and is using the subject domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <insurance-allstate.net> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: February 21, 2015
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