WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ergo Versicherungsgruppe AG v. Rinesoft, Kabir Hossen Case No. D2010-0337 1. The Parties
The Complainant is Ergo Versicherungsgruppe AG of Düsseldorf, Germany, represented by Lovells LLP, France.
The Respondent is Rinesoft, Kabir Hossen of Dhaka, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2010. On March 5, 2010, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On March 10, 2010, UK2 Group Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 9, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, ERGO Versicherungsgruppe AG (referred to as “ERGO” in this Complaint) is a company incorporated under the laws of Germany since October 1997. It is a financial and insurance company with representation in more than 30 countries in Europe and Asia.
The Complainant is the holder of several trademark registrations which consist in or contain the term ERGO and is also the holder of numerous domain names consisting of or comprising the term ERGO, including, for instance, the domain names , , , , , , , , and . 5. Parties' Contentions A. Complainant
The Complainant's Trademarks are Identical or Confusingly Similar to the Domain Name.
The Complainant submits that the domain name is confusingly similar to the Complainant's ERGO trademarks.
The domain name reflects the Complainant's ERGO mark in its entirety. In addition, as a result of the well-known character of the ERGO trademarks, it is submitted that, when confronted with a combination of the distinguishing prefix “ergo” followed by the generic word “investment” many Internet users would be confused and assume that the domain name is in some way connected with the Complainant.
The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
The Respondent has never been authorised or otherwise licensed or permitted by the Complainant to use any of its trademarks. “ERGO Investment” (if it exists) is not affiliated in any way with the Complainant.
A preliminary search by the Complainant has revealed that the Respondent has no Community or International trademark rights in the name “Ergo”. Searches of the trademark registers in the following jurisdictions by the Complainant have also revealed no entries: United States of America (both Federal and State), Canada, Mexico, Austria, Benelux, Czech Republic, Denmark, Finland, France, Germany, Hungary, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Monaco, Norway, Poland, Portugal, Slovak Republic, Spain, Sweden, Switzerland, United Kingdom of Great Britain and Northern Ireland, Australia, the People's Republic of China, Japan and the Republic of Korea.
The Complainant further asserts that the Respondent is unable to rely on any of the circumstances set out in the Policy, paragraph 4(c)(i), (ii) and (iii), in order to demonstrate its rights and legitimate interests in the domain name:
Bona Fide Use of the Domain Name
The Respondent cannot assert that, before it had notice of the dispute, its use of, or demonstrable preparations to use, the domain name was in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy.
The Complainant web page once found at “www.” gave the impression that ERGO Investment was a genuine company providing financial services and, most likely, a company affiliated with the Complainant. It is therefore clear that the Respondent has been using the domain name to attempt to pass itself off as an affiliated company of the Complainant. However, the Complainant alleged that the domain name was being used to point to a website that was running a fraudulent High Yield Investment Program whereby Internet users were led to believe that they were investing money in good faith, but were in fact being defrauded.
Commonly Known by the Domain Name
The Respondent cannot assert that it is commonly known by the domain name in accordance with paragraph 4(c)(ii) of the Policy. To the Complainant's knowledge, the Respondent has no competing name or trademark rights to the domain name.
Legitimate Non-commercial or Fair Use
The Respondent is currently unable to assert, in accordance with paragraph 4(c)(iii) of the Policy, that it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademarks.
It is submitted that the Respondent registered the domain name for the sole purpose of deceiving individuals and defrauding them of money.
The Domain Name was Registered and is Being Used In Bad Faith
The Complainant argues that the term “Ergo” is highly distinctive and it would therefore be inconceivable for the Respondent to argue that it was unaware of the Complainant and it's ERGO trademark at the time the domain name was registered, especially as the Complainant's ERGO trademark rights significantly predate the registration of the domain name.
It is clear that the Respondent has registered the domain name to create a fake website which it is using in bad faith. It is highly likely that the domain name has been used to obtain money from misled consumers.
In addition, ERGO Investment is a fictitious company which is using the worldwide reputation of the Complainant to appear genuine and to lend credence to the Respondent's fraudulent activities. Previous WIPO UDRP panels have found bad faith use based on a showing that a respondent was engaged in a fraudulent scheme aimed at misleading Internet users. The website once found at “” was set up in a manner calculated to induce Internet users into believing that they were connected to a website linked in some way to the Complainant, especially as the sign ERGO was allegedly used in the same red colour and in the same format as used in the genuine websites of the Complainant. The Complainant's states that the Respondent therefore created a likelihood of confusion with the Complainant's ERGO mark, thereby attracting Internet users to the Respondent's website under false pretences, apparently for pecuniary gain.
Finally, the Complainant submits that the Respondent originally used the proxy service, PrivacyP, in order to mask the WhoIs details and hinder the Complainant in its efforts to curtail fraudulent behaviour such as this. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
In this case the domain name consists of the widely known trademark ERGO and the addition of the generic word “investment” and the “.com” top level designation. The incorporation of a well-known trademark in its entirety as a dominant part of a domain name has been found in certain circumstances in previous UDRP panel decisions to be confusingly similar to such trademark regardless of whether the additional elements express endorsement, are pejorative or are of a more neutral kind such as “investment”.
This Panel finds that the domain name is confusingly similar to the Complainant's trademark ERGO. Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. The Complainant has further conducted preliminary searches in a number of trademark registries and these searches have not revealed any trademark applications or registrations of the Respondent let alone applications or registrations of marks containing “ergo” as an element.
Under the circumstances present in this case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name, thus shifting the burden of proof on this point to the Respondent. The Respondent has not submitted any Response and has thus not rebutted the substantiated allegations put forward by the Complainant. The Panel therefore finds that the prerequisites in the Policy, paragraph 4(a)(ii) are considered fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that may satisfy same.
The Complainant's trademark ERGO, which in itself is a distinctive trademark for financial and insurance services, must be considered to be a well-known trademark within the financial and insurance sector. It is therefore inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant's rights.
In addition the domain name's corresponding website had at the time of filing of the Complaint a rather professional appearance, which was capable of giving the visitor the impression that it was a website that was somehow connected to or endorsed by the Complainant. Thus it is likely the Respondent registered the domain name to target the Complainant's mark for purposes of commercial gain.
Bearing in mind these facts, and the facts mentioned above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraph 4(a)(iii) and 4(b) of the Policy.
Due to these findings the Panel needs not address the question raised by the Complainant on the apparent use of a proxy service by the Respondent.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain name according to paragraph 4(a) of the Policy are fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: April 23, 2010
Full & Egal Universal Law Academy