The Complainant is Dialog Lebensversicherungs-AG of Augsburg, Germany, represented by v. Boetticher Hasse Lohmann, Germany.
The Respondent is Doru Ujica of Targu Mures, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2013. On April 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2013, the Registrar 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 May 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2013. On May 13, 2013, the Complainant submitted a Supplemental Filing. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2013.
The Center appointed Petter Rindforth as the sole panelist in this matter on May 27, 2013. 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.
The Panel notes that, on May 13, 2013, the Complainant filed a Supplemental Filing with the Center, in the form of an updated chronological extract from the German Companies and Commercial Register on the business identifier “Dialog Lebensversicherungs-Aktiengesellschaft”. As neither the Center nor the Panel had requested a Supplemental Filing, the Panel finds no reason to consider the Supplemental Filing in rendering the Decision.
Accordingly, the Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant holds a German national word/figurative trademark registration No. DE 1 092 095 DIALOG: filed on February 8, 1986 and registered on May 28, 1986 in respect of “insurance” in class 36.
The disputed domain name was registered on December 8, 2012. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant claims to have used “Dialog Lebensversicherung” as a distinctive business identifier for life insurance services on the German market for almost 30 years, and that the Complainant is ranked amongst the largest risk life insurance companies in Germany.
The Complainant concludes that the disputed domain name consists of “dialog”, being confusingly similar to the dominant element of the Complainant’s trademark DIALOG: and the descriptive element “lebensversicherung”, being the German word for “life insurance”. The Complainant further concludes that the disputed domain name is identical and/or confusingly similar to the Complainant’s business identifier “Dialog Lebensversicherung”.
The Complainant argues that the Respondent has no rights or legitimate interests in . The Complainant is not affiliated with the Respondent and has not consented to any use of the trademark by the Respondent. The Respondent, not known as the disputed domain name, does not use the disputed domain name for noncommercial or fair use, but for the sole purpose of commercial gain, as the connected web site virtually contains nothing but sponsored and disguised advertisement.
Finally, the Complainant states that the Respondent’s attempt to benefit from the Complainant’s high reputation, by registering and using a domain name that is identical and/or confusingly similar to the Complainant’s trademark and business identifier, shows that was registered and is being used in bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of a German national trademark registration for DIALOG: (fig).
The relevant part of the disputed domain name is “dialoglebensversicherung”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The Panel concludes that the domain name consists of the Complainant’s trademark DIALOG: without the colon (punctuation) after the word, and with the addition of the generic word “lebensversicherung”. The colon as such is a sign that is not technically possible to add to a domain name. As to a generic word addition, this does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee,WIPO Case No. D2011-1837 (“In this case, the descriptive terms “bags” and “shop” have been appended to the Complainant’s registered GOYARD mark, which may serve to heighten Internet user confusion”).
In this case, “lebensversicherung” / “life insurance”, is a direct reference to the service covered by the registered trademark and therefore clearly refer to the Complainant’s registered trademark.
The Panel therefore concludes that is confusingly similar to the Complainant’s trademark DIALOG:. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in the disputed domain name, to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant’s services and has no other permission to apply for any domain name incorporating the trademark DIALOG:.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Respondent is using the disputed domain name to operate a domain parking website that displays third-party hyperlinks to websites in direct competition with the Complainant. Such use does not establish rights or legitimate interests. See Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”; see also Fluor Corporation v. A Domain Privacy / Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); and CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyP / Cyber Domain Services Pvt.Ltd.,WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has a German national registered trademark, whereas the Respondent’s home country is Romania. This alone does not indicate that the disputed domain name may be considered as registered and used in bad faith.
However, the Panel also notes that the Respondent registered more than 26 years after the filing and registration date of the Complainant’s trademark, and that it is created by a clear combination of the trademark with the addition of a word that describes the services connected with the trademark. The Panel further notes in this respect that the disputed domain name as well as the content at the connected web site is not translated into the Respondent’s home country language, where “lebensversicherung” would be “asigurare pe viață”, but instead with the German language that is clearly related to the German trademark and market.
Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic word “lebensversicherung” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products); see also Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085.
The disputed domain name is used for a website with links to other websites offering competing services.
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al.,WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s and domain names”).
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Date: June 10, 2013
Full & Egal Universal Law Academy