The Complainant is Allianz SE of Munich, Germany, represented internally.
The Respondent is Daniel Bengtson of Buenos Aires, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2013. On July 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2013. The Response was filed with the Center on August 17, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 23, 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 language of this administrative proceeding is English, being the language of the registration agreement.
A Supplemental Filing was received from the Complainant on September 6, 2013. The Center forwarded the said Supplemental Filing to the Panel on the same day. In the exercise of its discretion pursuant to paragraph 10 of the Rules, the Panel has decided that it would be inappropriate to consider it, and has therefore not take it into account when rendering its decision. 4. Factual Background
The Complainant operates an insurance and financial services business with more than 142,000 employees operating in more than 70 countries. The Complainant holds registrations for the ALLIANZ trademark and variations of it in numerous countries including Argentina, which it uses to designate insurance and other financial services. Its Argentina registration No. 2424047 has been in effect since 2011 but the mark has been used there for 25 years, globally for over 100 years and was registered internationally in 1979. Approximate global revenue for sales of Allianz brand services in 2012 was EUR 106.4 billion.
The Complainant conducts business on the Internet using numerous domain names containing the mark ALLIANZ including , , , and with insurance and financial business websites resolving from these domain names.
The disputed domain name (the “Disputed Domain Name”) was created on August 29, 2011 and resolves to a parking web page containing a variety of advertisements and links. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark ALLIANZ in various countries as prima facie evidence of ownership.
The Complainant submits that the mark ALLIANZ is well-known globally. The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the ALLIANZ trademark and that the similarity is not removed by the addition of the number “1”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably alluding to Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (presumably alluding to Drexel University v. David Brouda,WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the Domain Names at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s ALLIANZ mark in the Disputed Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks in circumstances where “the marketing campaign of the Complainant had been launched only a few months prior to registration”. The Complainant further contends that “inactivity by the Respondent” is another factor indicating bad faith (citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). B. Respondent
The Respondent’s Response dated August 17, 2013 contends, in summary, on the issue of confusing similarity that:
(a) “Trying to solve a domain dispute using trademark laws, is like trying to solve a mathematical problem using psychology.”
(b) “Trademarks are divided in 45 international classes, domains are not. Allianz is a trademark mostly in class 36 (insurance and finance). But allianz is also a word, and words have no owners. 1 is a number, and numbers have no owners. I created my domain using a word and a number.”
(c) “A domain is a site, an “address” in the web. By changing only one letter, or a number, a completely different “address” is reached.”
(d) “The domain was created in 2012, and (the Disputed) domain was created in 2011”.
On the issue of rights or legitimate interests in respect of the Disputed Domain Name the Respondent contends:
(e) “I bought this domain for a future project. As it is well known, .com domains are getting scarce, for that reason I had to secure it with plenty of time. As I am an inventor, (US patents 5946936 and 6178707) I will not disclose what this project is about.”
On the issue of bad faith the Respondent contends:
(f) “Since I own this domain, I have never used it. I never had any commercial activity with it, it has never been for sale, and I don´t even have a webpage for it. For that simple reason, it will be impossible for the Complainant to demonstrate bad faith.” 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ALLIANZ in Argentina and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark ALLIANZ pursuant to International Trademark Registration No. 447 004 from September 12, 1979. The Respondent’s Response submits that “the domain was created in 2012, and (the Disputed) domain was created in 2011”. In any event, the Complainant’s Argentina trademark No. 2424046 was registered from July 14, 2011 which predates registration of the Disputed Domain Name. Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark ALLIANZ.
The Panel also finds that the mark ALLIANZ is well-known: see Allianz SE v. Weingarth, Steve, Organisation of Allianzen, WIPO Case No. D2007-0625 (“Several German courts have held that ALLIANZ is a well-known trademark with a high reputation”).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ALLIANZ trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark; (b) conjoined with the number “1”; and (c) followed by the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). In this case, the relevant comparison to be made is with the second level portion of the Disputed Domain Name “Allianz1”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, a number: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case N0. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel finds that the number “1” after the Complainant’s registered trademark is an additional element that, following a principle established in numerous previous UDRP decisions, does not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark: (see Pfizer Inc. v. David Lavery, WIPO Case No. D2004-0581; Pfizer Inc v. The Org,WIPO Case No. D2004-0580; Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc. v. Xenadrine RFA 1 Superstore (a.k.a. Xenadrine Superstore),WIPO Case No. D2008-0495 (“1” is a non-distinctive suffix”); Woot, Inc. v. KA LUN KWOK,WIPO Case No. D2007-0167 (transferring the domain name ); F. Hoffmann-La Roche v. Alexe,WIPO Case No. D2006-1573 (transferring the domain name ); Hoffmann-La Roche Inc. v. WhoisGuard,WIPO Case No. D2008-0916 (“[t]he mere addition of a “1” after the mark does little to avoid the conclusion that contested domain name is confusingly similar to the Complainant's VALIUM mark”).
The Response also contends that “[a] domain is a site, an “address” in the web. By changing only one letter, or a number, a completely different “address” is reached.” In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the ALLIANZ trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1.
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Preston,WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a parking web page advertising or offering for sale products or services and thereby illegitimately “exploiting the fact that the Complainant has launched an international marketing campaign relating to the digit “1” which (illegitimately) makes Internet users associate the digit “1” with the Complainant and his website ”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
The Respondent contents, incorrectly in the view of this Panel, that is it not using the parked Disputed Domain Name but rather is holding it pending some undisclosed “future project”. In fact, the Respondent has parked the Disputed Domain Name pending some alternative future use and the advertisements on the site were generated by the parking company. In this way, the Respondent allowed the parking company free reign over content. In Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 this was found to be illegitimate commercial use. This Panel also so finds.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
[…]
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows, supra). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See: M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark ALLIANZ is so well-known globally for insurance and financial services that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it. This Panel accepts the Complainant’s evidence that it has rolled out its “One” campaign “in more than 30 countries by now across all business lines and sponsoring platforms with a reach of 80% of the customers of the Complainant”. This Panel finds it beggars belief that the Respondent was unaware of the ALLIANZ trademark let alone the Complainant’s “One” campaign or that the registration of the Disputed Domain Name was simply a remarkable coincidence.
Further, a gap of ten years between registration of a complainant’s trademark and the respondent’s registration of a domain name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held International registration for the trademark ALLIANZ, from 1979 predating its rights from the Respondent’s registration by over 30 years.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s Response contends “[s]ince I own this domain, I have never used it. I never had any commercial activity with it, it has never been for sale, and I don’t even have a webpage for it. For that simple reason, it will be impossible for the Complainant to demonstrate bad faith.” This Panel finds that these comprise conclusions, not evidence, and incorrect conclusions at that in view of the Complainant’s evidence to the contrary.
This Panel finds that the Respondent has taken the Complainant’s trademark ALLIANZ and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Respondent’s web page offering products and services for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
Nicholas Weston
Sole Panelist
Date: September 5, 2013
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