The Complainant is UNIQA Insurance Group AG of Vienna, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.
The Respondent is Heinz Hayderer of Vienna, Austria. 2. The Domain Name and Registrar
The disputed domain name is registered with IntertnetX GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2016. On January 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2016.
The Center appointed Peter Burgstaller as the sole panelist in this matter on February 16, 2016. 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, based in Vienna, Austria, is renowned and well-known at least in Austria and the Central and Eastern Europe (CEE) region for insurance services (Annex F, G, H of the Complaint).
The Complainant is the owner of the trademark UNIQA, registered in Austria on December 22, 1998 (Annex K of the Complaint) and as Community Trademark on August 16, 2000 (Annex L of the Complaint). The Complainant and its various group companies are using the trademark UNIQA in business.
The Complainant has not authorized the Respondent to use the trademark UNIQA. Moreover there is no relationship between the Complainant and the Respondent which otherwise would entitle the Respondent to use the trademark UNIQA.
The Respondent has registered the disputed domain name on December 13, 2015 (Annex A of the Complaint). The disputed domain name resolves to a parking page. 5. Parties’ Contentions A. Complainant
The Complainant is a public stock listed major insurance company based in Vienna, Austria. Operating under the brand UNIQA since 1998, the corporate history of the Complainant goes back to the year 1811. Together with its subsidiaries it forms the UNIQA Group. The UNIQA Group is one of the leading insurance groups in its core markets of Austria and CEE, consisting of approximately 40 companies in 19 countries and serving more than 10 million customers. UNIQA is one of the two strongest insurance brands in Austria and is well positioned in the CEE markets. The Complainant is represented in Austria with more than 410 regional service centers. The Complainant’s Austrian subsidiary UNIQA Österreich Versicherungen AG is the biggest insurer in Austria. The Complainant’s group of companies is Austria’s largest health insurer in Austria.
The Complainant is the owner of several trademarks containing the word “Uniqa” in Austria and the EU since 1998. The Complainant’s trademarks are famous at least in Austria and the CEE region.
The Respondent is the registrant of the disputed domain name. The Respondent has no rights or legitimate interests in respect to the disputed domain name, neither own rights in the sign UNIQA nor authorized by the Complainant.
Because of the fame of the Complainant’s trademark UNIQA the Respondent must have known the Complainant and its trademark and therefore has registered and is using the disputed domain name in bad faith. 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 that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s mark UNIQA entirely. It has long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate identity or confusing similarity where it otherwise exists, as it does in the present case. When assessing identity or confusing similarity of a mark and a domain name the gTLD may be ignored (see Deutsche Telekom AG vs. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001; Société Anonyme des Eaux Minérales d’Evian vs. Mr. Omar Haddedou,WIPO Case No. D2005-0432).
The Panel therefore finds that the disputed domain name is identical to the Complainant’s trademark UNIQA; the Complainant therefore has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name.
However, in the present case the Respondent failed to submit a Response. It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark UNIQA in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith. Registered in bad faith
To this Panel it is incontestable that the Respondent has registered the disputed domain name in bad faith because the fact that registering the mark UNIQA under the gTLD “online” shows that the Respondent must have been aware of the fame and distinctiveness of the trademark UNIQA. When registering the disputed domain name, it is unlikely that the Respondent would have chosen this trademark in combination with the gTLD “online” unless seeking to create an impression of association with the Complainant’s fame and reputation – the sign UNIQA is not a descriptive or generic term. Moreover it is the Panel’s conviction that being domiciled in Austria the Respondent must have known of the trademark UNIQA and the Complainant.
The fact of registering a famous mark as domain name under a gTLD like in the present case is a strong indication of bad faith registration (see, AT&T Corp. v. LaPorte Holdings, Inc.,WIPO Case No. D2004-1088; Société des Produits Nestlé S.A. v. Mr T LLC,WIPO Case No. D2012-1356). Used in bad faith
In order to meet paragraph 4(a)(iii) of the Policy Complainant must also prove that the disputed domain name is being used in bad faith.
Given the fame, distinctiveness and reputation of the Complainant’s trademark UNIQA there is no other conceivable interpretation of the registration and use of the disputed domain name than that of bad faith. The conduct of the Respondent demonstrates awareness of the Complainant’s mark and an intention to somehow benefit from its fame and/or to disrupt the business of the Complainant.
Moreover, registering the distinctive mark UNIQA under the gTLD “online” strengthens the impression that the disputed domain name is in some way connected to the Complainant (see e.g. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2000-1406; Ryder Cup Europe LLP v. R / Andrew Seaforth,WIPO Case No. D2010-0688; Sanofi-aventis, AVENTISUB II Inc. v. MuruganNadar / Rajesh Singh,WIPO Case No. D2010-1959; Société des Produits Nestlé S.A. v. MrT LLC,WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-D,WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-0335; F. Hoffmann-La Roche AG v. Fred Baker, Private Person,WIPO Case No. D2015-0566).
Although the website to which the disputed domain name at issue resolves is a parking page this does not prevent a finding of bad faith use: As pointed out already in Telstra Corporation Limited vs. Nuclear Marshmallows, WIPO Case No. D2000-0003, the relevant issue is not a “positive action in bad faith” in relation to the domain name at issue, but “acting in bad faith” - the distinction is important, because “being used in bad faith” is not limited to positive actions since inaction is within the concept (see also Société Air France v. Vladimir Federov,WIPO Case No. D2003-0639).
All these facts lead the Panel to the conclusion that the disputed domain name was registered and is being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Peter Burgstaller
Sole Panelist
Date: February, 26, 2016
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