The Complainants are Allianz Seguros S.A., Brazil (“First Complainant”) and Allianz SE, Germany (“Second Complainant”), represented by JM Silveira & Associados Propriedade Intelectual Ltda, Brazil.
The Respondent is Privacy Protect, LLC, United States of America / Luiz Daniel, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 12, 2020. The Center verified that the Complaint together with the amended 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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 27, 2020. 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 Complainants are part of the multinational Allianz Group engaged in international financial services, offering products and solutions in insurance and asset management, amongst other services. The Second Complainant is the owner, amongst several others, of the following trademark registrations (Annexes V and VI to the Complaint): - Brazilian Trademark Registration No. 820584401 for the word mark ALLIANZ, registered on - Brazilian Trademark Registration No. 821246593 for ALLIANZ and device, registered on - Brazilian Trademark Registration No. 831053968 for the word mark ALLIANZ, registered on - Brazilian Trademark Registration No. 831053828 for ALLIANZ and device, registered on The disputed domain name The Complainants assert to be part of the Allianz Group which counts with over 85 million customers and over 147,000 employees spread in more than 70 countries, including Brazil, where the First Complainant, a subsidiary of the Second Complainant, is located. In the Complainants’ view, the disputed domain name incorporates their ALLIANZ trademark and trade name entirely, creating consumer confusion, being the addition of the terms “auto” and “leiloes” (which from the Portuguese can be translated as “auctions” in English) inherent to the Complainants’ activities in the auto insurance business. According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Respondent has no license or other agreement with any of the Complainants that would authorize it to use the ALLIANZ trademark or tradename; (ii) the Respondent is not commonly known by the disputed domain name; and (iii) the Respondent has reproduced the Complainant’s logo and trademarks in the website that resolved from the disputed domain name, offering automobile auction services, what cannot be considered a bona fide offer of goods and services or legitimate noncommercial or fair use of the dispute domain name given that no disclaimer was made as to the lack of sponsorship or association with, or endorsement from the Complainants. The Complainants contend that the disputed domain name was registered and used in bad faith given the Respondent’s evident knowledge of the Complainant’s famous trademark, which was reproduced in the website that resolved from the disputed domain name. A further indication of the Respondent’s bad faith was the choice to retain a privacy protection service so as to conceal its true identity. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainants have established rights in the ALLIANZ trademark, duly registered. The Panel finds that the disputed domain name reproduces the Complainants’ mark in its entirety, being the addition of the descriptive terms “auto” and “leiloes” insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, sections 1.7 and 1.8). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (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, in spite of not having acquired 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 Respondent has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent. In that sense, the Complainants indeed indicate not to have licensed or otherwise agreed to authorize the use of the ALLIANZ trademark or tradename to the Respondent. Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name that existed, corroborate with the Panel’s finding of the absence of rights or legitimate interests. Another element to consider is the fact that at the webpage that resolved from the disputed domain name, the Respondent reproduced the Complainants’ well-known trademark and logo seeking to create an association with the Complainants, with no disclaimer as to the lack of relationship between the Respondent and the Complainants, which clearly does not characterize a bona fide offering of goods or services under the Policy or a legitimate noncommercial or fair use of the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name 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 disputed domain name; or (ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ 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. The Panel notes that the disputed domain name is currently inactive. Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. The Panel is also satisfied that the disputed domain name has been used in bad faith as it lead to an identical copycat website of the Complainant’s legitimate site. The Complainant has submitted screenshots that show the layout of the Respondent’s website. The Panel agrees with previous UDRP decisions that unauthorized registration of a domain name to display a copycat website of a Complainant’s legitimate website is bad faith use of a disputed domain name (Curo Intermediate Holdings Corp. v. Dhruvin Shah,WIPO Case No. D2016-1282; Arkema France v. Aaron Blaine,WIPO Case No. D2015-0502). Further, the Respondent’s choice to retain a privacy protection service so as to conceal its true identity and the use of a false address in the WhoIs data once the shield was lifted and, consequently, the Center not being able to have the communication delivered to it supports a finding of bad faith. For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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, Wilson Pinheiro Jabur
August 9, 2005 and successively renewed, in class NCL(8) 35;
January 13, 2009 and successively renewed, in local class 36.10/30/70;
October 29, 2014, in class NCL(9) 37; and
October 29, 2014, in class NCL(9) 9.
Sole Panelist
Date: August 5, 2020
Full & Egal Universal Law Academy