Complainant is VHV Allgemeine Versicherung AG, Germany, represented by JBB Rechtsanwälte Jaschinski Biere Brexl Partnerschaft mbB, Germany.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Minh Choi, Afghanistan.
2. The Domain Names and RegistrarThe Domain Names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 17 and 18, 2021, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2021, providing the registrant and contact information for multiple underlying registrants disclosed by the Registrar, and inviting the Complainant to either amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control and indicate which disputed domain names will no longer be included in the current Complaint. The Complainant filed an amended Complaint on July 12, 2021.
The Center received an informal email communication from a third party on July 4, 2021.
On July 15, 2021, the Complainant filed a request for partial withdrawal with regards to the domain names
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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Respondent did not submit any response.
The Center appointed Marina Perraki as the sole panelist in this matter on September 16, 2021. 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 BackgroundComplainant is an insurance company operating in Germany since 1919. Complainant started operating under the name “VHV” in various forms since 2003. Even earlier, September 14, 2000, the companies of Complainant’s group started to use “VHV” in their company names. Complainant, since February 23, 2006 has been trading under the name “VHV” continuously until today as have all the companies of its group. Complainant holds its main website at “www.vhv.de”.
Complainant and its group of companies are owners of VHV trademarks including, inter alia, the following:
- German trademark registration no. DE2911665, VHV (fig.), filed on January 1, 1995, and registered on August 21, 1995, for services in international Class 36;
- German trademark registration no. DE30737113, VHV III VERSICHERUNGEN (fig.), filed on June 8, 2007 and registered on September 24, 2007, for services in international Class 36; and
- German trademark registration no. DE302010026451, VHV (word), filed on May 3, 2010, and registered on July 12, 2010, for services in international Class 36.
The Domain Name
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Domain Names incorporates Complainant’s trademark VHV in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The word “versichern(s)” which in German language means “to insure”, is also in the form of noun “Versicherungen” part of Complainant’s trademarks in combination with the dominant element VHV.
The addition of the word “versicherung(s)” does not avoid a finding of confusing similarity as the VHV mark remains recognizable within the Domain Names (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft,WIPO Case No. D2013-0904, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.9).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the VHV mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Names directed to the Websites, mimicking Complainant’s main website. The Domain Name
Use of a domain name for illegal activity (e.g. phishing) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).
This, along with the fact that the Domain Names were initially registered with a privacy shield service speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith.
Because the VHV mark had been used and registered at the time of the Domain Names registration by Respondent, noting also the composition of the Domain Names, both including the trademark of Complainant VHV and the word “versichern” which clearly shows knowledge of Complainant and its field of activity, along with the fact that Complainant operates the website “www.vhv.com”, the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Names (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226).
The Domain Names were therefore probably created for commercial gain by intentionally creating a likelihood of confusion with Complainant’s trademarks and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of a finding of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).
As regards to bad faith use, Complainant demonstrated that Respondent used the Domain Names to host the Websites, mimicking Complainant’s main website, with identical pictures, content and legal information of Complainant. Respondent therefore registered and used the Domain Names to take advantage of a confusion with Complainant.
In addition, use of a domain name for purposes such as phishing, constitutes bad faith use (WIPO Overview 3.0, section 3.4) and further evidences bad faith (Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC,WIPO Case No. D2018-2510).
The Domain Names subsequently resolved to an inactive and a blocked website containing a malicious content warning, respectively. The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3). Currently it redirects to different sites at different times, even blocked ones for security reasons.
The Panel considers also the apparent initial concealment of the Domain Name holder’s identity through use of a privacy shield is further indicative of bad faith in this proceeding (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364).
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Names in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names,
Marina Perraki
Sole Panelist
Date: September 30, 2021