The Complainant is Generali France, France, represented by Me Haas, France.
The Respondent is Contact Privacy Inc. Customer 0161924409, Canada, / pat pipou, generali-ehpad, Israel.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2021, 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 July 28, 2021, 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 August 3, 2021.
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 August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 7, 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 BackgroundThe Complainant is a French corporation exploiting the insurance business in France that belongs to the Italian group Assicurazioni Generali Spa, referred to as Generali Group, founded in Trieste, Italy 190 years ago.
The Complainant is the owner of the French trademark registration No. 3351701 for the word and device mark GENERALI FRANCE, registered on April 8, 2005, and subsequently renewed in class 36 (Annex 15 to the Amended Complaint), as well as of the domain name
The disputed domain name
The Complainant asserts to be part of the Generali Group, one of the world’s leading insurance companies and the third largest insurance company in Europe, present in 50 countries around the world with more than 72,000 employees and 65.9 million customers.
Having been awarded several prizes, the Complainant claims that its trademark has become extremely well-known, as well as the presence of the Generali group in the European economy and its involvement to develop sustainable business models and to contribute to a faster recovery in times of sanitary and economic crisis.
According to the Complainant, the disputed domain name was created on June 18, 2021, by a person using a privacy service offered by the Registrar under an incomplete address, thus making it impossible to reach the Respondent at the address indicated at the WhoIs information.
Furthermore, the Complainant states that it became aware of fraudulent practices using the email address “[name]@generali-ehpad.com” in June 2021. In the emails sent by such account (Annex 18 to the Amended Complaint) the Respondent, reproducing the Complainant’s logo and physical address, requests passport copies, proof of address and bank account details to the Complainant’s customers.
Having the Complainant sent a cease-and-desist letter on July 20, 2021, to the Respondent and Registrar (Annex 20 to the Amended Complaint), no reply from the Respondent was received.
The Complainant therefore contends that the disputed domain name is confusingly similar to its GENERALI FRANCE well-known trademark, being irrelevant the addition of the “ephad” acronym which means “Etablissement d’Hébergement pour Personnes Agées Dépendantes” (Establishment for the Housing of Aged Dependent Persons, in a free translation into English), and might refer to one of the costs incurred with a care home for elderly people which is covered by some of the Complainant’s insurances.
As to the absence of rights or legitimate interests, the Complainant argues that the Respondent:
i. has not been granted any authorization to use or register a domain name composed with the Complainant’s trademark;
ii. is not a licensed distributor of the Complainant;
iii. has not used the disputed domain name in connection with a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy), given the fraudulent emails sent impersonating the Complainant;
iv. is not making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain; and
v. has not been commonly known by the disputed domain name.
As to bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent intentionally registered the disputed domain name so as to falsely impersonate the Complainant by way of sending emails to the Complainant’s customers. The website the disputed domain name resolved to also reproduced the Complainants logo and address, which demonstrates the Respondent is intentionally misleading and confusing the public into believing that it is associated or affiliated with the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 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:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.
A. Identical or Confusingly SimilarThe Complainant has established rights in the GENERALI FRANCE trademark.
The disputed domain name
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a 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, even if it has not 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 or legitimate interests in the disputed domain name. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent, which has not been commonly known by the disputed domain name and neither is licensed distributor of the Complainant or has been granted any authorization to use or register a domain name relating to the Complainant’s trademark.
According to the evidence submitted (Annexes 18 and 19 to the Amended Complaint), the Respondent has used the disputed domain name to intentionally mislead the Complainant’s customers by sending fraudulent emails impersonating the Complainant and requesting copies of sensitive personal information, which cannot be considered as a bona fide offering of goods or services under the Policy. See WIPO Overview 3.0, section 2.13.
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 FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the use of the disputed domain name seeking to impersonate the Complainant for fraudulent purposes, as seen above.
Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:
a. the reproduction of the Complainant’s logo in the fraudulent emails messages sent using the disputed domain name;
b. the absence of a formal Response by the Respondent;
c. the absence of a reply to the cease-and-desist letter sent prior to this procedure;
d. the choice to retain a privacy protection service so as to conceal the Respondent’s identity; and
e. the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to it by courier.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
7. DecisionFor 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
Sole Panelist
Date: September 10, 2021