WIPO Domain Name Decision D2021-2433 for generali-avenir.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Generali France v. Contact Privacy Inc. Customer 0161639042 / sylvie perche, generali-avenir Case No. D2021-2433 1. The Parties

The Complainant is Generali France, France, represented by Me Haas, France.

The Respondent is Contact Privacy Inc. Customer 0161639042, Canada / sylvie perche, generali-avenir, France.

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 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 Alexandre Nappey 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 Background

The Complainant is a corporation registered in France operating in the financial services and insurance sectors. It belongs to the Italian group ASSICURAZIONI GENERALI Spa, the name of which is “Groupe Generali”. It states that it is a worldwide leader in the insurance field, having been established in 1832 and now employing over 8.500 individuals in over 65 countries. It has registered capital of over EUR 1.5 billion. In 2008, it was the third largest global insurer with a turnover of EUR 64.4 billion.

Generali France is the owner of the French semi-figurative color trademark GENERALI FRANCE registration no. 3351701, registered on April 8, 2005, in class 36 to designate insurance and financial services.

The Complainant is also the holder of the domain name registered on July

6, 2011. This domain name gives access to the website “www.generali.fr” on which the

GENERALI FRANCE insurance services are offered.

The disputed domain name was created on May 12, 2021, by an individual using a privacy service offered by the Registrar Tucows.

5. Parties’ Contentions A. Complainant

The disputed domain name incorporates the distinctive verbal element GENERALI of the GENERALI FRANCE trademark, in which the Complainant has rights. This term is placed in leading position, followed by a hyphen and the French word “avenir”.

The general Top-Level Domain (“gTLD”) “.com” has a technical function and is disregarded for the purpose of the comparison.

The disputed domain name includes the French word “avenir” which appears in the domain name registered by the Complainant on July 6, 2011.

Therefore, the Complainant claims that the disputed domain name is confusingly similar to its trademark GENERALI FRANCE.

The Complainant has not granted the Respondent any authorization to use and register a domain name composed with its GENERALI FRANCE trademark.

The disputed domain name is used for obvious illegal purposes, including phishing, identity theft, trademark infringement.

Given the fame of the Complainant and of the GENERALI FRANCE trademark and the fact that the Domain Name is so obviously connected with the Complainant’s mark and business in France, the Respondent obviously targeted the Complainant and its GENERALI FRANCE trademark when registering the disputed domain name.

The disputed domain name is used through email addresses such as “jXXX.mXXXX@generali-avenir.com” or “fXXXXX.fXXXXX@generali-avenir.com” respectively used by Mr. Jean M and by Franck F.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.

A. Identical or Confusingly Similar

The Complainant has established that is has registered trademark rights for the mark GENERALI FRANCE for insurance and financial services. It has also established that it belongs to an international group operating in numerous countries under the trademark GENERALI and has an established business reputation under that mark in connection with insurance and financial services. The disputed domain name incorporates the Complainant’s mark main element “generali” with the addition of the French word “avenir” and the gTLD “.com”.

In these circumstances, the Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] 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 [the Respondent] 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.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its GENERALI FRANCE trademark.

It results from the circumstances that the Respondent does not own any right on the trademark GENERALI FRANCE and is not commonly known by the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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:

(i) circumstances indicating that you have registered, or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(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 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 your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

Bad faith is obvious in the present case based on the following circumstances.

First, the Respondent had necessarily the Complainant’s trademark in mind when he chose the disputed domain name. Indeed, the disputed domain name not only includes the term “generali” of the mark GENERALI FRANCE; it is also very similar overall to a domain name operated by the Complainant .

Second, it is established that the Respondent has operated a phishing scheme impersonating the Complainant and trying to confuse the Complainant’s clients. The use of misleading email addresses, to impersonate the Complainant and its staff, lured a number of customers. Such use was for the commercial gain of the Respondent.See Bouygues SA v. Benoît Ratelet,
WIPO Case No. D2020-3040.

Therefore, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.

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.

Alexandre Nappey
Sole Panelist
Date: October 5, 2021

Full & Egal Universal Law Academy