ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Generali France v. My Name Case No. D2024-3151 1. The Parties The Complainant is Generali France, France, represented by Cabinet Lavoix, France. The Respondent is My Name, United States of America. 2. The Domain Name and Registrar The disputed domain name
is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2024. On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2024, 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 (Domain administrator, See Privacyguardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar(s), requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on August 13, 2024, and requested the withdrawal of domain name . The Center notified the parties of the partial withdrawal on August 16, 2024. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2024. The Center appointed Dawn Osborne as the sole panelist in this matter on September 20, 2024. 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 Generali Group was established in 1831 in Italy and is one of the largest global players in the insurance industry. Generali Group is present in France through the Complainant, a French company established in 1832 which is one of the leading insurers and asset managers in France. The Complainant is the owner of, inter alia, the following French trademark registration: - GENERALI FRANCE GROUPE GENERALI (plus device) trademark number No 3351701 registered since September 9, 2005 in class 36, for insurance and financial services. The Complainant is also the holder of the domain name registered on July 30, 1996 and used for a website where the Complainant’s services are offered. The disputed domain name registered on May 29, 2024 has been used to conduct fraudulent email phishing activities through which the Respondent impersonated a salesperson of the Complainant to discuss the subscription to a savings contract using the Complainant’s address, the name of a company connected to the Complainant and documents bearing the Complainant’s logo. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: The Complainant is the owner of the GENERALI FRANCE GROUPE GENERALI (plus device) mark, registered for insurance and financial services since 2005. The disputed domain name registered in 2024 is confusingly similar to the Complainant’s trademark incorporating the distinctive part of the Complainant’s mark GENERALI with the addition of the generic french word “investissement” meaning investment in English and the generic Top-Level Domain (gTLD) “.com” which do not prevent the said confusing similarity. The Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by it and is not authorised by the Complainant. The disputed domain name does not resolve to an active web site but has been used for a fraudulent email scheme using the name of one of the Complainant’s employees, the Complainant’s address, the name of a
page 3 company connected with the Complainant and the Complainant’s logo. Such fraudulent use of a domain name to impersonate and create a false connection with the Complainant is not a legitimate use of the domain name or bona fide offering of goods and services. The Respondent’s use of the disputed domain name shows actual knowledge of the well known Complainant, its rights and business, and is registration and use in bad faith in opportunistic bad faith for fraudulent purposes disrupting the Complainant’s business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the distinctive part of the Complainant’s mark GENERALI is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “investissement”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
page 4 Panels have held that the use of a domain name for illegal activity, here email phishing fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that while the disputed domain name does not point to an active web site and the Respondent has used the disputed domain name for a fraudulent phishing email scheme. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity, here phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: September 26, 2024
Full & Egal Universal Law Academy