On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 101394
Time of Filing 2016-12-16 09:41:20
Disputed domain name ALLIANZNOW.COM
Case Administrator
Name Aneta Jelenová
Complainant
Organization ALLIANZ SPA
Authorized Representative
Organization PORTA, CHECCACCI & ASSOCIATI S.p.A.
Respondent
Organization STRAUSS INVESTOR SERVICES INC
Other Legal Proceedings
The Panel is unaware of other legal proceedings, pending or otherwise, which relate to the Disputed domain name.
Identification of rights
The complainant is the proprietor of the company name ALLIANZ, of numerous trademarks ALLIANZ registered in Germany and other countries such as e.g. International Registration 1106871 ALLIANZ registered since 14-07-2011 in classes 09,35, 36, 37, 38, 39, 41, 42, 44 and 45 and claiming protection in AU, BH, CO, EM, NO, OM, SG, TR, US, CH, CN, EG, RU, as well as of registered domains with the keyword ALLIANZ such as the domain <allianz.it>, registered on 12-04-1999.
Factual Background
ALLIANZ S.P.A. (hereinafter called ALLIANZ) is the owner of several domain names and trademarks.

ALLIANZ SPA (belonging to Allianz Group) is a financial services company headquartered in Munich, Germany. Its core businesses are insurance and asset management. As of 2014, the ALLIANZ GROUP is the world's largest insurance company, the largest financial services group and the largest company according to a composite measure by Forbes magazine, as well as the largest financial services company when measured by 2013 revenue.

The disputed domain allianznow.com

(Attachment 1 - whois) constitutes usurpation and violation of the rights of the Complainant ALLIANZ with regard to its company name, trademarks and domain names.

The opposed domain name ALLIANZNOW.COM is confused with:

a) the company name ALLIANZ
b) the trade mark applications and / or trademark registrations valid in the world with keyword ALLIANZ SPA (Attachment 2 – trademark registrations) and the domain names (Attachment 3 – domain names).

ALLIANZ is a well-known name worldwide and the Complainant has obtained rights in its name prior to the Respondent’s registration of the domain name. Given that it is unlikely that the Respondent registered the domain names without knowing the existence of the Complainant.

The domain ALLIANZNOW.COM can become a negative vehicle of communication due to the fact that such domain is linked to a site that doesn’t work (Attachment 4 – home pages).

This creates a damage to the reputation of ALLIANZ SPA Group.

The Respondent wrongfully benefits from the distinctiveness, fame and commercial goodwill obtained during all these years by the large use of the sign ALLIANZ through the media - being linked to the fame and reputation of ALLIANZ (and ALLIANZ GROUP) that have had for years in the international market.

In Complainant’s opinion, the use of the contested domain name that is done by the respondent it is a manner to catch the flow of internet users who have mistyped Complainant’s ALLIANZ is owner of several trademarks and domain names with keyword “ALLIANZ”.

It is well settled that the mere misspelling of a mark or the addition of a generic word do not distinguish a domain name from a mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied) see also See Capital One Financial Corp. v. Spider Webs, Ltd., FA 98830 (Nat. Arb. Forum Sept. 28, 2001) (finding that respondent’s use of the <capitolonebank.com> domain name to divert Internet consumers to respondent’s own site was not a bona fide use); TransOcean Bank & Trust, Ltd. v. Erica Ojaruwedia, FA 158163 (Nat. Arb. Forum July 7, 2003) (finding that respondent’s use of the <transoceanbank.com> domain name to divert complainant’s potential customers to respondent’s web site was not a bona fide offering of services).

Rights or Legitimate Interests:

The Complainant has not authorized or licensed the Respondent to use the Complainant’s trade mark or trade name so that Respondent is using a domain name confusingly identical of ALLIANZ ‘s well-known mark to ensnare unsuspecting Internet users.

Respondent has registered the domain name under the name ALLIANZ there is no other evidence in the record suggesting that respondent is known with the sign “ALLIANZ”.

The Complainant could credibly state that they are unaware of any reason or circumstance which could be indicative of such right or legitimate interest in the domain:

ALLIANZNOW.COM

The damage suffered by ALLIANZ, due to the above domain name registration (ALLIANZNOW.COM) can clearly be seen from the attempt to exploit the renown of the name ALLIANZ widely recognised throughout Italy, Europe and Worldwide.

As already said, the rights of the complainant ALLIANZ deriving from all of the domains name and trademark registrations ALLIANZ have also clearly been harmed.

ALLIANZNOW.COM domain name appropriates a common misspelling of Complainant’s ALLIANZ domains/marks in its entirety. The registrant Strauss Investor Services, Inc. has used a confusingly similar misspelling of Complainant’s famous ALLIANZ domain/marks to ensnare unsuspecting Internet users.

The Respondent is unfairly and opportunistically appropriating the goodwill associated with Complainant’s famous ALLIANZ domain/marks.

These circumstances strongly evidence Respondent’s bad-faith registration and use of the domain names.

It is well settled that the mere adding the general word like “now” is insufficient to avoid confusing similarity.

See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”

Registration in bad faith:

The Respondent does not have any rights or legitimate interests in the domain name.

Respondent’s use of the domain name ALLIANZNOW.COM for website very confusingly with domain name, trademarks and company name of Allianz and this constitutes a ground for bad faith under UDRP Rules.

The domain name was registered in bad faith for the sole purpose of creating an interference with the well-known brand.

Allianznow.com domain name appropriates a common misspelling of Complainant’s ALLIANZ mark, domain in its entirety.

In view of these circumstances, there is no reasonable possibility that the domain name was selected by Respondent for any purpose other than a brazen attempt to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.

Such use of the domain name does not constitute a bona fide offering of goods or services. See Whitney National Bank v. Unasi Management, Inc., FA 449357 (Nat. Arb. Forum May 13, 2005) (inferring that respondent receives pay-per-click fees when Internet users follow the links on respondent’s web sites and finding that respondent’s use of the domain names did not constitute a bona fide offering of goods or services); Wachovia Corp. v. InterMos, FA 102520 (Nat. Arb. Forum Jan. 8, 2002) (finding that respondent’s use of the <firstunionbank.com> domain name to offer links to an online casino gambling site did not constitute a bona fide offering of goods or services); Torrington Savings Bank v. North American Export Co., FA 147312 (Nat. Arb. Forum May 19, 2003) (finding that respondent’s use of the <torringtonsavingsbank.com> domain name to link to a site offering web hosting services did not constitute a bona fide offering of services). See also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad-faith registration and use where “the Respondent’s domain name is composed entirely of the Complainant’s name” and “[t]here is no reasonable possibility that the name ‘KARLALBRECHT.COM’ was selected at random”).

Therefore, having ascertained 1) the identity of the domain name ALLIANZNOW.COM to the domains/marks/company name of the Complainant; 2) the confusing similarity of the domain name ALLIANZNOW.COM registered by Strauss Investor Services Inc. with the rights deriving from the trademarks registered in Italy and abroad by the Complainant 3) the renown associated with the word 4) the illegality of the Registrant by Strauss Investor Services Inc. in registering the domain name Allianznow.com 5) the bad faith of Strauss Investor Services Inc. 6) Mutual Jurisdiction of the complainant; the undersigned ALLIANZ S.p.a. as above identified asks for the re-assignment of the domain Allianznow.com to the Complainant.
 
No administratively compliant response has been filed.
Rights
The Complainant has, to the satisfaction of the Panel, shown the Disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the Disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
PRINCIPAL REASONS FOR THE DECISION

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that the Disputed domain name should be transferred or cancelled:

(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 Panel has examined the evidence available to it and has come to the following conclusion concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:


RIGHTS

The Disputed domain name is confusingly similar to the Complainant’s Trademark, company name and domain. This finding is based on the settled practice in evaluating the existence of a likelihood of confusion of

a) disregarding the top-level suffix in the domain name (i.e. “.com”), and

b) not finding that the addition of a generic word (such as “NOW”) would be sufficient to distinguish a domain name from a trademark.

Therefore, the Panel comes to the conclusion that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the UDRP.


NO RIGHTS OR LEGITIMATE INTERESTS

The onus to make out a prima facie case that the Respondent lacks rights or legitimate interests is placed on the Complainant. However, once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (see e.g. WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

The Complainant has put forward that the Respondent is not commonly known by the Disputed domain name. Neither is the Respondent in any way related to the Complainant. Nor has the Respondent been granted an authorization or license to use the Disputed domain name by the Complainant. This has not been contested by the Respondent. Instead, the Respondent failed to provide any information and evidence whatsoever that could have shown that it has relevant rights or legitimate interests in respect of the Disputed domain name (within the meaning of paragraph 4(a) (ii) of the Policy).

Therefore, the Panel concludes that the Respondent did not establish any right or legitimate interest to the Disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.


BAD FAITH

The Panel finds that the Complainant has established that the Disputed domain name was registered by the Respondent and is being used by the Respondent in bad faith. For this purpose, the Complainant has successfully put forward prima facie evidence that the Respondent has not made use, or demonstrable preparations to use, of either the Disputed domain name in connection with a bona fide offering of goods or services, or of making a legitimate non-commercial or fair use of the Disputed domain name. The Respondent is also in no way commonly known under the Disputed domain name. This prima facie evidence was not challenged by the Respondent, not even after the cease and desist letter of the Complainant dated October 06, 2016.

The failure of the Respondent to reply to this cease and desist letter may be seen as further evidence of bad faith (see e.g. Coutts & Co. v. Sande Skalnik, Patrick Harding, WIPO Case No. D2015-1590; Citrix Systems, Inc. v. Domains by Proxy, LLC / Sirishareddy Idamakanti - Sirisha Idamaknti, WIPO Case No. D2015-0017; E. & J. Gallo Winery v. Oak Investment Group, WIPO Case No. D2000-1213; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330). The Panel finds that this also applies in this case.

In the absence of a Response and given the reputation of the Complainant and its trademarks, company name and domain as supported by the Complainant’s evidence, the Panel must conclude that the Respondent was fully aware of the Complainant's trademarks, domain and company name "ALLIANZ" at the time of registering the Disputed domain name <ALLIANZNOW.COM>. Therefore, it has been established to the satisfaction of the Panel that the Disputed domain name was registered and is being used (at least passively) in bad faith, in order to prevent the Complainant from making proper use of the mark in the Disputed domain name.

Therefore, the Panel concludes that the Respondent has registered and is using the Disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(iii) of the Policy.
Decision
For all the following reasons, the Complaint is Accepted
and the disputed domain name(s) are to be
ALLIANZNOW.COM Transferred to The Complainant
Panellists
Name Udo Pfleghar
Date of Panel Decision 2017-01-20
Publication of the Decision
Publish the Decision