WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zurich Insurance Company v. Assurebank
Case No. D2001-1364
1. The Parties
Complainant is Zurich Insurance Company, a corporation organised and existing under the laws of Switzerland, and represented by Harbottle & Lewis, London, UK.
Respondent is Assurebank, Nottingham, UK.
2. The Domain Name and Registrar
The domain name at issue is <zurich-banque.com>.
The registrar is Active ISP ASA, Oslo, Norway.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 16, 2001, and subsequently in hard copy on November 20, 2001. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on November 20, 2001.
On November 20, 2001, a Request for Registrar Verification was transmitted to the Registrar. On November 21, 2001, the Registrar confirmed that they were in receipt of the Complaint sent to them by the Complainant and that the domain name <zurich-banque.com> was registered with them and was in "registrar lock" status. The Registrar forwarded at the same time the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the WIPO Center on November 22, 2001. Some deficiencies were discovered, which were then corrected by the Complainant.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Supplemental Rules"), in effect as of December 1, 1999.
The Complainant paid on time and in the required amount the fees for a single-member Panel.
On November 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of December 18, 2001, by which the Respondent could file a Response to the Complaint. Due to the Respondentís request for an extension, and the Complainantís agreement, this deadline was extended to December 28, 2001.
A Response was received by the WIPO Center in hardcopy on January 4, 2002. (The WIPO Center accepted the Response as being filed on time as it was sent before the due date.) The Response was received in electronic form on January 9, 2002.
Complainant filed an additional submission on January 30, 2002, in which they commented on some of the issues raised in the Response. Since these comments relate to some of the facts of the case, as these facts were presented by the Respondent, and could not have been reasonably anticipated by the Complainant at the time the Complaint was filed, the Panel finds that the submission shall be allowed.
On January 28, 2002, the WIPO Center invited Knud Wallberg to serve as a Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Knud Wallbergís Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on February 4, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was February 18, 2002.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
The Administrative Panel has issued its Decision based on the Complaint, the Response, the Policy, the Rules, the WIPO Supplemental Rules.
4. Factual Background
The Complainantīs activities
The Complainant is a member of the Zurich Financial Services Group ("Zurich") which is one of the worldís leading financial services organisations providing services for around 35 million customers around the world.
The roots of Zurich stretch back to the 19th century with the founding of the Zurich Insurance Company in 1872 in Zurich as a reinsurance business under the name "Versicherungs-Verein" (Insurance Association). By 1877, Zurich was already providing financial services to customers outside Switzerland. Zurich expanded its business first into France followed by most of the rest of mainland Europe by the end of the 19th Century. In 1894 Zurich changed its name to "Zurich Allgemeine Unfall- & Haftpflicht-Versicherungs-Aktiengesellschaft" (Zurich General Accident and Liability Insurance Limited). By 1912 Zurich had begun business in the US and by 1923 was also active in the UK and Canada.
After a period of organic growth and some acquisitions prior to the mid-1950s, Zurich began extensive expansion between 1955 and 1976. In 1955, the Zurich Allgemeine Unfall- & Haftpflicht-Versicherungs-Aktiengesellschaft was renamed Zurich Versicherungs-Gesellschaft (Zurich Insurance Company).
In 1996 and 1997, Zurich made further acquisitions in the insurance market in the US. In 1998, Zurich and the financial services businesses of UK based B.A.T Industries combined their activities in the insurance and financial services sectors to become the Zurich Financial Services Group headed by two top holding companies, Allied Zurich p.l.c listed on LSE, and Zurich Allied A.G., listed on (SWX).
Today, Zurich carries out financial activities in more than 60 countries and has in the region of 70,000 employees worldwide. The Group has a total business volume of US$50 billion and as at December 31, 2000, had a normalised net income of over US$2 billion and over US$440 billion of assets under management.
Zurichís five business segments are non-life insurance (including property, accident, car and liability insurance), life insurance, reinsurance, farmersí management services and asset management. In March 2001, Zurich and the Bank of Scotland announced plans for a major joint venture to provide banking services and loan products to the Groupís 4.5 million UK retail customers. The joint venture, which will become operational in the near future, will offer bank accounts, personal loans, mortgages and credit cards under the ZURICH name.
In February 2001, Zurich launched its financial services portal accessed at <www.zurich.ch/financepoint>. This provides Zurichís customers with online banking and insurance products together with share portfolio valuations and market news. The web site currently has about 35,000 customers and, on average, receives 3500 hits per day.
The Complainant is the owner of all worldwide trade mark applications and registrations which include the word ZURICH, attributable to the Zurich Financial Services Group of Companies. The Complainant is the owner of hundreds of trade mark applications and/or registrations around the world for marks incorporating the ZURICH name and, in particular, is owner of nearly 100 applications and registrations incorporating the ZURICH name which cover, amongst other Countries, the United Kingdom.
Zurichís reputation has extended beyond financial services through its sponsorship of the English Rugby Union Clubsí Premiership and Championship. Zurich has spent in the region of £12 million plus VAT on the sponsorship arrangements and during the initial three year sponsorship period will spend in the region of a further £12 million on exploitation and promotion of the sponsorship agreement.
Attached to the Complaint was a print out of all trade mark applications and registrations which include the word ZURICH in the name of the Complainant and which cover the United Kingdom. These include registered European Community trade marks for the word ZURICH alone and European Community and International (Madrid Protocol) applications for the words ZURICH BANK.
In addition to <zurich.com>, the Complainant is also registrant of nearly 200 domain names which incorporate the ZURICH mark. Attached was a schedule of these domain names.
The Respondentís Activities
Respondent has not provided the Panel with detailed information on his general activities, but it appears from the Response that he is engaged in the registration of domain names, including registration of domain names for others.
The contested domain name was registered by Respondent on January 11, 2001.
5. Partiesí Contentions
The following is taken from the Complaint.
The Complainant first became aware of the Respondent on August 9, 2001, when Zurich Group head office, on checking the availability of certain domain names, identified <zurich-banque.com> registered to the Respondent.
In accordance with Zurichís usual practice for dealing with third parties which it believes is attempting to trade on the back of ZURICHís name and goodwill in the United Kingdom, the Legal Department of Zurich Financial Services (UKISA) Limited, sent a letter to the Respondent on September 10, 2001, requesting transfer of the domain name. A copy of this letter was attached to the Complaint.
In response to this letter the Respondentís administrative contact telephoned Complainant. He indicated that he had registered the domain name for a third party, together with other domain names, and was owed £50,000 by his client. Respondent indicated in the conversation that he would provide a letter to the Complainant setting out his position. As at the date of filing the Complaint no letter had been received. Despite Respondentís assertion that the domain name was registered for a third party, the domain name is still registered to Assurebank in Nottingham.
Confusingly Similar Nature
The domain name <zurich-banque.com> contains a word identical to the Complainantís trade mark ZURICH with no relevant distinguishing matter, merely the French word for "bank". As the Complainant has established, in particular, a reputation in the financial services and banking industries, there is potential for confusion amongst the public who have become accustomed to seeing the ZURICH mark used in association with generic suffixes such as "bank", "insurance" and "finance" to describe its various products and services. Furthermore, the Complainant has filed trade mark applications for ZURICH BANK throughout the European Union. The domain name is therefore confusingly similar to the trade mark ZURICH in which the Complainant has registered and unregistered/common law trade mark rights. Accordingly, the provisions of paragraph 4(a)(i) of the Policy are satisfied.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <zurich-banque.com> pursuant to the Policy paragraph 4(a)(ii) as evidenced by the following facts:
The Respondent has no relationship with or permission from the Complainant for the use of the mark ZURICH BANQUE nor has the Complainant consented to the Respondentís application for registration of, or use of, any domain name incorporating that mark;
The domain name was registered by the Respondent on January 11, 2001. At this time the Complainant and its group of companies had a very considerable reputation in the ZURICH name in the UK and elsewhere. At that time the Complainant had both UK and overseas registered trade mark rights in the ZURICH name and had common law trade mark rights in the name which it had been accruing since 1872;
As far as the Complainant is aware there is no evidence of the Respondentís use of or demonstrable preparations to use the domain name in connection with a bona fide activity. As at the date of filing the Complaint, the domain name did not access an active web site. The Complainant also contends that any commercial activity under the ZURICH BANQUE name without licence or authority from the Complainant is not bona fide due to the strength of its common law and registered trade mark rights;
As far as the Complainant is aware the Respondent is not commonly known by the domain name and submits that this is highly unlikely bearing in mind the substantial goodwill established by the Complainant in the trade mark to date and its policing of the ZURICH mark;
The Complainant is not aware that the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain and the Complainant submits that any use of the domain name by the Respondent is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainantís well known registered trade mark.
The Complainant contends that the Respondent has registered and is using the domain name in bad faith in violation of the Policy at paragraph 4(a)(iii) on the following grounds:
At the time of the registration of the domain name by the Respondent the mark ZURICH was well known both in the UK and overseas. The Complainant had created substantial goodwill in the mark since Zurich Insurance Company was formed in 1872 and had trade mark rights which were first registered in Switzerland in 1894;
It is beyond reasonable belief that the Respondent registered the domain name without the Complainant or the Zurich group in mind, in particular, due to the fact that the Respondentís name, Assurebank, and the domain name itself, indicate a reference to a bank;
From the evidence, the Complainant has reason to believe that the domain name was registered in order to hold the Complainant to ransom by forcing them to buy the domain name at a price. The Respondent indicated that he was owed £50,000 by an individual for whom he allegedly registered the domain name. Such a sum of money is far in excess of any registration cost and the Complainant suspects that the reference to such a sum was merely an attempt to induce the Complainant to make an offer to buy the domain name for a considerable amount of money.
The following information is taken from the Response.
In late 1999, Respondent was allegedly approached by an individual in order to register on his behalf a number of domain names. Apparently he represented a very large number of US attorneys, who in turn represented a multitude of companies.
The domain names were registered but there appeared problems with effecting the payment. When this became known, Respondent looked into the names registered and some seemed to have connections to large companies, which fitted in with the profile the said person gave Respondent.
In March 20001, Respondent was offered a sum of £55,000 UK sterling for their portfolio of domain names, but the company, which was going to purchase the portfolio, later pulled out of the deal.
From then until September 2001, Respondent heard nothing more from anybody until receiving Complainantís letter.
In response to this, Respondent contacted a representative of the Complainant and the parties had several telephone conversations after that. The parties are not in agreement as to the exact content of these conversations.
However, Respondent points out that he did not market or offer for sale the domains, nor did he ever approach Zurich Financial or subsidiaries and/or their representatives about purchasing these domains, nor did he ask for any sum of payment in excess of a fair amount to cover their costs.
On January 11, 2001, Zurich were not operating as a bank.
Zurich is a common name; it is in every dictionary and atlas.
Respondent also refers to a company called Bank Leu, which it says has been using "Zurich Asset Management" within their website and in advertising without any actions taken by Complainant. (As stated in the Complainantís supplementary submission, this information has, however, been denied by Bank Leu.)
Zurich is a very internet aware company, and had ample opportunity to register this domain name, in registering in excess of 200 others, since it is a dot.com name it has been available for the life of the internet.
The contested domain name has never been used. The claim that it could be used to misrepresent is not valid, since Respondent has never misrepresented that they are part of any established organization.
The contested domain name is to be used as a directory of Swiss Banks <www.swiss-banque.com>, with separate sections for Geneva <www.geneva-banque.com> and Zurich <www.zurich-banque.com> with the domains <www.banque-geneva.com> and <www.banque-zurich.com> being purchased to protect the domains from copying.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainantís mark ZURICH is registered and has been used in numerous countries around the world including the UK. The fact that Zurich is the name of a city in Switzerland, does not preclude that it can be protected as a trademark for a private entity. In addition the mark must be considered to be a well-known mark for financial services in particular but not limited to insurance services.
The domain name <zurich-banque.com> contains the word ZURICH in full as the first and dominant part of the domain name. To this part is added the descriptive French word "banque" and the suffix ".com". Under these circumstances the domain name must be considered to be confusingly similar to the trademark ZURICH in which the Complainant has rights.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, the Respondent has not demonstrated that he has any prior rights in the domain name.
Respondent states that the domain name was intended to be used as part of a directory on Swiss banks in a special section on banks situated in Zurich. Respondent has, however, not provided any information at all in support of this claim, such as a concrete business plan or examples of his engagement in other directories of the same nature.
The prerequisites of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
Based on the information provided, it must be considered that ZURICH is a well-known mark in the country of residence of the Respondent, the UK, and that Respondent therefore had knowledge of the existence of the Complainant and of its rights to the trademark ZURICH at the time he registered the domain name.
As pointed out by the Respondent, and as it is also stated in the Complaint, the Complainant was not directly involved in banking activities at the date of registration of the contested domain name. However, this does not mean that Respondent, who as stated above does not have any legitimate interest in the name ZURICH, is free to use the mark in combination with a generic term that is closely connected to the Complainantís activities. As the Panel sees it, the Respondent had no reason to register and use the domain name other than to attract Internet users by suggesting that the Complainant is associated with the Respondent or to transfer registration for consideration in excess of his out-of-pocket costs. This is an attempt to misappropriate the Complainantís reputation for commercial gain.
The website available at <www.zurich-banque> is a site without content. The mere holding of a domain name is regarded as passive use and thus may constitute use within the meaning of the Policy (see WIPO Case D2000-0003 and several subsequent decisions). This is also true in this case.
The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The above mentioned considerations and views are supported by several previous decisions under the Policy. In addition to those referred to by the Complainant the Panel can also refer to some decisions such as WIPO Case D2001-0055 <aolcasino.com> et. al and WIPO Case D2001-0046 <telstramobiles.com> et al.
In view of the above circumstances and facts the Panel finds that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Consequently the Panel decides that the domain name <zurich-banque.com> should be transferred to the Complainant.
Dated: February 18, 2002