WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allianz Ag And Dresdner Bank Ag V. Comofer S.L.
Case No. D2001-1398
1. The Parties
The Complainants are Allianz AG a German company with its address at Koeniginstrasse 28, 80802 Muenchen, Germany and Dresdner Bank AG a Germany company whose address is at Jürgen-Ponto-Platz 1, 60301 Frankfurt am Main, Germany. The Complainants are represented by Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111, USA. The Respondent is Comofer S.L. of Marques de la Valdavia, 111 Alcobendas, Madrid, 28100, Spain. The Respondent is represented by H & S Sampere Asociados, Calle Villanueva, 35-37, 1 3-28001 Madrid, Spain.
2. The Domain Names and Registrars
The domain names in dispute are: <allianz-dresdnerbank.com>, <allianz-dresdner.org> and <allianz-dresdnerbank.info>. The Registrar of <allianz-dresdnerbank.com> and <allianz-dresdner.org> is Internet Domain Registrars, d/b/a Registrars.com of Suite 1900, One Bentall Centre, 505 Burrard Street, Vancouver, British Columbia, Box 44, Canada V7X 1M6. The Registrar of <allianz-dresdnerbank.info> is Melbourne IT Limited, d/b/a Internet Names WorldWide, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
An initial Complaint (WIPO case number D2001-1243) was received by the WIPO Arbitration and Mediation Center on September 21, 2001, by email. The Complaint related only to the domain names <allianz-dresdner.com> and <allianz-dresdner.org>. On November 3, 2001, the Complainantsí representatives emailed the Center indicating that on September 22, 2001, the Respondent had registered a further domain name <allianz-dresdnerbank.info> which they asserted made it "beyond obvious that Respondent registered this additional domain name in retaliation for Complainants exercise of their rights under the policy". They asked that the Center accept an amended Complaint which related additionally to <allianz-dresdnerbank.info>. The Complainant's representatives indicated by email dated November 21, 2001, that they wished to proceed on the basis of an amended Complaint rather than the initial Complaint. Accordingly on November 22, 2001, notification was received from the Complainant terminating case number D2001-1243. On November 23, 2001, the Center confirmed that case number D2001-1243 was terminated as of November 23, 2001.
The Amended Complaint received by the Center on November 3, 2001, by email and by hard copy on November 6, 2001, was treated as a new Complaint and it is this which is currently before the Panel. It was assigned the case number D2001-1398. Case number D2001-1398 then proceeded in accordance with the usual procedures.
Acknowledgement of receipt of the Complaint for this case No. D2001-1398 was given by the Center on November 27, 2001. Requests for Registrar verification were sent by email to Registrars.com and Internet Domains WorldWide. The Registrars confirmed that the domain names <allianz-dresdnerbank.com> and <allianz-dresdner.org> were registered in the name of the Respondent, Comofer S.L. and that the Registrant of <allianz-dresdnerbank.info> was José Carlos Fernández Delgado of Comofer S.L. The Panel accepts that the proper respondent is Comofer S.L. and this is accepted by the Respondent's representatives. On December 22, 2001, a Response was received by email and on January 4, 2002, by hard copy. Receipt of the Response was acknowledged by the Center on December 27, 2001. An administrative panel consisting of a single member, Mr. Clive Duncan Thorne, was appointed on January 29, 2002.
4. Factual Background
The Complainant Allianz AG is one of the oldest and largest international insurance and financial service firms in the world. It was founded in Berlin in 1890. Its current uninterrupted international operations date from 1959. It operates in Spain under the mark "Allianz" through a Spanish subsidiary and has done since 1974.
Directly and through its group Allianz AG owns exclusive rights in the mark "Allianz" in respect of its wide range of insurance underwriting reinsurance and financial services products. Its marks are conveniently set out at a schedule at paragraph 14 of the Complaint. Copies of its registrations are set out at Annex F to the Complaint.
The Complainant Dresdner Bank AG is also one of Europe's oldest and largest financial services groups. It is active worldwide with some 1,400 branches and 50,000 employees in more than 70 countries. It owns exclusive rights in the Dresdner Bank marks and variations of the marks in jurisdictions around the world. Copies of the registrations in respect of Dresdner Bank AG are set out at Annex G of the Complaint. There is very little set out in the Response relating to the activities of the Respondent Comofer S.L. Instead the Response concentrates upon the history of the current dispute.
The Panel considers this a matter where a chronology would be helpful:
March 29, 2001 - Announcement by the Complainants that they were in "strategic talks" regarding merger.
March 30, 2001 - Registration of <allianz-dresdnerbank.com> and <allianz-dresdner.org> by the Respondent.
May 18, 2001 - Further information requested by the Complainants from the Respondent regarding the potential sale of <allianz-dresdnerbank.com> and <allianz-dresdner.org> domain names.
May 22, 2001 - Telephone communications between the Respondent and Complainantsí representative. The Respondent indicated that it was interested in the proposal to sell the domain names.
May 25, 2001 - Email from Complainantsí representative referring to Respondentís demand for an offer of $2.5 million for the domain names.
May 30, 2001 - Email from the Complainants' representative to Respondent asking for verification that negotiations would take place on the phone.
June 29, 2001 - The Respondentís representative indicated that a third party would pay $1 million for the domain names.
September 22, 2001 - Original complaint in case number D2001-1243 sent to the Respondent by email. Respondent registered domain name <allianz-dresdnerbank.info>.
The current dispute arises as the result of the announcement of a merger between the two Complainants: Allianz AG and Dresdner Bank AG on March 29, 2001. Both Complainants referred to the fact that they were in "strategic talks". A press release confirming this is exhibited at Annex A to the Complaint. The next day, on March 30, 2001, the Respondent registered two of the domain names in dispute; <allianz-dresdnerbank.com> and <allianz-dresdner.org>. The dates of registration are verified by the Network Solutions searches exhibited at Annex B to the Complaint. According to the Complainants (paragraph 36) the Respondent then repeatedly contacted the Complainantsí representative first seeking US$ 2.5 million and then a minimum of US$ 1 million for the domain names.
This is denied by the Respondent which indicates in its Response that "the Respondent does not want to sell, transfer, hire or assign the domain names which are subject to this proceeding, and has never shown any intention of doing so". The Respondent also asserts that the Complainants acted with malice when, through other third parties they "tried to give way to a situation in which the Respondent did not want to be, and thus created a delusion which is not real, such as the intention of Comofer S.L. to trade, on a profit making basis with the domain names" the subject of this proceeding.
The Complainants rely upon a Declaration of Lysha Montiel in support of their Complaint. Her declaration is exhibited to the Complaint. According to her Declaration she was approached by the Complainantsí representative to seek the confidential acquisition from the Respondent of the <allianz-dresdnerbank.com> and <allianz-dresdner.org> domain names. In her declaration she refers to the history of her discussions and communications with the Respondent.
The Respondent asserts that the Panel should not take into account Lysha Montiel's Declaration since it was she "who in bad faith tried to give way to the negotiation of the potential purchase transaction the Complainants denounce".
Having read both parties' cases and Lysha Montiel's Declaration, which it should be noted is a sworn declaration declared "under penalty of perjury under the laws of California", the Panel is prepared to accept the evidence of Lysha Montiel. Quite apart from the fact that her Declaration is a sworn document there is really no first hand evidence from the Respondent to counter her evidence. In addition her Declaration ties in with the documentary evidence exhibited. Accordingly in reaching its decision the Panel is prepared to accept Lysha Montiel's evidence.
5. The Partyís Contentions
In order to succeed in its request for an order to transfer the domain names to the Complainant Allianz AG the Complainant has the burden of proof of showing that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") are present. These are as follows:
(i) The Respondentís domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain names;
(iii) The Respondent's domain names were registered and are being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondentís domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainants asserts that the domain names are identical to the service marks in which the Complainants have rights. The Panel has considered the trade mark rights of both Complainants set out in the Complaint and accepts that the Complainants have rights in the marks "Allianz" and "Dresdner" which are both the essential element of the domain names in dispute. The Complainants have been trading for some considerable time using both marks.
The Respondent appears not to dispute the fact that the marks are identical or confusingly similar to trade marks or service marks in which the Complainants have rights. The Panel finds for the Complainants on this issue.
(ii) The Respondent has no rights or legitimate interests in respect of the domain names
The Complainants assert:
(a) That immediately following upon registration of the domain names <allianz-dresdnerbank.com> and <allianz-dresdner.org> the Respondent posted the pages on a website and asked in Spanish, a translation of which reads:-
"If there is any interest in any of the domains in our warehouse of names please contact us."
A point of contact is given; Mr. Daniel Dias Borrueco. It should be noted that the address, telephone and fax numbers on the web pages exhibited at Annex C are identical to the administrative contact information in each domain registration. The Panel therefore finds that there is a connection between the Respondent and the offer of the domain names.
(b) That the Respondent is not commonly known by the domain names but rather refers to itself as "Comofer S.L." It asserts that the Respondent is not making legitimate, commercial and fair use of the domains.
In response the Respondent indicates that it did not register the domain names to trade with them and make a profit through their sale, assignment or hiring. Indeed the Respondent asserts that it was not true that the names were offered for sale. The Panel has already indicated that it accepts the evidence of Lysha Montiel on this point and rejects the assertion that the domain names were not offered for sale. That they were offered for sale is in the Panel's view apparent from Lysha Montiel's declaration.
The Respondent submits that the "only purpose" of registering the domain names was the creation of a "public forum for discussion (under construction at the moment) through which Internet users could express their criticism or favourable opinions regarding a hypothetical merger between Allianz AG and Dresdner Bank AG".
In particular the Respondent argues that the third domain name <allianz-dresdnerbank.info> was registered as a ".info" top level domain in order to create a "real global forum for the exchange of information".
Further it argues that criticism and commentaries about a potential merger of the two Complainants is part of a right to free speech and that the domain names have been used as part of a "legitimate fair use and free speech rights and interests". The Respondent apparently believes that there is a legitimate purpose in registering domain names and that the reason for doing so is to encourage those users wanting to express an opinion about the intended "merger" between the Complainants to make use of their freedom of speech.
The Panel rejects this argument on the ground that it is not necessary for any of the three domain names in dispute to have been registered for the purposes of creating a public forum for discussion of the merger. Furthermore this legitimate use contended for is contrary to the nature of the negotiations that took place between the Complainants and the Respondent and which are referred to in Lysha Montiel's declaration.
Accordingly the Panel rejects the Respondent's submissions and finds that the Respondent has no rights or legitimate interest in respect of the domain names in issue.
(iii) The Respondents domain names have been registered and are being used in bad faith
The Complainants assert:
(a) The facts conclusively demonstrate that the Respondent registered the domain names for the purpose selling the domain names to the Complainants for an amount far in excess of any conceivable out of pocket costs. They rely upon paragraph 4(b)(i) of the Policy.
(b) The registration of <allianz-dresdnerbank.info> was a retaliatory registration for service of the original Complaint.
(c) The Complainant also asserts that <allianz-dresdnerbank.info> was registered primarily for the purpose of transferring it to the Complainants for valuable consideration far in excess of documented out of pocket costs.
(d) The Respondent registered <allianz-dresdnerbank.info> specifically in order to prevent the Complainants from reflecting their marks in a corresponding ".info" domain name and that the previous registration of <allianz-dresdnerbank.com> and <allianz-dresdner.org> demonstrated a pattern of such conduct falling within paragraph 4(b)(ii) of the Policy.
The Respondent in contrast asserts that the Respondent did not proceed to the registration of the domain names in bad faith or on a profit making basis or for the purposes of catching the attention of the Complainants so as to create confusion between the trade marks "Allianz" or "Dresdner Bank".
Put simply the Respondent submits that since the trade marks combining "allianz-dresdner bank" and "allianz-dresdner" do not exist (sic) no prejudice may have been caused to the rights to the same at any time.
The Panel rejects this argument. It is of course true that at the time of registration of the first two domain names <allianz-dresderbank.com> and <allianz-dresder.org> the merger between the two Complainants had not been completed. Nevertheless, in the Panel's view there can be no doubt that between them the Complainants had strong established rights in "Allianz" and "Dresdner" and also in the combinations of "Allianz" and "Dresdner". The Panel accepts that in the absence of any compelling evidence to the contrary from the Respondent that there was no reason justifying registration of the first two domain names by the Respondent.
The Panel has already indicated that it accepts Lysha Montiel's evidence. It is clear from her evidence that the Respondent was seeking considerably more than out of pocket expenses for the purchase by the Claimants of the domain names <allianz-dresdnerbank.com> and <allianz-dresdner.org>. In itself this is sufficient to justify a finding of bad faith under paragraph 4(b)(i) of the Policy.
As far as the third domain name <allianz-dresdnerbank.info> is concerned the Panel notes that it was registered immediately after the Complaint had been made in respect of the first two domain names. It is of course possible that this was pure coincidence. Nevertheless, given the previous conduct of the Respondent in registering the first two domain names, the Panel is entitled to draw the inference that in the absence of any evidence of good faith in registering <allianz-dresdnerbank.info> the registration was part of a pattern of conduct falling within paragraph 4(b)(ii) of the Policy.
It follows that the Panel finds for the Complainants in respect of this element.
6. Decision and Findings
The Complainants request that the domain names <allianz-dresdnerbank.com>, <allianz-dresdner.org> and <allianz-dresdnerbank.info> be transferred from the Respondent to the Complainant Allianz AG. The Panel finds for the Complainants and orders that the domain names <allianz-dresdnerbank.com>, <allianz-dresdner.org> and <allianz-dresdnerbank.info> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: February 12, 2002