WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Generali Lloyd Versicherung v. Dong Hwan Ahn

Case No. DBIZ2002-00076

 

1. The Parties

The Complainant is Generali Lloyd Versicherung of Sonnenstrasse 31, 80223, Munich, Germany, which is represented in the present proceeding by Steven Schuette of Robert-Schumann-Strasse 51, Abteilung BS 52066, Aachen, Germany.

The Respondent is Dong Hwan Ahn of 90-1 Chongpa-2 90-1, Yongsan-Ku, Seoul, North [sic?] Korea. The reference to North Korea appears wrong, but in the Whois database "http://www.neulevel.biz/whois" the Respondentís country is listed as "AF", which is also clearly wrong.

 

2. The Domain Name and Registrar

The disputed domain name is <generali.biz> and the registrar is DomainPeople Inc, Suite 1440, Harbour Center, 555 West Hastings Street, Vancouver, BC, V6B 4N6, Canada.

 

3. Procedural History

3.1 The Complaint was received by email by the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002, and in hard copy on May 2, 2002.

3.2 On May 8, 2002, the Center requested verification of the registration details of the domain name from the registrar, DomainPeople, and this verification was received by the Center on May 14, 2002.

3.3 On May 22, 2002, the Center completed a check of whether the Complaint complied with the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").

3.4 On May 24, 2002, the Respondent was notified of the STOP Complaint and Commencement of the Administrative Proceedings and was sent a copy of the Complaint and Amendment to the Complaint. This was sent by post/courier and email to the addresses appearing under the Registrant and Administrative Contact for the domain name registration. In accordance with the Rules, the date for the filing of a Response was set at June 13, 2002.

3.5 No Response was received by the Center and on June 17, 2002, the Center sent the Respondent a Notification of Respondent Default by email.

3.6 On June 26, 2002, after receiving the required Statement of Acceptance and Declaration of Impartiality from the proposed panelist, the Center notified the parties of the appointment of Staniforth Ricketson as the single member Administrative Panel in the proceeding. The date for transmission of the Panelís decision to the Center was set at July 10, 2002, in accordance with paragraph 15 of the STOP Rules.

3.7 After perusing all the materials filed in the proceeding, the Panel finds that the relevant requirements of the STOP, the STOP Rules and WIPO Supplemental STOP Rules have been complied with.

3.8 In accordance with paragraph 11 of the STOP Rules, the language of the proceedings is English (this being the language of the registration agreement).

3.9 On July 9, 2002, pursuant to Paragraph 12 of the STOP Rules, the Administrative Panel requested the Complainant to provide evidence of its rights in relation to the Generali service marks (Procedural Order No. 1 in the proceeding), and a reply to this was forwarded to the Center by the Respondentís representative on July 10, 2002. Following this, a further request for information (Procedural Order No. 2) was forwarded to the Complainant on July 16, 2002, and a response to this from the Complainant was received on July 17, 2002.

 

4. Factual Background

4.1 The following matters appear to be uncontested.

4.2 According to the Complaint, the Complainant, Generali-Lloyd, is a wholly-owned subsidiary of the Italian insurance corporation Assicurazioni Generali (the "holding company"), which is one of the largest insurance companies in Europe.

4.3 The holding company is the owner of a number of registered service marks comprising the word "GENERALI". Annex 3 of the Complaint contains representations of registration certificates for the following: US service mark reg. no 1,731,611, registered November 10, 1992, in respect of financial and insurance services (class 36); an Israeli service mark registered August 14, 1991, in respect of the same class; a poor copy of a corresponding Argentinean registration; a corresponding Panamanian registration; a UK registration dated November 15, 1996, in respect of class 36 (insurance services); a corresponding Irish registration; Greek registration certificate; and several others in languages unknown to the Panel.

4.4 In addition, the Complainant itself (as a subsidiary of the holding company) is the registered owner of a German trade mark (reg. no 300040497.2), which has been registered since May 26, 2002, in respect of services in class 36 (including insurance and financial services). This information was originally included in the Complaint (Annex 4), but it was not clearly indicated in the Complaint what the significance of this document was. In addition, the copy itself was not easy to read and was in the German language. Following requests from the Panel (Procedural Orders 1 and 2), a translated version of the registration details was supplied to the Panel, together with an explanation from the Complainantís legal representative as the legal significance of this information.

 

5. Partiesí Contentions

A. Complainant

A successful complaint brought under STOP must establish the elements that are listed in paragraph 4(a). The Complainant in the present proceeding addresses these elements as follows:

- As to the first element (domain name identical to a trade or service mark in which the Complainant has rights), the Complainant refers to the service marks registered in the name of the holding company that are listed above in 4.3. The Complainant submits that these are identical to the disputed domain name and that the first element is therefore satisfied.

- As to the second element (Respondentís lack of rights or legitimate interests in domain name), the Complainant states that the Respondent is unknown and that it was unable to find any information concerning him on the Internet (e.g. via Google) or any information about any enterprise in respect of which the domain name could have been used. Accordingly, the Complainant states that it is unable to say whether the Respondent has any legitimate rights in the domain name, but notes that it seems unlikely that a person from North [sic] Korea would have legitimate rights Ďto a "western-sounding" word/expression like "generali"í.

- As to the third element (bad faith by the Respondent in the registration or use of the domain name), the Complainant again raises the question of why a person from North [sic] Korea should be interested in the name <generali.biz>, and suggests that the "internationally acquainted and reputed corporation Generali is very likely to be known to the respondent". In this regard, it points to the reputation of the corporation, as well as noting that most applicable country-coded TLDs (e.g. <generali.it>, <generali.fr>, <generali.de>, etc.) and generic TLDs (e.g. <generali.com>, <generali.org>) are owned and used by the holding company or its subsidiaries. The Complainant goes on to suggest that a likely reason for the Respondent to have registered <generali.biz> must have been to sell the domain name to the Generali group. It further submits that users searching for the Generali group will be misled if they find <generali.biz> and see that it has nothing to do with insurance, and this will divert traffic from the real Generali homepage and give rise to a bad impression of the Generali group. The Complainant ends with the speculation that it might be the case that the domain name <generali.biz> is used to propagate defamatory material about the corporation. In support of its submissions here, the Complainant refers to the Panel decision in Fiat Auto S.p.A. v Italienska bil, WIPO Case No. DBIZ2001-00030.

B. Respondent

As noted above, the Respondent has filed no Response in the proceeding. Under paragraph 5(e) of the STOP Rules, in such a case the Panel is to decide the dispute based on the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".

 

6. Discussion and Findings

Under paragraph 4(a) of STOP, the Complainant must prove the presence of each of the elements listed in that paragraph.

Domain name identical to trade or service mark in which the Complainant has rights (sub-paragraph 4(a)(i))

The Complainant has provided evidence of the registration of a number of service marks comprising the word "GENERALI". (Complaint, Annex 3). There is a further German service mark comprising the word "GENERALI" and registered in class 36 (Annex 4). Accordingly, the requirement of identity between the domain name (disregarding the suffix .biz) and a trade or service mark is established.

However, on the face of the material originally filed, it was less certain that the requirement that the Complainant has "rights" in one or more of these service marks had been shown. With the exception of the German trademark, the documentation showed that there were a number of marks registered in different countries in the name of the Complainantís holding company, Assicurazioni Generali, and there was no mention in these registrations of the Complainant. The only information given in the Complaint as to the Complainantís status was that it is a wholly-owned subsidiary of the holding company. But even if the Complainant is a wholly-owned subsidiary of the holding company, it is nonetheless a distinct legal entity, and it was therefore necessary for the Complainant to describe the nature of the "rights" that it may have in such service marks. Nothing was said about this on any of the service mark registrations, e.g. that the Complainant might have "rights" as a licensed or authorized user of the marks in question. The exception to this was the German trademark, but it was only after two requests to the Complainant that a translated version of this document, and an explanation of its significance, was supplied to the Panel. This makes it clear that the Complainant is the registered owner of the German service mark "GENERALI" in respect of services in class 36. Accordingly the Complainant has now established that it, too, has "rights" in a trade or service mark for the purposes of the purposes of this element of paragraph 4(a). The Panelís concerns over this question may appear to be unnecessary, in view of the fact that the Complainant is the wholly-owned subsidiary of a world-wide group, and doubtless all Generali marks, business and domain names are dealt with by members of the group as though they are the common property of the group. Nonetheless, the requirements of paragraph 4(a)(i) are precise, namely that the Complainant must show that it has "rights", and it is therefore necessary for the latter to indicate clearly what these rights are and how they arise. The furnishing of the German service mark registration satisfies this requirement; in another case, it might be sufficient to show evidence of licensing arrangements between members of the group to use the marks in question. But while it may be possible to satisfy the requirements of sub-paragraph 4(a)(i) in a number of ways, it is still necessary for a Complainant to show that it has "rights", rather than to rely upon rights that reside in another entity, such as a parent or holding company.

In the present proceeding, however, the Complainant has now satisfied paragraph 4(a)(i) by providing evidence and explanation of its German service mark registration.

Lack of rights or legitimate interest of Respondent in domain name (sub-paragraph 4(a)(ii))

Paragraph 4(c) refers to various matters that can be shown by a Respondent that will be evidence of rights or legitimate interest in a domain name by a Respondent, including ownership of an identical trade mark, the use of the domain name or a corresponding name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by that name. As noted above, the Respondent has not filed any response in the proceeding, and the Complainant has found no evidence of any use of the domain name by the Respondent to sell any goods or services or any use in relation to a business operated by the Respondent. Furthermore, it is clear that neither the Complainant nor the holding company has consented or authorized the Respondent to use the domain name or to apply for its registration. In the absence of any evidence filed by the Respondent, the Panel is entitled to draw the inference that it has no rights or legitimate interest in the domain name.

Accordingly, the second element of paragraph 4(a) is established.

Bad faith in registration or use of the domain name (sub-paragraph 4(a)(i))

Unlike the Uniform Domain Name Dispute Resolution Policy, there is no requirement to show bad faith at both the stages of registration and use of a disputed domain name: the presence of bad faith at either stage will suffice. In determining this, it is relevant to consider whether any of the circumstances listed in paragraph 4(b) of the Policy are present.

In the present proceeding, there is no evidence from the Respondent concerning his registration of the domain name and in such a case the Panel is entitled to draw such inferences from this default as it thinks appropriate. Several matters appear relevant here. The first is the holding company of the Complainant is the center of a worldwide insurance group with subsidiaries in many countries, including Asia. It is assumed that, like the Complainant, these subsidiaries use the name "Generali" somewhere in their title; in addition, it appears that there are many country-coded TLDs and generic TLDs owned by the Generali group that contain the word "generali". Accordingly, it is likely that the Respondent would be aware of the existence of the Generali group. Furthermore, the independent choice of "Generali", a European name, seems an unusual one from a Korean applicant. Accordingly, the Panel concludes that there is sufficient here to find that the registration of the domain name was effected in bad faith.

In addition, even if the registration was not made in bad faith, it is difficult to "conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate" (Fiat Auto S.p.A. v Italienska bil, WIPO Case No. DBIZ2001-00030). Any use of the domain name must inevitably divert Internet users who want to locate the Generali group and would mislead them into thinking that they had reached a webpage operated by the latter (with obvious disappointment, when they find they have not done so). It is noteworthy that under STOP it is not open to a Respondent to rely upon an intention of fair non-commercial use as a means of showing a legitimate interest in the domain name and thereby as a counter to an allegation of bad faith registration and use.

Accordingly, the Panel finds that the third element of paragraph 4(a) is established.

 

7. Decision

The Panel concludes that the Complainant has satisfied each of the elements of paragraph 4(a) that need to be shown by a successful Complainant under the STOP.

It therefore directs that the domain name <generali.biz> should be transferred to the Complainant.

 


 

Staniforth Ricketson
Sole Panelist

Dated: July 18, 2002