WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zurich Insurance Company v. None

Case No. D2003-0027

 

1. The Parties

Complainant is Zurich Insurance Company, Zurich, Switzerland.

Respondent is None, York, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The domain name at issue is <zurichaccounts.com> (hereinafter "Domain Name").

The Domain Name is registered with Tucows, Inc.

 

3. Procedural History

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 13, 2003, and subsequently in hard copy on January 15, 2003.

The Center transmitted the acknowledgement of Receipt of Complaint to Complainant on January 15, 2003.

On January 15, 2003, a request for Registrar Verification in connection with the pending case was sent to the Registrar. On the same day, the Registrar confirmed that: (i) a copy of the Complaint had been received by the same; (ii) the Domain Name is registered with Tucows, Inc.; (iii) Respondent is the current registrant of the Domain Name; (iv) the Policy does apply as per section 7 of the Registration Agreement; (v) the Domain Name will remain locked during the administrative proceeding at issue; and (vi) the language of the Registration Agreement for the Domain Name is English.

On January 16, 2003, the Center completed the Formal Requirements Compliance Checklist.

On January 17, 2003, the Center transmitted to Respondent a Notification of Complaint and Commencement of Administrative Proceedings ("Commencement Notification") by the required means, setting a deadline at February 6, 2003, by which Respondent could file a Response to the Complaint.

Considering that no Response was filed within the deadline above, the Center sent Respondent a Notification of Respondent Default on February 7, 2003.

On February 19, 2003, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding and informed that the date scheduled for the issuance of the Panelistís decision is March 5, 2003, in the absence of any exceptional circumstances.

The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

Complainant is a member of the Zurich Financial Services Group. It operates in the insurance-based financial services field, providing around thirty-five million people with financial protection and wealth accumulation solutions.

Complainant was founded at the end of the nineteenth (XIX) century in Zurich and presently operates in more than sixty (60) countries including France, USA, UK and Canada.

Complainant is owner of several trade marks incorporating the word "zurich" and covering, among others, financial services and investments. Complainant has provided supporting evidence of the registration of the Swiss and Community trade marks for the word "zurich" (see Annex 4 to the Complaint) in connection with the following classes: Swiss trademark, classes: n. 36 (Insurance and Finance); Community Trademark, classes: EN 16 (paper and goods of paper; pamphlets, newspapers and periodicals; books; instructional and teaching materials Ė except apparatus), EN 35 (advertising and business affairs) and EN 36 (insurance, financial affairs, monetary affairs, investment, real estate affairs).

Complainant also alleges that it is the owner of the domain name <zurich.com> corresponding to Complainantís primary web site, in addition to other two hundred domain names.

Complainantís business volume was of USD fifty-six billions as at December 21, 2001, (as per the Annual Report 2001 available at "www.zurich.com").

Complainant further alleges that as at September 2000, it was sponsoring the English Rugby Union Clubsí Premiership and Championship.

The Domain Name was registered by Respondent on May 20, 2002. At that time, Complainant already owned trademark rights for the word "zurich".

The web site addressed at "www.zurichaccounts.com" grants the consumerís advice in connection with tax, insurance, finance, investment and banking services (Annex 6 to the Complaint).

Finally Complainant alleges that its several attempts to contact Respondent at the contact details listed in the Whois database (respectively, by phone at the registrantís contact details and by either registered post and e-mail to administrative contact details Ė see Annex 9) proved to be unsuccessful because Respondentís contact details turned out to be incorrect and/or incomplete.

 

5. Partiesí Contentions

A. Complainantís Summarized Contentions:

Complainant contends that:

- the Domain Name is identical or confusingly similar to Complainantís registered "zurich" trademark;

- Complainant has achieved considerable reputation worldwide in connection with insurance, finance, investment and banking services in the "zurich" name;

- Respondent has no rights or legitimate interests in the Domain Name;

- Respondent neither is a licensee of Complainant nor has been authorized by Complainant to use the "zurich" trademark;

- Respondent is not making a legitimate non-commercial or fair use of the Domain Name or without intent for commercial gain;

- Respondentís use of the Domain Name is likely to divert consumers or to tarnish or otherwise to dilute Complainantís registered trade marks, considering that Respondent is using the Domain Name to grant consumers advises in connection with matters in which Complainant is directly involved, such as insurance, finance, investment and banking services;

- given that Complainantís mark "zurich" is well known worldwide and Respondent is operating in the same field as Complainant, it is arguable that the Domain Name was registered by Respondent in bad faith to take unfair advantage of the Complainantís reputation;

- Respondent has taken active steps to conceal its identity and location and this is further evidence of bad faith.

In light of the above, Complainant requests the transfer of the Domain Name.

B. Respondent

Respondent failed to provide a response to the Complainantís allegations.

 

6. Discussion and findings

In the absence of a Response to Complainantís claim by Respondent, the Panelist, pursuant to Paragraph 15(a) of the Rules, must consider this claim in light of the evidence submitted by Complainant only. Respondentís default does not automatically result in a decision in favor of Complainant, who has to prove each of the three elements required by Policy under paragraph 4(a); however the Panelist is entitled to draw, as she does, such inferences as she deems appropriate just from the circumstance of Respondentís failure to reply (see among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 (October 16, 2002); Bodegas Vega Sicilia, S.A. v. Serafín Rodríguez Rodríguez, WIPO Case No. D2001-1183 (December 10, 2001; Deutsch Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277 (May 30, 2000)).

Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to complainantís trademark or service mark;

(ii) respondent has no rights or legitimate interests in respect of the domain name; and,

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name is <zurichaccounts.com>. Complainant owns Swiss and Community trademark rights for the word "zurich".

It has been well established in several previous WIPO decisions that the addition of a gTLD to a trademark is of no consequence in determining identity or similarity. As regards the word "accounts", it is often used to indicate a specific activity carried out in the banking and insurance fields, which correspond to the same fields in which Complainant operates.

Taking into account the above, there have been many WIPO cases in which panels have considered whether domain names that include a word after an established trademark are confusingly similar to that mark. Reasoning that "confusingly similar" under the Policy refers to the confusion that might arise among consumers as to the owner of the Domain Name, in those cases the common conclusion was that domain names made up with a mark plus a word directly connected to the complainantís primary business are confusingly similar to that mark (see Siebel Systems, Inc. v. Implementation Services Group, Inc., WIPO Case No. D2002-1070 (February 3, 2003); Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 (August 9, 2000)).

In light of the above, the Panelist finds that the Domain Name is confusingly similar to Complainantís "zurich" trademarks. In particular, <zurichaccounts.com> creates an overall impression of a web site sponsored and/or operated by the owner of the "zurich" trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Complainant has provided evidence: (i) of its rights in the trademark for the word "zurich" (see Annex 4); (ii) that the domain name was registered by the Respondent on May 20, 2002. According to the Complaint, at that time Complainant had a considerable reputation in the "zurich" name in connection with insurance and financial services throughout the world. Complainant has also asserted that "Respondent does not have any relationship with or permission from the Complainant for the use of the mark "zurich" nor has the Complainant consented to the Respondentís application for registration of, or use of, any domain name incorporating that mark".

In light of the above, Complainant has established a prima facie evidence demonstrating that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO decisions, in such a case the burden of proof shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 (October 16, 2002); International Hospitality Management Ė IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683 (September 16, 2002)).

Because Respondent has failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubt, the Panelist accepts as true all allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The fact that Respondent has chosen not to submit a Response is relevant to the issue of whether Respondent registered and is using the Domain Name in bad faith.

The Panelist draws from this default the following two inferences: (i) Respondent does not deny the facts asserted by Complainant, and (ii) Respondent does not deny the conclusions which Complainant asserts can be drawn from these facts (see Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 30, 2000)).

However, the Panelist still bears the responsibility of ascertaining which of Complainantís assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts.

Complainant made many assertions in connection with Respondentís activities, which he claimed were relevant to the issue of whether the Respondent registered and is using the Domain Name in bad faith. Some of these statements are as follows: (i) at the time the Domain Name was registered by Respondent, "the mark "zurich" was well known in the UK and throughout the world"; (ii) "it is beyond reasonable belief that the Respondent registered the domain name without the Complainant or the Zurich Goup in mind, in particular, due to the fact that the Respondent is operating in the same field of activity as the Complainant"; (iii) "the Complainant has reason to believe that the domain name was registered in order to take unfair advantage of the Complainantís registered and unregistered/common law trade mark rights and the goodwill which it has developing in the "zurich" name over many years".

The Panelist considers that the circumstances alleged by Complainant do establish that the Domain Name was registered and is being used by Respondent in bad faith.

In fact, Complainantís registered trademark is long established and widely known, therefore, in the absence of evidence or even an assertion by Respondent to the contrary, knowledge of Complainantís rights in the trademark can be imputed to Respondent at the time of its registration of the Domain Name. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the Domain Name and the fact that Respondent provided no evidence of, nor asserted, any good faith use of the Domain Name, there are sufficient grounds to persuade the Panelist that the Domain Name was registered and is being used by Respondent in bad faith.

Additionally, as consistently established by WIPO previous decisions, Respondentís bad faith can be argued also by the circumstance that its contact details turned out to be incorrect and/or incomplete (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (October 2, 2002); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000); see also Southern California Edison Company v. John Simms, WIPO Case No. D2002-0369 (June 11, 2002), successfully quoted by Complainant Ė see Annex 14).

Therefore Complainant succeeded in proving the element under Paragraph. 4(c) of the Policy.

 

7. Decision

For the above listed reasons, the Panelist requires that the Domain Name <zurichaccounts.com> be transferred to Complainant.

 


 

Anna Carabelli
Sole Panelist

Dated: March 4, 2003