WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zurich American Insurance Company v. Adminstrator, Domain
Case No. D2007-0481
1. The Parties
The Complainant is Zurich American Insurance Company of Schaumburg, Illinois, United States of America.
The Respondent is Adminstrator, Domain of West Bay, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <zurichinternational.com> is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On March 30, 2007, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On April 2, 2007, Rebel.com Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2007.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 4, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Complainant is a member of the Zurich Financial Services Group (“Zurich”) which is one of the world’s leading financial services organizations 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, Switzerland.
4.2 Today, Zurich carries out financial activities in more than 60 countries and has in the region of 70,000 employees worldwide. Zurich has a total business volume of USD 2 billion and over USD 440 billion of assets under management. Zurich’s five business segments are non-life insurance (including property, accident, car and liability insurance), life insurance, reinsurance, farmers’ management services and asset management.
4.3 The Complainant is the owner of all worldwide trademark applications and registrations which include the word “Zurich”, attributable to the Zurich Financial Services Group of Companies.
4.4 These marks include the following:
ZURICH: US trademark Registration No. 1,213,689
Description of Services: Underwriting of Accident and Health Insurance.
ZURICH-AMERICAN: US Trademark Registration No. 1,372,968
Description of the services: Underwriting of Property and Casualty Insurance.
ZURICH: US Trademark Registration No. 1,941,954
Description of Services: Insurance Underwriting in the Fields of Liability, damage, Annuity and Reinsurance; [Financial Guarantee And] Surety Services; and Risk Management.
4.5 In addition to <zurich.com>, the Complainant is also registrant of nearly 200 domain names which incorporate the ZURICH mark. Among others, the Complainant and its related companies are also the registrants of the following domain names:
<zfsgroup.com>; <zurichgroup.com>; <zurichdirect.com>; <zurichcapital.com>; and <zurichinsurance.com>.
5. Parties’ Contentions
The Complainant contends as follows:
5.1.1 The Respondent’s <zurichinternational.com> domain name is confusingly similar to the trademarks, identified above, because the Respondent’s domain name merely combines the trademark ZURICH, and a geographical identifier, namely “international”.
5.1.2 The Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, the Complainant relies on the following factors:
(a) The Complainant has not licensed or otherwise permitted the Respondent to use any of its marks or apply for or use any domain name incorporating its mark.
(b) The Complainant could not find any trademarks registered to or applied for by the Respondent with the United States Patent and Trademark Office.
(c) The Respondent is not commonly known by the domain name nor does the Respondent appear to have plans to use the name is association with a bona fide offering of goods and services.
5.1.3 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:
(a) The Respondent commercially benefits from the misleading domain name by redirecting unsuspecting Internet users to various third party commercial websites, including a number of websites for insurance carriers which are not related to the Complainant.
(b) The web page includes a series of links to insurance companies which are not related to the Complainant. These links include a link that reads, “Zurich Insurance Co”.
(c) This link redirects to another site which is not controlled or affiliated with the Complainant and includes further links to insurance providers that are not related to the Complainant.
5.1.4 Based on the foregoing circumstances, the Complainant contends that the Respondent, by using the domain name <zurichinternational.com>, has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the trademark ZURICH. Not only has the Complainant secured various trademark registrations of the mark ZURICH, but it also uses the trademark extensively on a worldwide basis including the use of the domain name <zurich.com>.
A visual and aural comparison between the Complainant’s ZURICH trademark and the <zurichinternational.com> domain name indicates that the domain name reproduces the Complainant’s ZURICH trademark in its entirety together with the geographical identifier “international”.
In Koninklijke Philips Electronics NV v Gopan PK, WIPO Case No. D2001-0171, it was expressed that a geographical identifier “adds nothing than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of the [the complainant] as utilized in [that area]”.
The addition of the geographical identifier to create the domain name at issue does not sufficiently distinguish the domain name from the trademark. As such, the Panel is satisfied that the domain name is confusingly similar to the Complainant’s trademark.
Based on the fact that the Respondent’s domain name is confusingly similar to the Complainant’s trademark, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain name.
There is also nothing in the WHOIS information indicating that the Respondent is commonly known by the disputed domain name nor is there any evidence to indicate that the Respondent has been using the <zurichinternational.com> domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services.
On the contrary, the evidence led by the Complainant suggests that the domain name is being used by the Respondent to redirect Internet users to various third party commercial websites for insurance carriers which are not related to the Complainant. Generally, the Panel finds that the use of a confusingly similar or identical domain name to divert Internet users to competitor’s websites per se is not a use in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The inference which the Panel can reasonably draw from the circumstances surrounding the registration and use of the disputed domain name is that the Respondent deliberately created the domain name with the intention of diverting Internet users to its website by creating a likelihood of initial confusion with the Complainant’s mark. This practice is commonly referred to as creating initial Internet confusion.
Past panel decisions on this subject, including Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128, found that the deliberate creation of initial Internet confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the respondent’s part notwithstanding that the Internet users who have visited the respondent’s site would not be confused into believing that it was the complainant’s site. This Panel agrees with the view that initial interest confusion, when coupled with sufficient evidence of intention or deliberate creation, can give rise to bad faith.
Other panel decisions such as NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 and Mr. Domino.com and Alejandro San Jorge, WIPO Case No. D2001-0295, also support the finding of bad faith in circumstances where Internet users searching for a particular mark are subsequently redirected to competing websites.
Moreover, given the factual circumstances discussed above and due to the fact that the Respondent’s domain name fully incorporates the Complainant’s ZURICH trademark, it can also be reasonably inferred that the Respondent had actual knowledge of the Complainant’s rights to the ZURICH mark when it first registered the <zurichinternational.com> domain name. Such actual knowledge can, in the circumstances of this case, be construed as bad faith registration and use.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <zurichinternational.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: May 18, 2007