The Complainant is Assicurazioni Generali S.p.a of Trieste, Italy, represented by Marcuria, France.
The Respondent is Redonna Noriega of Alta Loma, California, United States of America.
The disputed domain name <igenerali.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 9, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 10, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2010. The Respondent did not submit any formal Response. Accordingly, the Center notified the Respondent's default on July 8, 2010.
On July 12, 2010 the Respondent provided a non-standard submission to the Center, to which further reference is made below.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 16, 2010. 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.
The Domain Name was registered by the Respondent on April 6, 2008.
The Complainant submits that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is a corporation registered in Italy operating in the financial services and insurance sectors. It states that it is a worldwide leader in the field, having been established in 1831 and now employing over 8.500 individuals in over 65 countries. It has registered capital of over EURO 1.5 billion. In 2008, it was the third largest global insurer with a turnover of EURO 64.4 billion.
The Complainant is the proprietor of trade marks registrations for the mark GENERALI in numerous territories throughout the world. These registrations include United States registered trade mark number 1731611 for GENERALI registered on November 10, 1992 in Class 36 for insurance and credit services, and International Trade Mark number 572505 for GENERALI registered on July 4, 1991 in Class 36 for insurance and credit services for a variety of territories under the Madrid Agreement and Madrid Protocol. The Complainant is also the proprietor of numerous Community Trade Mark registrations in Class 36 comprising the mark GENERALI in conjunction with various devices.
The Complainant submits that Domain Name reproduces the Complainant's mark save for the letter “i” at he beginning of the Domain Name and the formal gTLD “.com”. So far as the “i” is concerned the Complainant submits that this is of minor significance as this prefix is generally understood to refer to Internet services and is also commonly used in connection with Apple applications such as iPhone.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant states that there is no economic or legal link between the Complainant and the Respondent and that the Complainant has not authorised to Respondent to register the Domain Name.
The Complainant submits that the Domain Name was registered and is being used in bad faith.
The Complainant states that it is inconceivable that the Respondent was unaware of the Complainant's name and mark at the time the Domain Name was registered. Furthermore, the Respondent is using the Domain Name for a website at “www.igenerali.com”, which is a domain parking website dedicated to insurance and financial services, including links to competitors of the Complainant. The links and adverts on the page in question refer directly to the Complainant's competitors including “fortuneo.fr”, “cabinetgregory.com” and “swisscare-intl.com”. There are additional hypertext links to other of the Complainant's competitors. By offering these links, the Respondent is capitalising on the Complainant's rights.
Furthermore the Respondent is a evidently a professional domainer who is responsible for at least 9,325 other names. Previous UDRP panels have held that a professional domainer cannot be wilfully blind as to whether a specific domain name may infringe trade mark rights (e.g., Champagne Lanson v. Development Services/Mailplanet.com, Inc. WIPO Case No. D2006-0006. The Respondent also owns other domain names similar to famous trade marks such as <macintash.com>.
The Complainant has attempted to resolve the matter with the Respondent. However, the Respondent has replied stating that the site is used to advertise general contractors in the construction industry, whereas in fact it is dedicated to insurance and financial services.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions within the period specified in the Rules. However, subsequent to being formally notified of her default, the Respondent submitted an email to the Center commenting upon the case.
Under paragraph 5(e) of the Rules:
“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The Respondent's email made no contentions that were exceptional circumstances in this case such that the Respondent's non-standard submission should be admitted and the Panel finds that there are no such exceptional circumstances in this case. The Panel therefore disregards the contents of that submission.
The Complainant has established that is has registered trade mark rights in numerous territories throughout the world for the mark GENERALI for insurance and financial services. It has also established that it has an established business reputation under that mark in connection with insurance and financial services sufficient to give rise to unregistered trade mark rights. The Domain Name incorporates the Complainant's mark with the addition only of the letter “i” at the beginning and the gTLD “.com” at the end. In these circumstances the Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel accepts the evidence of the Complainant that there is no economic or legal link between the Complainant and the Respondent and that the Complainant has not authorised to Respondent to register the Domain Name. Accordingly the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent has made no admissible Response in answer to the Complainant's prima facie case.
The Panel has considered nevertheless whether the arguably generic nature of the term “generali” is sufficient automatically to give the Respondent a right or legitimate interest in it. (In this regard the Panel considers the addition of the letter “i” to be irrelevant, as that prefix serves neither to indicate nor to distinguish the Complainant.)
The Panel's conclusion on this point, having regard also to prior WIPO UDRP decisions, is that the Respondent may have had a right or legitimate interest in the Domain Name, based on the arguably generic term “generali”, had she registered the Domain Name to benefit from the generic nature of the term without taking unfair advantage of the Complainant's rights. However, for the reasons set out in section C below, the Panel does not find those circumstances to be present in this case.
The Panel accepts the evidence of the Complainant that the Respondent has been using the Domain Name for a domain parking website dedicated to insurance and financial services products. In the absence of any rebuttal by the Respondent, the Panel concludes on the balance of probabilities that the Complainant's use of the Domain Name for these purposes is not merely coincidental. The Panel infers that the Respondent registered and is using the Domain Name in the knowledge of the Complainant's mark and or the purpose of taking unfair advantage of the Complainant's goodwill. In particular, the Respondent is seeking to take advantage of Internet users who are liable to access the Respondent's website in the expectation of finding that of the Complainant. Such users are then presented with links to services similar to those offered by the Complainant, but by parties other than the Complainant including the Complainant's competitors.
Accordingly, the Panel concludes that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of her web site or location or of a product or service on her web site or location. This constitutes registration and use in bad faith for the purposes of paragraph 4(b)(iv) of the Policy.
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 <igenerali.com> be transferred to the Complainant.
Steven A. Maier
Dated: July 22, 2010