WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allianz SE v. Acorn Consulting
Case No. D2011-0171
1. The Parties
The Complainant is Allianz SE of Munich, Germany, represented by an internal representative.
The Respondent is Acorn Consulting of Lahore, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <allianzinternational.com> (“Disputed Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On February 1, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On February 2, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 February 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 8, 2011. 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
Complainant in these proceedings is Allianz SE (formerly known as Allianz AG), a company organized under the laws of Germany (“Allianz”). Allianz is of one of the oldest and largest international insurance and financial services groups in the world. Allianz’s first company, Allianz Versicherungs-AG, was founded in 1890 in Berlin, Germany. In 1893, Allianz opened its first international branch in London.
According to the non-contested allegations provided by Complainant, Complainant is the owner of the trademark ALLIANZ and all other trademarks in the ALLIANZ family of marks in a number of jurisdictions around the world (collectively, the “ALLIANZ Marks”). The ALLIANZ trademark was registered in Germany on July 11, 1979 and then followed International Registrations and EU Community Trademarks. Over the years, Allianz has devoted substantial resources and efforts to building goodwill in the ALLIANZ family of marks, which is used to distinguish Allianz’s products from all other products in the same class. Complainant offers a wide range of insurance, underwriting, reinsurance and financial services under its ALLIANZ Marks. The ALLIANZ brand is distinctive and well-known mark and has been used by Allianz in connection with its several businesses for well over 100 years.
Further, according to the Complainant, the domain names <allianz.de>, <allianz.com>, and <allianzgroup.com> are registered in the name of Allianz Shared Infrastructure Services GmbH, the German IT - affiliate company of Allianz.
The Panel is unaware of any further information relative to this case with regard to the Respondent, except that the Respondent appears to be an individual with an address in Pakistan.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant is the owner of a number of ALLIANZ trademarks and common law rights associated therewith throughout the world. Complainant’s ALLIANZ Marks are in use by the Complainant for insurance and financial products and services. Further, Complainant contends that its ALLIANZ Marks are famous.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s ALLIANZ Marks. Further, Complainant contends that the Disputed Domain Name creates confusion by combining “Allianz,” Complainant’s famous mark and its corporate name, with a descriptive word, “international.”
Complainant contends that Respondent is neither using nor preparing to use the Disputed Domain Name in connection with a bona fide offering of goods and services. Further, Complainant says that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine ALLIANZ services, and then offering “shady investments.” Complainant contends that this use is neither a legitimate noncommercial use nor a fair use of the Disputed Domain Name.
Further, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant suggests, as evidence of Respondent’s bad faith, that it is inconceivable that Respondent did not know of Complainant or the ALLIANZ Marks when registering the Disputed Domain Name. Complainant contends that the fact that Respondent’s website is almost identical to Complainant’s website is further evidence of bad faith.
Additionally, Complainant contends that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant’s business and that Respondent is using the Disputed Domain Name for commercial gain. In support thereof, Complainant states that Respondent’s bad faith is demonstrated by the fact that several individuals have received cold calls by a company called “Allianz International” offering “shady investments.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
Here, Respondent provided no response, and the deadline for so doing expired on February 23, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a).
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of valid and subsisting international registrations and rights at common law for the ALLIANZ Marks. Complainant’s registrations for the mark in jurisdictions all over the world including the International registrations and the Office for Harmonization in the Internal Market (OHIM) registrations have proven this. The worldwide use of the mark reinforces this ownership.
The Disputed Domain Name, however, is not identical to any of the ALLIANZ Marks. Therefore, the first issue is whether the Disputed Domain Name and the ALLIANZ Marks are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant’s ALLIANZ mark; (2) the term “international”, and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “allianzinternational”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior WIPO panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the term “international” as a suffix to the ALLIANZ mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the ALLIANZ Marks because the term “international” is descriptive. The addition of a descriptive term does not negate the confusing similarity between the ALLIANZ Marks and the Disputed Domain Name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <dellaustralia.com> confusingly similar to DELL); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding <telstraaustralia.net> confusingly similar to TELSTRA).
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying the test described in described in Yell, the overall impression of the trademark in the present case is that it is a reference to Complainant or to Complainant’s ALLIANZ Marks. As the Disputed Domain Name uses the mark ALLIANZ, it is confusingly similar to Complainant’s ALLIANZ Marks.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, <allianzinternational.com>, is confusingly similar to the Complainant’s ALLIANZ Marks in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the ALLIANZ name or any of Complainant’s ALLIANZ Marks, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
Complainant has provided uncontroverted evidence that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine “Allianz” services and products. Prior panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (finding no bona fide use where <pfizerforwomen.com> redirected to online pharmacy); see also Clad Holdings Corp. v. Kentech, Inc., WIPO Case No. D2006-0837 (“[n]or does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services… The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service offered on the Respondent’s website.
It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See, Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433. Here, by offering financial services (whether “dubious” in nature, as Complainant suggests, or not – an issue this Panel need not address) under the headline “Private Wealth Management” on Respondent’s website, Respondent is using the Disputed Domain Name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s ALLIANZ Marks. The Panel finds that this use is in bad faith.
Further, the Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant and Complainant’s ALLIANZ Marks when it registered the Disputed Domain Name. Complainant has been using its ALLIANZ Marks for over 100 years and has trademark registrations throughout the world for its ALLIANZ mark. Many of Complainant’s registrations have been in full force and effect for over fifty years. Further, Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the ALLIANZ Marks and that these marks are famous. Taken together, these facts make it likely that Respondent knew of Complainant’s marks and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge.
Respondent’s knowledge of Complainant and Complainant’s ALLIANZ Marks is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks”); Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that the Complainant has proven the third and final element 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 <allianzinternational.com> be transferred to the Complainant.
Michael A. Albert
Dated: March 22, 2011