WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allianz SE v. Woong Kang
Case No. D2013-1343
1. The Parties
The Complainant is Allianz SE of Munich, Germany, internally represented.
The Respondent is Woong Kang of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <allianzbanque.com> is registered with Inames Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2013. On July 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
On August 1, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On August 2, 2013, the Complainant filed its request for English to be the language of the proceeding. The Respondent failed to respond.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 1, 2013. On August 28, 2013, the Respondent confirmed receipt of the Center’s notification of Complaint and sought guidance on the procedure by email. On August 28, 2013, the Center informed the Respondent by email response filing guidelines available on the Center’s website. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2013.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 10, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a German company, which is the ultimate parent company of one of the oldest and largest international insurance and financial service groups in the world. Today, the Complainant serves approximately 78 million customers in more than 70 countries with approximately 142,000 employees worldwide.
Since its inception, the Complainant has continuously operated under the ALLIANZ name and has used the ALLIANZ mark in connection with its insurance, healthcare and financial services products.
Moreover, over the years, Allianz has devoted substantial resources and efforts building goodwill in the ALLIANZ family of marks, which is used to distinguish Allianz’s products from all other products in the same class. The Complainant directly owns exclusive rights in the ALLIANZ mark and derivatives thereof in numerous jurisdictions around the world.
In October 2000, Allianz Banque was established to expand into the sector of financial services in France. Today, Allianz Banque offers banking and other financial services in addition to broad portfolio of insurance services and products of the Allianz Group in France.
The Complainant has several registered trademarks that include the ALLIANZ mark: 1) the International trademark ALLIANZ (No. 447004) registered on September 12, 1979; 2) the International trademark ALLIANZ (No. 714618) registered on May 4, 1999; 3) the International trademark ALLIANZ AND DESIGN (No. 713841) registered on May 3, 1999; 4) the German trademark ALLIANZ (No. 987481) registered on July 11, 1979; 5) the German trademark ALLIANZ (No. 39927827) registered on July 16, 1999; 6) the Community trademark ALLIANZ (No. 000013656) registered on July 22, 2002; and 7) the Community trademark ALLIANZ AND DESIGN (No. 002981298) registered on April 5, 2004.
The Complainant also owns other domain names that incorporate the ALLIANZ trademark including <allianz.de>, <allianz.com>, <allianz.us>, <allianz.fr>, and <allianzbanque.fr>.
The disputed domain name <allianzbanque.com> was registered on May 29, 2013 and is scheduled to expire on May 29, 2014.
The language of the registration agreement is Korean.
5. Parties’ Contentions
The Complainant, inter alia, asserts as follows:
(i) the disputed domain name <allianzbanque.com> is confusingly similar to the trademarks in which the Complainant has rights, for the domain name and the ALLIANZ trademark are identical. Therefore, the Internet users in France will confuse the disputed domain name <allianzbanque.com> with the Complainant’s trademark and domain name <allianzbanque.fr>;
(ii) the Respondent is using the well-known trademark ALLIANZ to attract Internet users to click on the provided links on the website. From the day the disputed domain name was registered, the Respondent has used the disputed domain as a portal for a variety of services including insurance, banking and financial services, which are in the Complainant’s line of business.
(iii) the Respondent has no rights or legitimate interests in the ALLIANZ trademark or the goodwill the Complainant has developed in its trademark. To the contrary, the Respondent holds no trademark registration for any ALLIANZ trademark and has never received a license or any other authorization of consent from the Complainant to make use of the ALLIANZ mark;
(iv) by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, the Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain; and
(v) for the Allianz trademark is very well known in many countries all over the world, including France and other French speaking countries, it cannot be reasonably argued that the Respondent could have been unaware of the trademark when registering the disputed domain name.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was originally filed in English. The Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. The Panel notes that the Complainant filed a request for English to be the language of the proceeding. The Respondent failed to respond in any language.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent has not objected to English as the language of the proceeding. Moreover, in a previous UDRP case, Huppe GmbH & Co. KG v. Woong Kang, WIPO Case No. D2007-1166, the Respondent waived any objection to proceeding in English by failing to respond to the Center’s notice sent in both English and Korean.
On the other hand, the Complainant is unable to communicate efficiently in Korean, and therefore, the administrative proceeding would be unduly delayed should the Complainant be required to submit all documents translated into Korean.
In the interest of efficiency, the Panel hereby decides, under paragraph 11 of the Rules, English shall be the language of the administrative proceeding.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
It is undisputed that the Complainant owns trademarks that either consist of or include ALLIANZ in several countries, and that Allianz Banque is a subsidiary of the Complainant.
The Panel holds that the disputed domain name is identical or confusingly similar to the ALLIANZ trademark owned by the Complainant, given that the first part of the disputed domain name, “allianz," is identical to the Complainant’s distinctive trademark ALLIANZ, and the remaining part, “banque,” is merely a generic term meaning “bank” in French, which is not a distinctive feature of the disputed domain name. Therefore, the Panel finds the disputed domain name is likely to confuse the Internet users, especially the Internet users in France.
The addition of a generic top-level domain (gTLD) name such as “.com” is irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark (see Universal Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is well established that “once a Complainant establishes prima facie showing that none of the three circumstances in paragraph 4(c) of the Policy establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant asserts that the Respondent had no intention to use the disputed domain name in connection with a bona fide offering of goods and services. The Panel notes the Respondent used the disputed domain name to attract Internet users who are hoping to access the website of the Complainant’s subsidiary <allianzbanque.fr> to a parking page with hyperlinks under the topics of, inter alia, insurance, banking and financial services, all of which are in the Complainant’s line of business.
Further, the Respondent has no relationship with the Complainant. Not only does the Respondent hold no trademark registrations for ALLIANZ mark, it also has never received a license, authorization or consent from the Complainant to use the trademark.
The Respondent has not submitted any response. Therefore, the Respondent has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel upholds the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
E. Registered and Used in Bad Faith
In the past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), it is well-established that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In this case, the Panel finds that since the reputation and trademark of the Complainant are worldwide, it is highly unlikely that the Respondent failed to notice the presence of the trademark ALLIANZ in the disputed domain name at the time of registration.
Bad faith can be presumed based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant's registration known to the Respondent.
The Panel notes that the only difference between the disputed domain name and the domain name of the Complainant’s subsidiary, Allianz Banque, is the generic top-level domain (gTLD) name. For the difference is subtle, the Respondent is, in using the disputed domain name, diverting the Internet users who hope to access the Complainant’s subsidiary’s website to the Respondent’s. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554).
The conduct described above falls squarely within paragraph 4(b)(iii) of the Policy, and accordingly, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
In light of the foregoing evidence, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <allianzbanque.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: October 2, 2013