WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allianz SE v. Whoisguard Protected, Whoisguard, Inc. / Smart Web Hosting Srl, Adrian Claudiu Domut / Ionut Vintila
Case No. D2013-1814
1. The Parties
The Complainant is Allianz SE of Munich, Germany, internally represented.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Smart Web Hosting Srl, Adrian Claudiu Domut of Satu Mare, Romania / Ionut Vintila of Bucuresti, Romania.
2. The Domain Name and Registrar
The disputed domain name <autotruck-allianz.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2013. On October 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 2013. The Complainant filed an amendment to the Complaint on November 7, 2013. On November 8, 2013, the Complainant filed a further amended Complaint.
On November 7, 2013, the Respondent Smart Web Hosting Srl, Adrian Claudiu Domut sent an email communication stating that it “just buy the domain for the client” also providing information for its client identified as “Ionut Vintila”.
The Center verified that the Complaint together with the amendment to the Complaint and amended Complaints 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 with the amendment to the Complaint and amended Complaints, and the proceedings commenced on November 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2013. No formal Response was received and, on December 2, 2013, the Center notified the Parties of the Commencement of Panel Appointment Process.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 9, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is the ultimate parent company of one of the oldest and largest international insurance and financial services groups in the world. The first company of the present group was founded in 1890. Currently, the group employs some 142,000 employees worldwide and has approximately 78 million customers in over 70 countries. The value of the ALLIANZ brand was estimated to be USD 5,345 million in 2011. Details of extensive registrations internationally of the Complainant’s ALLIANZ trade mark have been supplied to the Panel. The Complainant’s business includes motor vehicle insurance services.
The disputed domain name was created on September 2, 2013.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its ALLIANZ trade mark, merely adding “autotruck-” to its ALLIANZ trade mark, and argues that “autotruck” is descriptive and non-distinctive in the context of the Complainant’s motor insurance business.
The Complainant alleges that the Respondent has no rights or legitimate interests in the goodwill the Complainant has developed under its ALLIANZ trade mark, in particular that it has never received a licence or any other form of authorization or consent from the Complainant to make use of the ALLIANZ trade mark.
The Complainant contends that the disputed domain name was registered in bad faith, and argues that the Respondent’s use of the disputed domain name on a website offering car transport and relocation services, including the claim “Allianz Autotruck drivers are fully licensed and insured”, constitutes use of the disputed domain name in bad faith.
The Respondent’s only intervention in these proceedings was its communication of November 7, 2013, to the effect that it “just buy the domain for the client”.
6. Discussion and Findings
In Allianz SE v. CCIC, Radoslaw Roszczyk and Hosting Systems, Paul Hughes, WIPO Case No. D2013-0289, the panel concluded: “The Complainant has registered the trademark ALLIANZ in many countries and in view of the evidence submitted by the Complainant, it clearly is a well-known trademark in the insurance and financial services industries.” After having seen the evidence provided by the Complainant in the present proceedings, the Panel in this case has come to the same conclusion.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers the gTLD “.com” indicator to be irrelevant in the present case.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a descriptive element to a trade mark is insufficient to avoid a finding of confusing similarity. In the context of commerce relating to motor vehicles, the Panel considers the term “autotruck” to be descriptive and non-distinctive. Moreover, the Panel also concludes that the disputed domain name <autotruck-allianz.com> leads to confusion with the business of the Complainant. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ALLIANZ trade mark, and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. Although the Respondent was notified of these proceedings, the Respondent’s communication of November 7, 2013 did not address the Complainant’s contentions. The Panel, therefore, accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which, in the Panel’s view, the disputed domain name was deliberately “engineered” to compete unfairly with the Complainant, as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith, and the Panel so finds.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the use of a website operated under a domain name to potentially divert customers of a complainant to competitors constitutes use in bad faith. The Complainant has drawn the Panel’s attention to the website operated under the disputed domain name, which has been used in an area over-lapping with the Complainant’s business, and the Panel concludes that this use is liable to potentially divert customers of the Complainant, to the Complainant’s detriment. The Panel accordingly finds, in the specific circumstances of the present case, that the disputed domain name is being used in bad faith. The Panel, therefore considers that the Complainant has satisfied the dual test of paragraph 4(a)(iii) of the Policy.
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 <autotruck-allianz.com> be transferred to the Complainant.
George R. F. Souter
Date: December 20, 2013