WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allianz SE v. Paul Steve
Case No. D2020-2519
1. The Parties
The Complainant is Allianz SE, Germany, internally represented.
The Respondent is Paul Steve, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <allianzit.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2020. On September 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 9, 2020. 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 parent company of one of the largest international insurance and financial services groups. The Complainant owns a substantial portfolio of trademark registrations for ALLIANZ, such as:
- International Trademark Registration No. 447004 for the ALLIANZ mark, registered on September 12, 1979;
- International Trademark Registration No. 714618 for the ALLIANZ mark, registered on May 4, 1999;
- International Trademark Registration No. 713841 for the ALLIANZ design mark, registered on May 3, 1999;
- German Trademark Registration No. DE987481 for the ALLIANZ mark, registered on July 11, 1979.
The Respondent registered the Domain Name on June 26, 2020. The Domain Name does not resolve to any active website. The Domain Name has been used through email addresses for phishing purposes, which was part of the fraudulent scheme targeting one of the Complainant’s customers.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it is the parent company of one of the largest international insurance and financial services groups. The Complainant alleges that it owns a substantial portfolio of trademark registrations for the ALLIANZ trademark. The Complainant claims that the Domain Name is confusingly similar to the Complainant’s ALLIANZ trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent does not own any trademark registrations for the ALLIANZ mark, and it has never received a license or a permission to use the Complainant’s trademark. The Complainant alleges that the Respondent used the Domain Name through email addresses by impersonating a subsidiary of the Complainant. The Complainant contends that the Respondent’s activities do not correspond to any of the circumstances set forth in paragraph 4(c) of the UDRP that would evidence any rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is not commonly known by the Domain Name. The Complainant contends that the Respondent is not making legitimate noncommercial or fair use of the Domain Name.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that because the Respondent is using the Domain Name through email addresses designed to impersonate a subsidiary of the Complainant for phishing purposes, it is most likely that the Respondent registered the Domain Name with the Complainant in mind. The Complainant argues that the Respondent registered the Domain Name to capitalize on the Complainant’s reputation. The Complainant contends that the Respondent’s registration and use of the Domain Name in connection with fraudulent emails is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns several trademark registrations for the ALLIANZ trademark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”1 Further, it is well established that the applicable generic Top Level Domain (“gTLD”) should be disregarded under the confusingly similarity test as a standard registration requirement.
Here, the Domain Name consists of the Complainant’s ALLIANZ trademark in its entirety, the term “it” and the gTLD “.com”. Because the Complainant’s ALLIANZ trademark is recognizable within the Domain Name, the inclusion of the term “it” does not detract from confusing similarity. The gTLD “.com” is disregarded from the confusing similarity test. Therefore, the Domain Name is confusingly similar to the Complainant’s ALLIANZ trademark.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.2
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts that there is no evidence that the Respondent is commonly known by the Domain Name or that the Respondent has used, or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Neither is the Respondent making a legitimate noncommercial or fair use of the Domain Name. The Domain Name does not resolve to any active website. The evidence on record demonstrates the Respondent’s use of the Domain Name in connection with phishing emails impersonating the Complainant’s subsidiary in a scheme to defraud one of the Complainant’s customers of a large sum of money. Prior UDRP panels have held that the use of a domain name for illegal activity, such as impersonation, or other types of fraud “can never confer rights or legitimate interests on a respondent”.3
The Panel finds that the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.4 The Respondent has failed to do so, and, consequently, the Panel finds that in this proceeding the Complainant has satisfied paragraph 4(a)(ii) of the UDRP.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires a “finding that both the registration and use were in bad faith.”
The Complainant has provided ample evidence to support its contention that the Respondent has registered and used the Domain Name in bad faith.
Paragraph 4(b) of the UDRP sets forth circumstances, which shall be considered evidence of the registration and use of a domain name in bad faith. The examples of bad faith registration and use set forth in paragraph 4(b) of the UDRP are not meant to be exhaustive of all circumstances from which such bad faith may be found. Prior UDRP panels have held that “the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.5
The evidence on file shows that the Respondent used the Domain Name through email addresses representing to be sent by the Complainant’s subsidiary. The emails have targeted one of the Complainant’s customers to defraud it out of a large sum of money. Based on the use of the Domain Name, the Panel finds that the Respondent was aware of the Complainant’s ALLIANZ marks when registering the Domain Name.
The Panel also finds that the Respondent’s use of the Domain Name for fraudulent emails to defraud the recipient of a large sum of money, constitutes bad faith use of the Domain Name. See, e.g., L’Oréal v. Domains By Proxy, LLC, Registration Private, DomainsByProxy.com / Robert Bowman, WIPO Case No. D2017-1387; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043, where the panel stated that, “Respondent has used the disputed domain name as a fake email address in order to impersonate the CFO of Complainant A and mislead some employees, recipients of the emails. The fraudulent intentions of the Respondent are hereby clearly unveiled, and enable the Panel to conclude that the disputed domain name is used in bad faith”. Thus, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Although the Domain Name does not resolve to any active website, passive holding of the Domain Name does not prevent a finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.6 One of the factors applied to passive holding doctrine is “the implausibility of any good faith use to which the domain name may be put”.7 Here, the bad faith registration and use of the Domain Name in relation to the phishing email activity makes implausibility of any good faith use to which the Domain Name may be put.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the UDRP.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <allianzit.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: November 20, 2020
1 Section 1.8, WIPO Overview 3.0.
2 Section 2.1, WIPO Overview 3.0.
3 Section 2.13.1, WIPO Overview 3.0.
4 Section 2.1, WIPO Overview 3.0.
5 Section 3.4, WIPO Overview 3.0.
6 Section 3.3, WIPO Overview 3.0.
7 Id.