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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allianz SE v. Whois Privacy Protection Service, Inc. / Matthew Barba

Case No. D2020-3225

1. The Parties

The Complainant is Allianz SE, Germany, represented internally.

The Respondent is Whois Privacy Protection Service, Inc., United States of America (“United States”) / Matthew Barba, United States.

2. The Domain Name and Registrar

The disputed domain name <allianzmortgageca.com> is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2020, 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 December 2, 2020, 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 December 7, 2020.

The Center verified that the Complaint together with the amended 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 proceeding commenced on December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent submitted an informal response on December 31, 2020, requesting settlement of the proceeding. On January 4, 2021, and January 11, 2021, the Center sent possible settlement emails to the Parties; however, the Complainant did not request any suspension of the proceeding. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on January 12, 2021.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 19, 2021. 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

A. Complainant

The Complainant is a company incorporated in Germany and the ultimate parent company of one of the largest insurance and financial services groups in the world, founded in 1890.

The Complainant is the owner of trade mark registrations in jurisdictions worldwide for ALLIANZ (the “Trade Mark”), including international registration No. 447004, with a registration date of September 12, 1979.

The Complainant is also the owner of several domain names comprising the Trade Mark, including <allianz.com> and <allianz.us>, registered since May 21, 1997, and May 16, 2002, respectively.

B. Respondent

The Respondent is apparently an individual located in the United States.

C. The Disputed Domain Name

The disputed domain name was registered on December 8, 2013.

D. The Website at the Disputed Domain Name

The disputed domain name has previously been used in respect of a website titled “Allianz Mortgage Services” appearing to provide mortgage and refinancing services, with an address in California, United States (the “Website”). As at the date of this Decision, the disputed domain name is not being used.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not substantively reply to the Complainant’s contentions. On December 31, 2020, the Respondent indicated in an email communication that it would stop use of the disputed domain name and related email address.

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “mortgage”, a word which is descriptive of the Complainant’s products marketed and sold under the Trade Mark; and the letters “ca”, a commonly used abbreviation for California, the state in which the business featured on the Website appeared to provide its mortgage and refinancing services.

Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).

The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has previously used the disputed domain name in connection with the Website, in order to promote and offer for sale mortgage and refinancing services, in direct competition with those marketed and sold by the Complainant under the Trade Mark worldwide for over 100 years.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

Furthermore, the composition of the disputed domain name, consisting of the Trade Mark and descriptive terms, cannot constitute fair use in this case as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

The uncontested evidence demonstrates that the Respondent has registered and used the disputed domain name in order to target the Complainant’s Trade Mark and obtain commercial advantage by attracting Internet users to the Website, so as to market and offer its competing financial services products, in direct competition with those marketed and sold by the Complainant worldwide for over 100 years under the Trade Mark.

The Panel finds that the Respondent’s use of a privacy protection service provided by the Registrar; and the Respondent’s decision, after the date of filing of the Complaint, to cease resolving the disputed domain name to the Website, provide further support for a finding of bad faith for the purposes of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

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 disputed domain name <allianzmortgageca.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: February 2, 2021

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