WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allianz SE v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Alex Zybov, Daxx Market LTD
Case No. D2021-1543
1. The Parties
The Complainant is Allianz SE, Germany, internally represented.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Alex Zybov, Daxx Market LTD, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <allianzmarket.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 19, 2021 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 amendment to the Complaint on May 26, 2021.
The Center verified that the Complaint together with the amendment to 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 June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Response was filed with the Center on July 9, 2021. The Annexes to the Response were submitted on July 14, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 28, 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
The Complainant is a company organized under the laws of Germany and the European Union. It is the ultimate parent company of one of the oldest and largest international insurance and financial services groups in the world, dating back to 1890. Since inception, the Complainant has continuously used the ALLIANZ mark in connection with insurance, healthcare, and financial services products. The Complainant has approximately 147,000 employees serving around 100 million customers in more than 70 countries. It is one of the world’s largest asset managers, with third party assets under management of EUR 1.686 billion at the end of 2019. The total revenues of the Complainant’s group worldwide in 2020 amounted to EUR 140 billion. The international marketing agency Interbrand ranked the “Allianz” brand in 2020 as number 39 with a value of USD 12.935 billion, up 7 percent.
The Complainant owns a wide variety of registered trademarks globally for its ALLIANZ mark, including, for example, International Registered Trademark No. 447004 for the word mark ALLIANZ, registered on September 12, 1979 in use class 36 (insurance and finance), and designated in respect of some 34 territories. The Complainant put forward additional ALLIANZ trademarks in evidence, which are the same as those listed in Allianz SE v. Harryson Trey, WIPO Case No. D2021-1309. The Complainant also produced a finding of a German court dating from 1999 which stated that the Complainant’s ALLIANZ trademark is a well-known symbol in Germany, and a ruling on a trademark opposition proceeding relating to a European Union trademark application in which the Complainant successfully opposed the granting of a trademark in respect of the term “Alliance Capital”. The Complainant also notes that it has registered the ALLIANZ mark comprehensively as a domain name under available Top Level Domains.
The disputed domain name was registered on May 26, 2020. According to screenshots provided by the Complainant, the website associated with the disputed domain name provides an online financial trading platform under the name “Allianz Market”. The Respondent explains that it provides an online cryptocurrency and stock trading platform. The Respondent provides links to its “Facebook” page and its “Trustpilot” review site. The former showed 123 “likes” and 126 “followers” and was created on March 30, 2021. The latter shows 95 reviews, the earliest of which is dated December 22, 2020.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Internet user will recognize the famous corporate name and trademark of the Complainant in the disputed domain name and will expect to reach one of the Complainant’s websites or those of its subsidiaries. The same applies if a customer receives email correspondence from the disputed domain name. The use of the disputed domain name implies that the Respondent belongs to the Complainant’s group. The reputation and highly distinctive character of the Complainant’s mark has already been confirmed by the Higher Regional Court of Munich, which noted that said mark has an extraordinarily high level of recognition among the general public. The Office for Harmonization in the Internal Market came to the same conclusion in the case of a contested ruling for “Alliance Capital”. The Complainant has previously obtained a temporary restraining order in the Munich District Court in a proceeding relating to another domain name and has been successful in other proceedings under the Policy.
Rights or legitimate interests
The Respondent holds no trademark registrations for any ALLIANZ mark and has never received a license or other form of authorization or consent from the Complainant to make use of said mark.
The Respondent is exploiting the fact that Internet users are hoping to access a website or to communicate with someone who belongs to the Complainant’s group of companies. The Respondent is trading on the fame of the Complainant’s mark, which is connected in public perception with insurance and financial services. The Respondent is exploiting the good name of the Complainant via his website. It is apparent that he is a free-rider and fraudster trying to take unfair advantage of the Complainant’s well-known mark.
The Respondent’s activities do not correspond to any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services before being notified of the dispute. The Respondent is not commonly known by the disputed domain name and the Complainant’s prior rights would preclude this. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Registered and used in bad faith
By using the disputed domain name, the Respondent has intentionally attempted to convince Internet users to reveal private information and data by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the disputed domain name.
The Complainant’s trademark is very well-known in many countries, especially with regard to insurance and financial affairs. The Complainant’s reputation is based upon its customers’ trust in its service marks. It cannot be argued reasonably that the Respondent could have been unaware of the Complainant’s trademark when it registered the disputed domain name, which wholly incorporates such mark. The disputed domain name refers to the German term “Allianz” without any other reference to Germany or the German language and it is unlikely that the Respondent happened to select the Complainant’s distinctive trademark unintentionally. The disputed domain name was selected because of its association with the Complainant and to capitalise on the Complainant’s reputation. It is therefore inevitable that the Respondent acted in bad faith.
The Respondent contends as follows:
Identical or confusingly similar
The Complainant’s mark and the disputed domain name differ in phonetic, semantic, and graphic characteristics. The Complainant’s mark etymologically belongs to the English language but is presented in the German language and is a single lexeme. Semantically, the sign means “alliance”. Phonetically, it consists of three syllables according to the rules of the German language with the stress falling on the three syllables. The disputed domain name consists of two lexemes “allianz”, a distinctive feature of the Complainant’s sign, and “market”. Graphically these make one element as there is no visual separation in the form of a space. The verbal elements are lexemes of the English language, with five syllables, as there is no word “market” in the German dictionary. The inaccuracy of the spelling of the first element is a revelation of originality. According to a phonetic analysis the designations belong to different linguistic systems, and differ in duration, sound composition and stress. The semantic meaning, different from that of the Complainant’s mark, derives from the noun “alliance” and the noun “market” and represents the Respondent’s field of activity – the alliance of stock and cryptocurrency markets. Given these differences, the two cannot be considered confusingly similar.
Rights or legitimate interests
The Parties have different fields of activity – insurance and asset management, and cryptocurrency and stock trading. Such areas are highly specialized, excluding the possibility of mixing the services. Due to the differences in areas of activity, the high level of consumer awareness, and the narrow specialization of areas of activity, confusion between the Respondent’s and the Complainant’s brands is excluded. The Respondent’s brand is fundamentally different in terms of its display as to color content, graphic elements, number of elements, and the services for which it is used.
Registered and used in bad faith
The scope of the Parties’ activity is radically different. The Parties’ completely different uses in visual, phonetic and semantic aspects of their brands, in the context of different services, demonstrates the Respondent’s good faith use of the Complainant’s designation and refutes the argument of unfair use of the mark or business reputation.
The wide popularity of the disputed domain name as the Respondent’s designation is confirmed by numerous printed materials (examples provided), presence in the “Facebook” social network, and the presence of numerous positive reviews on third party resources, together with a client base of 30,000 users. The Respondent spends more than USD 300,000 monthly to increase awareness of its brand and domain name. The Respondent has its own large audience of users who do not associate its activities with those of the Complainant. In principle, the Respondent does not need to use the Complainant’s business reputation, having its own significant reputation. Thus, the Complainant’s arguments over unfair use of its mark or reputation is misplaced.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under this element of the Policy, the Panel assesses whether the Complainant has UDRP-relevant rights in a trademark. If so, the Panel then compares such mark to the disputed domain name in order to determine the question of identity or confusing similarity.
In the present case, the Panel finds that the Complainant has rights in its ALLIANZ registered trademark as described in the factual background section above. Turning to the comparison process, this is typically conducted as a reasoned but relatively straightforward side-by-side comparison between such mark and the disputed domain name. The intention is to determine whether the former is recognizable in the latter. In cases where a domain name incorporates the entirety of a trademark, or at least a dominant feature of the mark is recognizable in the domain name, the latter will normally be considered confusingly similar to the former. Questions of the semantic meaning of the disputed domain name and the other linguistic considerations set out in some detail by the Respondent do not typically arise in this comparison process, although an aural or phonetic comparison can be relevant in some cases (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Panel readily identifies the Complainant’s ALLIANZ mark in the disputed domain name alongside a second element, the word “market”. Contrary to the Respondent’s position, the presence of this additional word would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0, and, for example, Allianz SE v. WhoisGuard Protected / Mr. Albeena Alkimah, Allianz Recruiters LLC, WIPO Case No. D2020-1197 in which the Complainant’s mark had been paired with the word “recruiting” in the domain name concerned, and confusing similarity was found). It is also well accepted that the generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the question of confusing similarity between a trademark and a domain name (see section 1.11 of the WIPO Overview 3.0). The Panel finds nothing in the Respondent’s phonetic analysis which alters the recognizability of the Complainant’s mark in the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent holds no trademark corresponding to the ALLIANZ mark, has received no license or permission from the Complainant for the use of such mark, is not commonly known by the disputed domain name, is not making a bona fide offering of goods or services thereby but rather is exploiting the good name of the Complainant via its website, and is not making any noncommercial or fair use thereof. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The essence of the Respondent’s case (set out in more detail above) is that the Parties are engaged in different activities and that, due to their respective narrow specializations, confusion between the Respondent’s and the Complainant’s brands is excluded. The Respondent seeks to use the disputed domain name in connection with a trading platform. As far as the Panel is concerned, this cuts directly across the use of the Complainant’s well-known ALLIANZ trademark as it relates to financial services (see, for example, a similar finding in Allianz SE v. Mohammed Jameel Khan, WIPO Case No. D2021-1152, in which the domain name <allianz-st.com> redirected to a webpage offering trading services). The additional word “market” in the disputed domain name, coupled to the Complainant’s mark, is strongly suggestive of the Complainant’s field of commerce, having a financial services connotation, and as far as the Panel is concerned, this carries a risk of implied affiliation.
In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
On this topic, the Complainant bases its case upon paragraph 4(b)(iv) of the Policy. The Panel accepts the Complainant’s contentions both that its ALLIANZ mark is well known on a global basis and that it achieved such status long before the disputed domain name was registered on May 26, 2020. Accordingly, the Panel finds it much more probable than not that the Respondent was aware of such mark when it registered the disputed domain name. Notably, the Respondent does not deny such knowledge in its submissions but merely seeks to distinguish the Complainant’s mark and the manner in which it is used from the disputed domain name and its associated website.
The remaining question is therefore whether the Respondent intended to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. In the circumstances of this case, the Panel cannot see any other reasonable explanation for the Respondent’s conduct. The Complainant’s mark is highly prominent in the field of financial services and has a substantial history behind it. The Respondent has set up a cryptocurrency and trading platform and thus is engaged in the provision of financial services. The Panel does not find the Respondent’s suggestion credible that it selected and used the name “Allianz Market” for a trading platform without intent to take unfair advantage of the Complainant’s reputation in the field of financial services.
The Panel does not find any indications of good faith on the Respondent’s part from the terms of the Response and supporting evidence. The Respondent suggests that its use of the term “Allianz Market” for a cryptocurrency and trading platform offering is sufficiently distinguishable from the services in respect of which the Complainant’s ALLIANZ mark is registered, such that there can be no confusion. Given the fame of the Complainant’s mark, particularly in the field of financial services, which has been accepted by multiple previous panels under the Policy, that argument is not tenable.
The Respondent suggests that it has merely relied upon the consumer awareness of its own brand, thus demonstrating that it had no intent to ride on the coat tails of that of the Complainant. This argument misses the point, in that any consumer awareness which the Respondent has generated is more likely than not to be predicated upon the public’s confusion as to the presence of the ALLIANZ mark in the disputed domain name. In any event, the evidence which the Respondent has put forward in support of the alleged consumer awareness of its own brand is extremely unconvincing. The Respondent provides a link to its “Facebook” page, which features 123 “likes” and 126 “followers” and was set up in March 2021. The Respondent also provides a link to some 95 reviews of its product on what appears to be the Russian version of the “Trustpilot” website. The bulk of these reviews were in Polish and translations were not supplied. The earliest review was dated December 22, 2020. In short, the Respondent’s activity is relatively recent, neither of the examples provided suggest a high level of consumer awareness, and it is not clear that they support the claim that the Respondent has established a userbase of 30,000 users. Even if they were suggestive of such a substantial following, the well known nature of the Complainant’s mark would tend to suggest that this more probably results from consumers associating the Respondent’s offering with the Complainant’s longstanding and prominent activities in the field of financial services than anything which the Respondent has achieved on its own since the disputed domain name was registered in May 2020.
Other aspects of the Respondent’s case on this topic also fail to convince. The Respondent states that it is spending USD 300,000 monthly on increasing awareness of its brand, yet there is no supporting evidence whatsoever before the Panel demonstrating the manner in which such a significant sum is being spent. The Respondent further asserts that its brand has garnered widespread popularity due to use in numerous publications, however the three publications produced, in the Polish language, appear (based on a machine translation of their titles) to be self-generated promotional and training materials for the Respondent’s website. There is no evidence of the extent to which these publications have been disseminated.
In summary, when the Respondent’s case is set against the very well-known and longstanding nature of the Complainant’s ALLIANZ mark, the only reasonable conclusion on the balance of probabilities is that the Respondent chose the name “Allianz Market” with a view to establishing a website which trades off the Complainant’s goodwill in order to create confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement in terms of paragraph 4(b)(iv) of the Policy.
In all of the above circumstances, the Panel finds that the disputed domain name was registered and has been used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <allianzmarket.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: August 11, 2021