WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UNIQA Insurance Group AG v. Sylvie Lemasson
Case No. D2019-0593
1. The Parties
The Complainant is UNIQA Insurance Group AG of Vienna, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.
The Respondent is Sylvie Lemasson of La Frette sur Seine, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <uniqa-alternatives.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2019, 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 March 27, 2019 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 March 28, 2019.
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 proceedings commenced on April 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on May 10, 2019. 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 public stock listed insurance company based in Vienna, Austria, which consists of approximately 40 companies in 18 countries serving more than 10 million customers, notably in Austria and Central and Eastern Europe. With a market share of 21%, the Complainant is the biggest insurer in Austria and enjoys a brand awareness of 74% among the general public in Austria.
The Complainant operates under the brand UNIQA since 1998, and provides financial services in addition to its insurance segment via its subsidiary formally named UNIQA Alternative Investments GmbH, which merged as of February 2012 with UNIQA Finanz Service GmbH to become UNIQA Capital Markets GmbH.
The Complainant notably holds the following verbal UNIQA trademarks registered under class 36 of the Nice Classification for insurance and financial affairs: Austrian Trademark Registration No. 179703 and EU Trademark Registration No. 1132174, which both enjoy a priority date as of October 13, 1998.
The Complainant primarily operates its online activities under the domain names <uniqa.at> and <uniqagroup.com>.
On January 22, 2019, the Respondent registered the domain name <uniqa-alternatives.com>. The disputed domain name resolves to a website where the Respondent falsely presents herself as the UNIQA Group “founded in Vienna in 1999” with more than 4,000 employees and which proposes contact forms to open an account labelled under the Complainant’s brand. The disputed domain name and attached websites have already been reported in the press as having been established in a deceitful way for fraudulent purposes.
5. Parties’ Contentions
The Complainant first argues that the domain name <uniqa-alternatives.com> is confusingly similar to its trademark UNIQA as it entirely incorporates its trademark and that the addition of the term “alternatives”, which is generic, does not enable to exclude the resulting likelihood of confusion. This is all the more true than one of the Complainant’s subsidiaries used to be named UNIQA Alternatives Investments GmbH.
The Complainant further affirms that the Respondent has no rights or legitimate interests in the disputed domain name. It has neither authorized the Respondent to use its trademark UNIQA.
Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith. The website attached to the domain name <uniqa-alternatives.com> is used for fraudulent purposes to make users believe that the website would be managed by the Complainant or one of its subsidiaries, so as to fraudulently collect data, as evidenced by the fact that the website displays the address and contact details of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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
According to the Policy, paragraph 4(a)(i), the Complainants has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous word trademarks consisting of the word UNIQA, whose well-known character notably in Austria has been evidenced by the Complainant with a brand awareness of 74 per cent of the Austrian population.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.
This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case. The applicable generic Top-Level Domain, in the present case “.com”, is usually disregarded under the confusing similarity test, and the addition of a descriptive term such as “alternatives” does not exclude the confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). This is all the more true than one of the Complainant’s subsidiaries used to be incorporated under the corporate name UNIQA Alternatives Investments GmbH.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent WIPO UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of WIPO Overview 3.0).
In the present case, the Complainant is the owner of several UNIQA trademarks that enjoy a strong reputation. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, the Respondent did not rebut this prima facie showing.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s UNIQA trademarks enjoy a strong reputation and amount to well-known trademarks in Austria as pointed out above. In addition, the descriptive term “alternatives” is related to the Complainant’s subsidiary corporate name “UNIQA Alternatives Investments GmbH”.
Considering this strong reputation, there is no doubt that the Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name.
Furthermore, in this Panel’s view, it is inconceivable that the Respondent would have chosen for some legitimate purposes a domain name such as the disputed domain name and use it in good faith. The configuration of the website attached to the disputed domain name and the use of an email address meant to steal valuable information from the Complainant’s clients rather demonstrate the opposite, i.e. that the Respondent is engaged in a phishing scheme. Panels have agreed that there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company the customers of which are being misled and deceived into believing they are dealing with the owner of the trademark. Consequently, Panels have further concluded that the use of a disputed domain name for the purpose of “phishing” activities is clear evidence of registration and use of a domain name in bad faith (OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093).
Consequently, the Panel is of the opinion that the disputed domain name <uniqa-alternatives.com> has been registered and is being used in bad faith under the 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 <uniqa-alternatives.com> be transferred to the Complainant.
Date: May 14, 2019