WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zurich Insurance Company v. Multiweb Media Corporation and Mwebmedia

Case No. D2002-0989

The Complainant in this administrative proceeding is Zurich Insurance Company of Zurich, Switzerland.

The Complainant is represented by Richard Penfold, of Harbottle & Lewis, Solicitors, of London, England.

The Respondents are Multiweb Media Corporation, of Makati, Philippines ("First Respondent") and Mwebmedia, of Makati, Philippines ("Second Respondent").

The domain names in issue are <zurichinvestmentgroup.com>and <zurichadvisorygroup.com> ("the Domain Names").

The Registrars of the Domain Names are respectively Network Solutions, Inc. and Tucows, Inc.

The WIPO Arbitration and Mediation Center ("the Center") received on October 23, 2002, an e-mail version and on October 25, 2002, hard copies of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The Complainant made the required payment to the Center. On October 28, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On October 24, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On October 25, 2002:

(a) Network Solutions transmitted by e-mail to the Center its Verification Response, confirming that the registrant of the domain name <zurichinvestmentgroup.com> is the First Respondent, that the Administrative and Billing Contact is the First Respondent, and that the Technical Contact is VeriSign, Inc. of VA , USA; and

(b) Tucows, Inc. transmitted via e-mail to the Center its Verification Response, confirming that the registrant of the domain name <zurichadvisorygroup.com> is the Second Respondent, that the Administrative Contact is Francisco, William of Makati, Philippines and that the Technical Contact is Hostmaster, Domain Registration Phils. of Quezon City, Philippines.

No Response has been filed by the Respondent. The Center attempted to send notification of the Complaint to the Respondents by courier and by e-mail. The courier was unable to effect delivery at the addresses given above, but the e-mail notifications seem to have been successfully transmitted. Notification of Respondent Default was sent by e-mail on November 18, 2002.

On November 27, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by December 5, 2002.

(a) The Complainant is the registered proprietor of the trademarks ZURICH INVEST, Z ZURICH, Z ZURICH INVEST and Z ZURICH INVESTMENT MANAGEMENT, which are the subject of registrations in Switzerland and/or the EU.

(b) The domain name <zurichinvestmentgroup.com> was registered on November 7, 2001.

(c) The domain name <zurichadvisorygroup.com> was registered on May 27, 2002.

(d) The Complainant is the owner of the domain name <zurich.com>.

The Complainant asserts, inter alia, as follows:-

(i) The Complainant is a member of the Zurich Financial Services Group ("Zurich") which is one of the world’s leading insurance-based financial services organizations providing financial protection and wealth accumulation solutions for around 35 million customers in over 60 countries around the world;

(ii) The roots of Zurich stretch back to the 19^th century with the founding of the Zurich Insurance Company in 1872 in Zurich as a reinsurance business under the name "Versicherungs-Verein" (Insurance Association);

(iii) In 1998, Zurich and the financial services businesses of UK based B.A.T Industries combined their activities in the insurance and financial services sectors to become the Zurich Financial Services Group. Zurich Financial Services is listed on the Swiss Stock Exchange with a secondary listing on the London Stock Exchange;

(iv) Today, Zurich’s five business segments are non-life insurance (including property, accident, car and liability insurance), life insurance, reinsurance, Farmer’s management services and asset management. Today, Zurich carries out financial activities in more than 60 countries and has in the region of 70,000 employees worldwide. Zurich Financial Services has a total business volume of US$50 billion and as at December 31, 2000, had a normalized net income of over US$2 billion and over US$440 billion of assets under management;

(v) The Complainant is owner of all worldwide trademark applications and registrations which include the word ZURICH, attributable to the Zurich Financial Services Group of Companies. The Complainant is owner of hundreds of trademark applications and/or registrations around the world for marks incorporating the ZURICH name covering, inter alia, financial services and investments and, in particular, is owner of nearly 100 applications and registrations incorporating the ZURICH name in countries including those in Europe, the USA and Asia (including Taiwan and China);

(vi) There are a substantial number of companies within the Zurich group which have in their names the words ZURICH and/or INVEST, INVESTMENT or ADVISORY. These are as follows:

• Zurich Invest Bank AG, Vogelsangstrasse 15, 8307 Effrektikon, Switzerland;

• Zurich Investments Life S.p.A., Piazza Carlo Erba 6, 20129 Milano, Italy;

• Zurich Investment Services Limited, Crawford House, 23 Church Street, P.O. Box 2268, Hamilton HM JX;

• Zurich Investment Management Limited, 5 Blue Street, North Sydney NSW 2060, Australia;

• Zurich Investments Sociedad Anónima, Cerrito 101, 11^th floor, Buenos Aires City, Argentina;

• Zurich Investments Chile S.A., Fidel Oteíza 1975, Floor 9, Santiago, Chile;

• Zurich Invest (Jersey) Ltd., c/o Ogier & Le Masurier, P.O. Box 404, Whitley Chambers, Don Street, St. Hélier, Jersey;

• ZCM (Zurich Capital Markets) Risk & Value Advisory Limited, Level 47, Citigroup Centre, 2 Park Street, Sydney NSW 2000, Australia;

• ZURINVEST, 19, rue Guillaume Tell, 75808 Paris Cedex 17, France;

• "Zurich" Investment Management AG, Mythenquai 2, Postfach, 8022 Zürich, Switzerland.

(vii) The Complainant first became aware of the website at "www.zurichinvestmentgroup.com" on March 9, 2002, when an article entitled "Investment spam: When marketing takes a wicked turn" appeared in the US daily newspaper, the International Herald Tribune ("the Article"). The article details how unsolicited bulk emails have been sent from the website at "www.zurichinvestmentgroup.com", and the confusion which this has caused to members of the public between the website and the Complainant;

(viii) The website at "www.zurichinvestmentgroup.com", which is in both English and Chinese text,states that all rights in the site are owned by Zurich Investment Group Limited ("ZIG"), a company incorporated in the British Virgin Islands. The website states that ZIG has a regional office in Taiwan. The website advertises financial services throughout the world, including Europe, the USA and Asia, and claims that its "multinational, multilingual advisors use innovative investment strategies aimed at investors who are seeking global diversification in one market place". The "About Us" section of the website describes ZIG as:

(ix) Whilst the entity which operates the website at "www.zurichinvestmentgroup.com" is stated to be ZIG, the registrant of this domain name (the First Respondent) is Multiweb Media Corporation in the Philippines. The website at "www.mwebmedia.com"describes the First Respondent as a "web-development and e-solutions provider specialising in developing e-business solutions for financial services companies";

(x) The Complainant and its representatives have carried out various investigations into the activities of ZIG. As part of those investigations it was discovered that a second website at "www.zurichadvisorygroup.com" was being operated by a second entity called Zurich Advisory Group Limited ("ZAG"). The address given on the website at "www.zurichadvisorygroup.com" for ZAG is the same as that given at "www.zurichinvestmentgroup.com"for ZIG. The website at "www.zurichadvisorygroup.com"contains substantially the same material as that at "www.zurichinvestmentgroup.com", and the same individual, Magne Svaartbek, is quoted as being the chairman of both companies;

(xi) The website at "www.zurichinvestmentgroup.com" purports to give users the opportunity to sign up for a newsletter by submitting an email address to the website. The Complainant’s investigators attempted to subscribe to the newsletter, but have not received any newsletters. Instead they received an email stating the following:

(xii) As the Complainant’s investigators did not receive any other correspondence from ZIG, they sent an email to [email protected], the address given on the website at "www.zurichinvestmentgroup.com" for general enquiries, asking ZIG to contact them. The email was returned with the message that the mailbox did not exist;

(xiii) A further email was sent to the individual stated on the website at "www.zurichinvestmentgroup.com"to be the Managing Director of ZIG, Mark Zuckerman, using the email address [email protected]. The email was returned undelivered;

(xiv) On September 18, 2002, the Complainant’s investigators received an email from Dean Marshall, apparently the "Assistant Vice President of International Trading" stating the following:

"Please feel free to contact me on 886 2 2599 5030 or on 886 935 746 497 to discuss the procedures in opening an account. Please feel free to visit our website "www.zurichadvisorygroup.com" and Dain Rauscher’s website "www.rbcdain.com" where we clear our trades and with whom our clients actually hold their accounts.

(xv) The website at "www.zurichadvisorygroup.com" also gives visitors the opportunity to subscribe to a newsletter. The Complainant’s investigators have subscribed to that newsletter, and received an automated message stating the following:

To date, the Complainant’s investigators have not received a copy of any newsletter or research.

As noted above, no Response has been filed.

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:

(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 domain name has been registered and is being used in bad faith.

Before discussing these elements of the Policy, the Panelist wishes to record that he accepts that despite the fact that on the face of the Registrars’ records the Domain Names are owned by different entities, the Complainant was fully justified in starting a single administrative proceeding against the Respondents jointly. It is immaterial whether the Respondents are in truth one and the same legal entity – there is plainly a single overall enterprise at work.

Turning to the element set out in paragraph 4(a)(i) of the Policy, the Domain Names are <zurichinvestmentgroup.com> and <zurichadvisorygroup.com>. The name ZURICH is internationally very well known in the fields of insurance and financial services to be associated with the Complainant and other companies in the Zurich Financial Services Group. Furthermore, the Complainant is the owner of the trademark "Z ZURICH" in respect of such services. The "Z" is set in a circle, in stylized form, over "ZURICH" and as such forms part of the visual representation of the mark, but would not form part of the mark when spoken. The Domain Names associate "ZURICH" with "INVESTMENT GROUP" and "ADVISORY GROUP" respectively. Because these latter words are descriptors of activities in the general field of financial services, their combination in the Domain Names with "ZURICH" plainly serve to suggest an association with the Complainant. Accordingly, the Panelist has no hesitation in finding that the Domain Names are confusingly similar to the trademark Z ZURICH.

With regard to the Complainant’s registrations of the trademarks ZURICH INVEST and ZURICH INVESTMENT MANAGEMENT, the domain name <zurichinvestmentgroup.com> is plainly also confusingly similar to those trademarks.

As to element (ii) of paragraph 4(a) of the Policy, the Respondents have done nothing to demonstrate that they have any rights or legitimate interests in the Domain Names. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest that the Respondents’ interest in the Domain Names was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Complainant’s Marks to attract potential customers to their own Internet sites. In the absence of any justification from the Respondents of their activities in relation to the Domain Names, the Panelist concludes that the Complainant has established element (ii).

So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the Policy applies.

Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:-

"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] website 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 [Respondent's] website or location, or of a product or service on [Respondent's] website or location."

Given the undoubted worldwide reputation of the Complainant and its associated group of companies in the fields of insurance and financial services generally, the inference that the Domain Names were registered in bad faith is irresistible. In the light of the circumstances alleged in paragraph 5(A)(vii) to ((xv) above it is clear that the Respondents’ activities come within the terms of (iv) of paragraph 4(b) of the Policy. The Panelist has also taken note of the fact that the extracts from the websites at the Domain Names which have been exhibited by the Complainant are more than simply headed with the names "Zurich Investment Group" and "Zurich Advisory Group". In each case there is set alongside the relevant name a larger, stylized "Z", further emphasizing an association with the Complainant (and its use of a larger capital "Z" in association with ZURICH), and so providing further evidence of the Respondents’ bad faith.

The Panelist therefore concludes that the Respondents registered and have been using the Domain Names in bad faith.

In the light of the findings in paragraph 7 above, the Panelist concludes that:-

- the domain names <zurichinvestmentgroup.com> and <zurichadvisorygroup.com> are confusingly similar to the trademark Z ZURICH of the Complainant;

- the Respondents have no rights or legitimate interests in the domain names;

- the domain names have been registered and are being used in bad faith.

Accordingly, the Panelist orders that the domain names <zurichinvestmentgroup.com> and <zurichadvisorygroup.com> be transferred to the Complainant, Zurich Insurance Company.