WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allianz SE v. WhoisGuard Protected / John Kojo

Case No. D2019-2157

1. The Parties

Complainant is Allianz SE, Germany, represented by internally.

Respondent is WhoisGuard Protected, Panama / John Kojo, Ghana.

2. The Domain Name and Registrar(s)

The disputed domain name <theallianzplc.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 September 4, 2019. On September 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 Complainant on September 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 12, 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 Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2019.

The Center appointed Phillip V. Marano as the sole panelist in this matter on October 14, 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

Founded in 1890 in Berlin, Complainant is one of the oldest and largest global providers of financial services in the world, operating predominantly in the insurance and asset management business. Complainant owns valid and subsisting registrations for the ALLIANZ trademark in numerous countries around the world, with the earliest cited international trademark ALLIANZ registration No. 447004 priority dating back to September 12, 1979.

Respondent registered the disputed domain name on April 20, 2019. At the time the Complaint was filed, the disputed domain name resolved to a website which ostensibly misappropriated the ALLIANZ trademark to offer “personal banking”, “business banking”, and “trust & wealth” services.

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the above registered trademark rights in the ALLIANZ trademark and adduced copies of German, European Union Community, and Madrid System International trademark registrations. Complainant further asserts that the ALLIANZ trademark is a distinctive and well-known mark used for well over 100 years. It has been recognized as famous by Interbrand in its Best Global Brands in 2018, as well as the Higher Regional Court of Munich in 1999 and the Office for Harmonization in the Internal Market in 2003. The disputed domain name is confusingly similar to Complainant’s ALLIANZ trademark, according to Complainant, because Internet users will recognize Complainant’s famous ALLIANZ trademark in the disputed domain name and expect to reach one of its websites, or mistakenly assume that Respondent’s insurance, asset management and assistance services are part of Complainant.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any trademark registrations owned by Respondent; the lack of any license for Respondent to use Complainant’s ALLIANZ trademark; the lack of any evidence that Respondent is known by Complainant’s ALLIANZ trademark; and Respondent’s apparent use of the disputed domain name to perpetrate fraud on Internet users and take unfair advantage of Complainant’s well-known ALLIANZ trademark.

Complainant argues that Respondent has registered and used the disputed domain name in bad faith based on: the fame of Complainant’s ALLIANZ trademark, such that it cannot reasonably be argued Respondent was unaware of Complainant; use of Complainant’s trademark and logo on Respondent’s website; and Respondent’s use of the disputed domain name to host a website that ostensibly offers financial services under Complainant’s ALLIANZ trademark “to convince Internet users to act as being instructed (i.e. to reveal private information and data)” about themselves or their accounts with Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;

ii) 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.

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.3 (2017) (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, Section 1.2.1. Complainant submitted evidence that the ALLIANZ trademark has been registered in numerous countries around the globe with priority dating back to at least as early as 1979, nearly forty years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the ALLIANZ trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s ALLIANZ trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s ALLIANZ trademark because, disregarding the generic Top-Level-Domain (“gTLD”) .com that trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, Section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLD, such as .com in the disputed domain name, are generally viewed a standard registration requirement and are disregarded under the first element. WIPO Overview,Section 1.11.

The confusing similarity is not dispelled by combination with the descriptive terms “the” or “plc”, which is a common abbreviation for “Public Limited Company” within various Commonwealth countries. WIPO Overview, Section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (“The addition of the generic name “condoms” does not avoid confusion) AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark].”)

In view of Complainant’s registrations for the ALLIANZ trademark, and incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. As in this Complaint, where Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, Section 2.1.

It is evident that Respondent, initially masked by a proxy service, but later identified by that service as “John Kojo”, is not commonly known by the disputed domain name or Complainant’s ALLIANZ trademark. Moreover, panels have categorically held that use of a domain name for illegal activity—including phishing, impersonation, passing off, and other types of fraud—can never confer rights or legitimate interests on Respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable. WIPO Overview 3.0, Section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives.”)

In view of Respondent’s use of its website to pass itself off as Complainant, Complainant’s credible argument that Respondent’s website merely phishes for sensitive financial data, and Respondent’s use of a proxy registration service to mask its identity, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

i) Circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark to a competitor of Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

ii) Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with 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.

Panels have similarly categorically held that registration and use of a domain name for illegal activity—including the same of counterfeit goods, phishing, malware, impersonation, passing off, and other types of fraud—is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, Section 3.1.3. See e.g. WSI Holdings Ltd. v. WSI House, WIPO Case No. D2004-1089 (“Respondent appears to be engaged in “phishing” for mistaken potential employees of the Complainant … Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of paragraph 4(b)(iv) of the Policy.”)

In this Complaint, Complainant has submitted evidence that: the disputed domain name wholly incorporates the ALLIANZ trademark, which is well-known around the world; Respondent used the disputed domain name to resolve to a website that misappropriated the same well-known ALLIANZ trademark and logo, and purported to offer “personal banking”, “business banking”, and “trust & wealth” services associated with Complainant; and Respondent used the disputed domain name to request sensitive financial information from Internet users who visited that website. Such activity clearly constitutes bad faith registration and use of the disputed domain name within paragraph 4(b)(iv) of the Policy.

In view of Respondent’s attempted impersonation and attempts to passing itself off as Complainant, as well as Complainant’s credible argument that Respondent’s website merely phishes for sensitive financial data, the Panel concludes that Complainant has established the third element of the Policy.

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 <theallianzplc.com> be transferred to Complainant.

Phillip V. Marano
Sole Panelist
Date: October 29, 2019