WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allianz SE v. Larson Moore, Lar

Case No. DCO2020-0091

1. The Parties

Complainant is Allianz SE, Germany, internally represented.

Respondent is Larson Moore, Lar, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <allianz-investment.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 Complainant on December 9, 2020 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 December 14, 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 Respondent of the Complaint, and the proceedings commenced on December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Respondent sent an email communication on January 2, 2021. The proceeding was suspended on January 8, 2021 and the reinstitution of proceeding was on February 17, 2021. The commencement of panel appointment process was notified on March 11, 2021.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 16, 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

Complainant has been providing insurance and financial services under the ALLIANZ trademark (“ALLIANZ Mark” or “Complainant’s Mark”) since 1890. Complainant serves approximately 100 million customers in 70 countries, employs over 147,000 people worldwide, manages over EU 1.68 trillion (USD 1.98 trillion) in assets and generated over EU 142 billion (USD 167 billion) in 2019. The ALLIANZ Mark was ranked number 39 in Interbrand’s “Best Global Brands 2020” report, which valued Complainant’s Mark at USD 12.9 billion.

Complainant owns multiple registrations for the ALLIANZ Mark, including International Registration numbers 447004 (registered on September 12, 1979) and 714618 (registered on May 4, 1999). Previous UDRP panels have recognized that the ALLIANZ Mark is well known around the world. See Allianz SE v. WhoisGuard Protected / Kaiser Sandra, WIPO Case No. D2019-1988 (“[t]he ALLIANZ trademark of the Complainant has a strong reputation and due to its substantial and continued global use is widely known.”); Allianz SE v. Fernando Notario Britez / Oneandone, Private Registration, WIPO Case No. D2013-0279 (“[t]he trademark ALLIANZ is a distinctive and well-known trademark that has been used by the Complainant for well over 100 years.”); see also Allianz Seguros S/A and Allianz SE v. Luis Daniel, Leilao, WIPO Case No. D2020-2048; Allianz Sigorta A.S., Allianz Hayat ve Emeklilik A.S. v. Selcuk Yildiz, WIPO Case No. D2015-1762; Allianz SE v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0896. Complainant also owns and operates websites at various domain names that contain the ALLIANZ Mark, such as <allianz.com>, which it uses to provide information about itself, its products and its services.

The disputed domain name <allianz-investment.co> was registered on November 24, 2020. It resolved to a website that resembled the website located at Complainant’s primary domain name, <allianz.com>. The disputed domain name’s website was purportedly being operated by “Allianz Investment Co.”, advertised the same services offered by Complainant under the ALLIANZ mark, and displayed Complainant’s company logo.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is confusingly similar to Complainant’s Mark because it is wholly and identically incorporated in the disputed domain name. Complainant further argues that the inclusion of the term “investment” would only further confuse Internet users into believing that the disputed domain name belongs to Complainant since Complainant also offers financial services under the ALLIANZ trademark.

Complainant also contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, that Complainant has not licensed Respondent the right to use Complainant’s Mark, and that Respondent is not otherwise authorized to act on Complainant’s behalf. Complainant also contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and is merely attempting to take unfair advantage of the goodwill and reputation Complainant has developed for its ALLIANZ Mark.

Complainant also contends that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the ALLIANZ Mark given Respondent’s complete incorporation of Complainant’s Mark in the disputed domain name and the worldwide notoriety of Complainant’s Mark. Complainant further argues that Respondent registered the disputed domain name to capitalize on Complainant’s reputation.

B. Respondent

Respondent did not substantively reply to Complainant’s contentions. Respondent only sent a communication on January 2, 2021 stating that he had committed a mistake when he purchased the disputed domain name and that he would transfer it to Complainant. However, Respondent never transferred the disputed domain name to Complainant and there is no evidence on record suggesting that he engaged in any good faith negotiation with Complainant to do so.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 was registered and is being used in bad faith.

Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) 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.” Thus, even though Respondent failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the ALLIANZ Mark through its international trademark registrations.

With Complainant’s rights in the ALLIANZ Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8. See also Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Here, the disputed domain name fully incorporates Complainant’s ALLIANZ Mark. The inclusion of a hyphen and the dictionary term “investment” in the disputed domain name does nothing to prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8.

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s ALLIANZ Mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, 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 it 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.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the ALLIANZ Mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s offering of goods and services under a trademark he was not authorized or licensed to use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’“ (quoting Ciccone v. Parisi, WIPO Case No. D2000-0847)). In this case, Respondent used the disputed domain name to direct Internet users to a website intended to mimic that of Complainant, apparently to try and ostensibly sell competing services. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name.

Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

Among the circumstances panels take into account when assessing whether the respondent’s registration of a domain name is in bad faith are: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iii) the clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, and (iv) other indicia generally suggesting that the respondent had somehow targeted the complainant. WIPO Overview 3.0, section 3.2.1.

In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations for the ALLIANZ mark that long predate Respondent’s registration of the disputed domain name, and provided evidence that the ALLIANZ Mark is considered well-known around the world. Therefore, Respondent was likely aware of the ALLIANZ trademark when it registered the disputed domain name, or knew or should have known that they were identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the ALLIANZ mark and adds the dictionary term “investments”, meaning that bad faith registration and use of the disputed domain name can be presumed. The composition of the disputed domain name carries the likelihood that Internet users would associate the disputed domain name with Complainant. See also TPI Holdings, Inc. v. Carmen ArmengolWIPO Case No. D2009-0361 (“the addition of the word ‘transactions’ to the Domain Name increases the confusing similarity, as Complainant’s Mark is used in connection with advertising for automobile sales transactions.”)

Furthermore, the disputed domain name resolves to a website that made copious use of Complainant’s Mark, closely resembled the website located at Complainant’s primary domain name, <allianz.com>, and that advertised similar services to the ones Complainant offers under the ALLIANZ Mark. This is clear evidence that Respondent not only knew about Complainant’s Mark but also actively targeted it for unfair exploitation. Respondent’s claim that he had inadvertently registered the disputed domain name is just not credible in light of the content of the website to which the disputed domain name resolved. The Panel finds it much more likely that Respondent was engaging in a concerted effort to attract Internet users, for commercial gain, to Respondent’s website, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraphs 4(a)(iii) 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 <allianz-investment.co> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: March 30, 2021