The Complainant is Allianz SE of Munich, Germany, represented by in-house counsel.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) and Stephen Baptiste of New York, New York, US.
The disputed domain name <allianzsecurityprotection.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, Stephen Baptiste, is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2012.
The Center appointed Derek M. Minus as the sole panelist in this matter on December 4, 2012. 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.
The Complainant is Allianz SE (formerly known as Allianz AG), a company organized under the laws of Germany and one of the oldest and largest international insurance and financial services groups in the world. The Complainant’s first company, Allianz Versicherungs-AG, was founded in 1890 in Berlin, Germany. In 1893, Allianz opened its first international branch in London and in 1896, Allianz Life, was founded in North America.
In the US several companies with specialized expertise operate under the Allianz name. For example, Allianz Life, provides life insurance and healthcare risk management services and Allianz Global Investors’ network of companies has specialized equity and fixed-income expertise and provides asset management services. Together, these firms manage more than USD 500 billion and have a client list that includes more than half of the 100 largest corporations in the US. Total revenues of Allianz Group worldwide in the year 2011 were EUR 103.6 billion.
The Complainant has operated for well over 100 years under the ALLIANZ name and has used the ALLIANZ mark in connection with its insurance, healthcare and financial services and products. The ALLIANZ brand is distinctive and well-known mark and the Complainant offers a wide range of insurance, underwriting, reinsurance and financial services under its ALLIANZ mark. Over the years, Allianz has devoted substantial resources and efforts to building goodwill in the ALLIANZ mark, which is used to distinguish Allianz’s products from all other products in the same class. The ALLIANZ trademark was registered in Germany on July 11, 1979 and then internationally and in the EU Community.
The Complainant submitted evidence with its Complaint that ALLIANZ is a worldwide registered and protected trademark and that it is the owner of numerous trademark registrations, as follows:
Trademark |
Country/Register |
Reg. No. |
Reg. Date |
|
Allianz |
International Register |
447004 |
12/09/1979 |
|
AlIianz |
International Register |
714618 |
04/05/1999 |
|
Allianz and Design |
International Register |
713841 |
03/05/1999 |
|
Allianz |
Germany |
987481 |
11/07/1979 |
|
Allianz |
Germany |
39927827 |
16/07/1999 |
|
Allianz |
EU Community Trademark |
000013656 |
22/07/2002 |
|
Allianz and Design |
EU Community Trademark |
002981298 |
05/04/2004 |
The ALLIANZ mark is also comprehensively registered and protected as a trademark in the US. This applies to the main mark ALLIANZ and to numerous combinations of the mark with other descriptors, such as:
Trademark |
Country/Register |
Reg. No. |
Reg. Date |
|
Allianz Advantage |
USA |
3239895 |
08/05/2007 |
|
AlIianz Alterity |
USA |
3237483 |
01/05/2007 |
|
AIlianz Charter |
USA |
3237484 |
01/05/2007 |
|
Allianz Opportunity |
USA |
3237486 |
0105/2007 |
|
Allianz Rewards |
USA |
3239896 |
08/05/2007 |
|
Allianz Dominator Plus |
USA |
3573848 |
10/02/2009 |
The Complainant states that the highly distinctive character of the Complainant’s mark has already been determined by different authorities and provided copies of the decisions of various tribunals including:
- the Oberlandesgericht Munchen (Higher Regional Court of Munich) of November 25, 1999 which found that, “the trademark ‘Allianz’ [has] an extraordinary high awareness level in the general population”.
- the Office for Harmonization in the Internal Market (Trade Marks and Designs) dated December 9, 2003, which held that the ALLIANZ trademark “enjoy reputation in Germany” and quoted with approval “the recent decision of the Munich District Court granting the famous ALLIANZ name protection against the use of the name ‘Die Allianz’ by a pop group”.
- various UDRP decisions in respect of domain names containing the trademark “ALLIANZ” all of which were successful for the Complainant.
According to the Complainant:
(i) The disputed domain name “awww.allianzsecuritypro.com” (sic) is confusingly similar to the trade marks in which the Complainant has rights. The domain name and the Allianz mark are partly identical. The internet user will recognize the famous corporate name and trademark of the Complainant at the prominent beginning of the domain name. Further, the following appropriate descriptors confirm this recognition of the Internet user since the descriptor “security” is consistent with the expectations of potential clients interested in products and services of the Complainant. The appendix “pro” will be perceived as an abbreviation for “professional” or “protection”, both also appropriate descriptors for the products and services of the Complainant and the expectations of the internet users. The wrong conclusions of the internet users are intensified by the constant use and registration of combinations of “Allianz” plus descriptor by the Complainant. Respondent’s use of the mark “Allianz” in combination with “securitypro” (sic) therefore creates confusion among Internet users.
(ii) The Respondent has no rights or legitimate interests with respect to the “Allianz” mark or the goodwill Allianz has developed in its mark. To the contrary, the Respondent holds no trademark registrations for any “Allianz” mark and has never received a license, or any other form of authorisation or consent from the Complainant to make use of the Allianz mark.
(iii) The Respondent intentionally attempted, by using the disputed domain name, to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain, see the Policy, para. 4(b)(iv).
(iv) The AIlianz trademark is … very well-known, especially with regard to insurance and financial affairs. In this field of business “security” is one of the core elements in the relationship between the company and the client. […] the Respondent could [not] have been unaware of the trademark when registering the disputed domain name. This conclusion is supported by the fact that the Respondent’s name refers to the German term “Allianz” without any other reference to Germany or the German language at all. Furthermore, [there are] numerous reports … that the Respondent intentionally tri[ed] to exploit the good name of the Complainant [in conducting an employment service for security guards].
The Respondent did not reply to the Complainant’s contentions.
The Panel notes that the Center discharged its obligations under the Rules as to notification. The courier company DHL reported that its deliveries of the documents to Domains by Proxy LLC and Stephen Baptiste were both delivered, accepted and signed for on November 5, 2012.
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a response as the Panel considers applicable (Rules, paragraph 14(b)).
The Panel notes that there are special facts in this case.
The Complainant identified that this Complaint is filed, following upon a previous complaint by the Complainant against the same Respondent. That complaint, was in regard to the registration and the use of the domain name <allianzsecuritypro.com>, see Allianz SE v. Stephen Baptiste/ Domains by Proxy, LLC, WIPO Case No. D2012-1368, which was recently determined in the Complainant’s favour.
The Complainant argues that the same Respondent as previously, Stephen Baptiste, uses the services of Domains by Proxy, LLC, which is listed as the owner of this disputed domain name, to hide his identity. The Panel notes that the Registrar has confirmed that Respondent Stephen Baptiste, is listed as the registrant and provided his contact details.
The Complainant points out that this present Complaint is against the same owner, using the same registrar and involves a similar domain name, <allianzsecurityprotection.com>, whereas previously the disputed domain name was <allianzsecuritypro.com>, that the domain name points to a website with the same content and involves a suspected similar fraud scheme. The Complainant requests that in accordance with its present arguments and the decision in its previous complaint that, “this Complaint can be granted at short notice”.
The Panel will therefore give particular weight to the decision of the panelist that dealt with the previous similar complaint in Allianz SE v. Stephen Baptiste/ Domains by Proxy, LLC, WIPO Case No. D2012-1368.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion.”
The panelist in Allianz SE v. Stephen Baptiste/ Domains by Proxy, LLC, WIPO Case No. D2012-1368 found that the domain name <allianzsecuritypro.com> was confusingly similar to the Complainant’s ALLIANZ trademark, as the addition of generic words, such as “security” and “pro”, were not enough to escape a finding of confusing similarity, especially as the domain name contained the word “security” that is related to the Complainant’s services.
In this case, the disputed domain name is not identical to any of the ALLIANZ trademarks. It consists of
the ALLIANZ mark together with the words “security”, “protection” and the suffix “.com.” The generic top-level domain (gTLD) “.com” is disregarded for this purpose of comparison, see Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
As the Complainant points out, the words “security” and “protection” are associated with the very nature of the Complainant’s business of insurance and investment management. The addition of these descriptive words does not negate, but increase the likelihood of confusion with the ALLIANZ trademark, see Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <dellaustralia.com> confusingly similar to DELL); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding <telstraaustralia.net> confusingly similar to TELSTRA).
It has been consistently held in numerous UDRP decisions that a domain name is identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”, see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Here, the overall impression created by the combination of words used in the disputed domain name is that it is a reference to the Complainant or to the Complainant’s ALLIANZ mark.
For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, in which the Complainant has rights and the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
“(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 Complainant’s trademark registration for ALLIANZ predates the Respondent’s registration of the disputed domain name and the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not generally known by the disputed domain name, has not acquired any trademark or service mark rights in ALLIANZ and has not been authorised or licensed to use the ALLIANZ mark by the Complainant.
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name, see WIPO Overview 2.0 at paragraph 2.1:
“[C]omplainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Although the Respondent was given the opportunity, it has not provided a response and there is no evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights of the Respondent to, or legitimate interests in the disputed domain name.
The Respondent has not provided any evidence that it is making use of the disputed domain name for a legitimate noncommercial purpose, without intent for commercial gain nor of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Such evidence as it is, suggests that on the contrary the Respondent is making use of the disputed domain name for a purpose that is antithetical to a bona fide offering of goods or services.
Hence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(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.”
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent has registered and has used the disputed domain name in bad faith and the consensus view has long been that the requirements are conjunctive. Thus, a complainant must prove both bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii) (see e.g. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011).
The Complainant bears the onus of proof in these matters. In this case, the Complainant submitted that:
“Following the registration of the disputed domain name on February 15, 2012, the Respondent starting using it as a site for offering - pro forma - services of a security company in New York. However, the structure and the content of the homepage of allianzsecuritypro.com and allianzsecurityprotection.com have shown that the main purpose of the site is to attract people seeking for work and for a job.”
The Complainant provided copies of the website for “www.allianzsecurityprotection.com” but they are blank. However, a “google” search by the Panel turned up numerous videos on YouTube provided by Allianz Security Protection with the following information:
http://www.AllianzSecurityProtection.com 212-977-2727 Contact Us. Allianz Security Protection Can Help You In Finding A Security Guard Job In NYC. Question is: Are You Serious About Working? If Yes, Call 212-977-2727 Today. Allianz Security Protection LLC
The Complainant submits that it is clear that the Respondent is using the disputed domain name to attract people seeking employment in the security industry as a guard. The Complainant provided information from its Special Investigation Unit of its US subsidiary, Allianz Life, which had been informed by a person who assumed that “people will associate Allianz Security with our Allianz Group” and provided copies of rip off-reports from the Internet site, “www.ripoffreport.com”, that “all people trusting in this promise [of getting work as a security guard] will be badly disappointed.” This information was confirmed by a press release from the New York County District Attorney’s Office, issued on October 10, 2012:
DISTRICT ATTORNEY VANCE ANNOUNCES INDICTMENT OF OPERATORS OF SHAM SECURITY GUARD TRAINING SCHOOL
Defendants Defrauded Job Seekers, Falsely Promising High Paying Jobs
Manhattan District Attorney Cyrus R. Vance, Jr., today announced the indictment of ROSEMOND BOTTEX, a/k/a “MR. COOK,” 37, and JERRY OWENS, a/k/a “MR. MADISON,” 48, for systematically defrauding job seekers of thousands of dollars by falsely promising their victims job placement as security guards. BOTTEX and OWENS are charged with Scheme to Defraud in the First Degree and Petit Larceny. BOTTEX is additionally charged with Grand Larceny in the Fourth Degree. A third, separately charged defendant, STEPHEN BAPTISTE, 29, was arraigned on October 11, 2012 in Manhattan Criminal Court on two counts of Scheme to Defraud in the First Degree.
“The false promise of a job is especially unacceptable in this economy,” said District Attorney Vance. “These defendants are charged with preying on individuals who were trying not only to improve their own lives, but to make homes and businesses safe for others.”
According to documents filed in court, since February 2012, BOTTEX and OWENS convinced multiple victims to pay up to approximately $1,340 each to Allianz Security Protection LLC (“Allianz”), a company they operated, in exchange for security guard training. The defendants are accused of fraudulently advertising that they were capable of training students and immediately placing graduates in lucrative security guard positions. Despite their advertisements, Allianz Security Protection is not and never has been authorized to provide security guard training by the New York State Division of Criminal Justice Services.
Whilst the guilt or innocence of the accused, including the Respondent, Stephen Baptiste, of these charges is yet to be determined, the Panel accepts this information as corroboration of the Complainant’s submission that the disputed domain name was both registered by the Respondent in bad faith and used by the Respondent in bad faith. The deliberate and misleading use of another person’s trademark for the purpose of diverting Internet traffic to their own website is evidence of bad faith. As was held by the panel in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, “it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name.”
The Panel finds that the use of the disputed domain name by the Respondent in this way, is a deliberate attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ALLIANZ mark. Internet users are likely to falsely believe that the website to which the disputed domain name resolves is sponsored, endorsed or authorised by the Complainant, particularly as it contains the words, security and protection. The Panel therefore finds that paragraph 4(b)(iv) of the Policy is made out and that the Complainant has satisfied the third requirement of paragraph 4(a) 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 <allianzsecurityprotection.com> be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Date: December 6, 2012