Complainant is ERGO Versicherungsgruppe AG of Dusseldorf, Germany, represented by Studio Legale De Simone & Partners, Italy.
Respondent is Bartolomeo Grimaldi of Avellino, Italy.
The disputed domain name <ergoinsurance.org> is registered with Tucows Inc.(the “Registrar’’).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2011. On March 30, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2011.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on May 13, 2011. 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.
Complainant is a financial and insurance company incorporated in Germany; according to the Complaint Complainant has representations in more than thirty countries in Europe and Asia. Complainant has, from at least 2003 registered a European trade and service mark for ERGO INSURANCE GROUP in connection with classes 35 and 36 (insurance), evidence of which is attached to the Complaint. The Complaint also asserts that Complainant is the holder of other trademarks incorporating ERGO, as well as numerous domain names incorporated the term “ergo”.
The Respondent is an individual apparently residing in Italy.
The disputed domain name was registered in May 2010.
Complainant asserts that the disputed domain name is confusingly similar to its trade and service marks, as it contains the entirety of the term “ergo”, and that this confusion is not palliated by the addition of the descriptive word “insurance” or the suffix “org.”
Complainant further states that it has never authorized, licensed nor permitted the use of its marks by Respondent, who is not known by the name “Ergo”, and that a search of trademark registers in numerous countries reveals no registered rights of Respondent in the term “ergo”. Further, the disputed domain name has been used by Respondent to attract consumers to his own insurance services. Complainant adds that it has filed a criminal complaint against Respondent in Italy due to his fraudulent use of Complainant’s mark, and that it is clear that Respondent has used the disputed domain name to pass himself off as an affiliated company of the Complainant. Complainant thereupon alleges that Respondent cannot assert legitimate use within the meaning of paragraph 4(c)(iii) of the Policy.
Complainant asserts that the above facts also demonstrate bad faith use and registration of the disputed domain name, as it is clear that Respondent registered and maintained the disputed domain name in order misleadingly to target Complainant’s customers for commercial gain. Respondent’s failure to respond to the March 18, 2011 Italian-language email communication demand by Complainant’s lawyers to transfer the disputed domain name is cited as further evidence of Respondent’s mala fides.
Complainant asks that the disputed domain name be transferred to it.
Respondent did not reply to Complainant’s contentions.
The dispute domain name contains the trademarked term ERGO, together with the word “insurance”, which is also part of Complainant’s company name (‘’versicherung”, is German for “insurance”) and business. Thus the combination of the two heightens confusion and similarity with Complainant’s mark and business. The first element of paragraph 4(a) of the Policy is met by the Complaint.
Respondent appears not to be known by the term “ergo” and Complainant has submitted clear declarations that it has never accorded Respondent any rights in its name or mark. In the circumstances, and in the absence of any reply or explanation from Respondent, the Panel finds that the Complainant has met its burden under the second element of paragraph 4(a) of the Policy.
The registration and subsequent use of the disputed domain name incorporating both the trademarked term ERGO and the word “insurance” is not here compatible with good faith, and there is no evidence or indicia in the case record that it would indicate a good faith purpose on the part of Respondent in undertaking such registration and use in 2010. In particular, and given that Respondent appears to have been operating in the insurance business, the Panel accepts the Complainant’s allegation that it is not conceivable that Respondent registered the disputed domain name without prior knowledge of Complainant’s rights in the same. Although the disputed domain name is apparently presently dormant, Complainant has submitted evidence of its prior use by Respondent for insurance business purposes and convincingly alleged that this can only have been done with the purpose of deviating potential customers of Complainant to the disputed domain name site for Respondent’s commercial gain.
Accordingly the Panel finds both bad faith registration and use with the meaning of 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 domain name <ergoinsurance.org> be transferred to Complainant.
Nicolas Ulmer
Sole Panelist
Dated: May 16, 2011