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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allianz SE v. De Makarapa, Allianz LLC

Case No. D2020-1906

1. The Parties

The Complainant is Allianz SE, Germany, internally represented.

The Respondent is De Makarapa, Allianz LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <allianzbills.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 July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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 the Complainant on August 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 7, 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 the Respondent of the Complaint, and the proceedings commenced on August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2020.

The Center appointed Antony Gold as the sole panelist in this matter on September 15, 2020. 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

The Complainant is a large, international insurance and financial services group. Its predecessor company was founded in 1890 in Berlin, Germany. The Complainant now has approximately 142,000 employees worldwide and about 92 million customers in over 70 countries. As at the end of 2018, it was managing funds with a value of approximately EUR 1,436 billion.

The Complainant trades as ALLIANZ and it has registered trade marks in many jurisdictions to protect its trading style. These include, by way of example only, International Trade Mark, Registration No. 447,004 dated September 12, 1979, in class 36. The Complainant also owns numerous domain names which comprise or incorporate its trade mark and which resolve to websites about its services, including <allianze.de> and <allianz.com>. The Complainant uses a distinctive blue logo, which comprises a simplified representation of an eagle positioned within a circle.

The disputed domain name was registered on July 17, 2020. It resolves to a website, the home page of which is headed “About Allianz Bills ® SSD Chemical Solution and Counterfeit Bills”. Beneath that is a claim that: “We clean black money with SSD Chemical solution Successfully Since 2009 including sale of counterfeit”. Underneath that is narrative about the equipment and products which the Complainant claims to be using in the course of its business. The logo of the Complainant, as described above, is positioned to the left of the menu bar.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to its portfolio of registered trade marks for ALLIANZ, full details of one of these marks having been set out above, as evidence of its rights in ALLIANZ. Internet users will recognize the Complainant’s ALLIANZ trade mark in the disputed domain name and expect to reach a website belonging to the Complainant or one of its subsidiaries. The use of the Complainant’s trade mark coupled with the word “bills” for money services implies that the Respondent belongs to the Complainant’s group of companies and deludes potential customers into thinking that it is.

The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant holds no trade mark registrations for the word “allianz” and has never received any form of authorization or consent from the Complainant to make use of its mark. The Complainant is not using the disputed domain name in connection with a bona fide offering of goods and services. It is obvious that the Respondent is exploiting the fact that Internet users visiting the Respondent’s website are hoping to access a website or communicate with someone within the Complainant’s group of companies. The Respondent is trading on, and taking unfair advantage of, the fame of the Complainant’s ALLIANZ trade mark, which is connected in public perception with insurance and financial services. Moreover, the Respondent is not commonly known by the disputed domain name, nor is it making a legitimate, non commercial or fair use of the disputed domain name.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to persuade Internet users to reveal private information and data by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The Complainant’s ALLIANZ trade mark is very well-known in many countries, especially with regard to insurance and financial affairs. It cannot reasonably be argued that the Respondent was unaware of the Complainant’s mark when registering the disputed domain name. It is most unlikely that the Respondent just happened to unintentionally select the Complainant’s distinctive trade mark. It clearly sought to register the disputed domain name because of its association with the Complainant and hoped, for fraudulent purposes, to capitalize on the Complainant’s reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

The information provided by the Complainant in relation to its trade mark registrations has established its rights in its ALLIANZ trade mark.

For the purpose of determining whether the disputed domain name is identical or confusingly similar to its mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration.

The disputed domain name comprises the Complainant’s ALLIANZ trade mark in full, coupled with the word “bills”. The addition of this dictionary term does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “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.”

The disputed domain name includes the Complainant’s ALLIANZ mark in its entirety and is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The Respondent’s website purports to describe a business which is not identical to the core services provided by the Complainant. However, the provision of services seemingly connected with the physical cleaning of money is an activity which might conceivably be provided by a company within the Complainant’s group of companies. Moreover, the use of the Complainant’s ALLIANZ trade mark, as well as its distinctive logo, unequivocally and misleadingly suggests to Internet users that the Respondent is part of the Complainant’s group of companies. Such misuse of the Complainant’s mark and reputation does not comprise a bona fide offering of goods and services.

There are a number of indications that the Respondent has not, in fact, established any form of business at the website to which the disputed domain name resolves and that it is no more than a placeholder, intended to make it more difficult for the Complainant to recover the disputed domain name. In particular, the wording of the Respondent’s web pages, which purport to describe its apparent activities, borders on the incomprehensible. For example, it is not possible to discern what is meant by: “We clean black money with SSD Chemical solution Successfully Since 2009 including sale of counterfeit.” Likewise, what could be meant by: “We pay attention to each extends and finishes it with flawlessness?” There are many similar examples and it is inherently implausible that a bona fide operation, engaged in money laundering, in a literal and lawful sense, would promote its services in such a flawed manner.

The second and third circumstances set out at paragraph 4(c) of the Policy are also inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character. Furthermore, as explained at section 2.5.1 of the WIPO Overview 3.0 in the specific context of fair use, but of wider application “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”

The Complainant has therefore made out a prima facie case under the second element and the burden of production shifts to the Respondent. In view of the failure of the Respondent to provide a response to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Dealing first, with bad faith registration, the use to which the Respondent has put the disputed domain name since on, or very shortly after, the date of registration, in particular its use of the Complainant’s trade mark and logo in connection with services which are capable of being associated with the Complainant’s group of companies, points to an awareness by the Respondent of the Complainant as at the date of registration of the disputed domain name. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. See also section 3.1.4 of the WIPO Overview 3.0; “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”. The Panel accordingly finds the registration of the disputed domain name to have been in bad faith.

Turning to bad faith use, 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The use to which the Respondent has put the disputed domain name falls within these circumstances in that the Respondent’s website, despite its many imperfections, is likely to lead many Internet users to believe that it is operated by, or with the authorization of, the Complainant. The belief of Internet users that they had found the Complainant’s website, or a website associated with it, will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s ALLIANZ trade mark.

Whilst the Respondent is evidently hoping to profit unfairly in some way from its registration of the disputed domain name and the creation of a website which purports to be offering services of a type which might be offered by a company within the Complainant’s group of companies, it is not necessary for the Panel to ascribe a precise motive to it nor to determine whether the Respondent is providing any actual services. As explained at section 3.1.1 of the WIPO Overview 3.0; “If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent”.

The circumstances point clearly to bad faith intent on the part of the Respondent and the Panel therefore finds that the disputed domain name was both registered and is being used in bad faith.

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 <allianzbills.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: September 25, 2020

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