WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VHV Allgemeine Versicherung AG v. LLC Gname

Case No. D2021-2291

1. The Parties

The Complainant is VHV Allgemeine Versicherung AG, Germany, represented by JBB Rechtsanwaelte, Germany.

The Respondent is LLC Gname, Singapore.

2. The Domain Name and Registrar

The disputed domain name <vhv-versicherungen.com> (the “Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 20, 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

The Complainant is a German publicly traded stock corporation formed in February 2006 and headquartered in Hannover, Germany. It is part of the VHV insurance group, a subsidiary of VHV Vereinigte Hannoversche Versicherung A.G., which has been selling insurance in Germany since 1919. The VHV Group started using the initials “VHV” in its company names in 2000 and operates a group website at “www.vhv.de”.

The record shows that the Complainant and other group members hold and license to one another “VHV” formative registered trademarks including the following:

The Registrar reports that the Respondent “LLC Gname”, listing only a postal code in Singapore, registered the Domain Name on March 14, 2021, using an email address in the <aol.com> domain.

The Complaint attaches an undated screenshot in Chinese that was formerly associated with the Domain Name, stating only that the Domain Name was “formerly up for sale”. The Panel notes that the Internet Archive’s Wayback Machine has several archived screenshots showing that the Domain Name has resolved at times since that date to a website with articles in Chinese evidently copied from published news stories on a variety of subjects not concerning the Complainant or the insurance industry, such as a specialty tea shop in Beijing and a technology company traded on the Shenzhen Stock Exchange.

At the time of this Decision, the Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its various VHV trademarks, particularly the VHV VERSICHERUNGEN combined mark prominently displayed in its advertising and at the top of every page of the Complainant’s website. The Domain Name differs only in adding a hyphen and lacking the trademark’s design elements. (The Panel notes that “Versicherungen” is the German plural for “insurance”, referring in the Complainant’s case to its multiple lines of insurance on offer.) The Complainant contends that the Respondent has no permission to use the Complainant’s VHV marks and no evident rights or legitimate interests in the Domain Name.

The Complainant argues for a finding of bad faith:

“The Respondent uses the domain names [sic] intentionally and misleadingly to block the domain, divert consumers and therefore to tarnish the trademarks at issue. Before contacting the Registrar the domain was up for sale and posed a threat to the legitimate interests of the Complainant, because of the confusing similarity to the Complainant’s trademarks. There is a strong possibility of fraudulent activities on the domain as soon as the Respondent decides to use the domain in that way or to sell it to someone with bad intentions.”

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

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

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant and its affiliates hold numerous registrations for VHV and VHV formative trademarks, including the combined mark VHV VERSICHERUNGEN. The Domain Name is confusingly similar to the VHV marks, incorporating these initials and adding dictionary words, and particularly to the VHV VERSICHERUNGEN mark, adding only a hyphen and design elements. The addition of dictionary words or design elements does not prevent a finding of confusing similarity. See WIPO Overview 3.0, sections 1.8, 1.10. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.

Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered VHV trademarks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant denies giving the Respondent permission to use its marks. The Respondent has used the Domain Name only to advertise the Domain Name for sale and to republish business articles in Chinese on topics unrelated to the Complainant or insurance. Hence, the Respondent’s use of the Domain Name does not reveal any likely grounds for claiming rights or interests based on a corresponding name, bona fide commercial offerings, or relevant noncommercial or fair use, and the Respondent has not come forward in this proceeding to such rights or legitimate interests.

The Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(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.”

The Complainant does not cite these Policy examples but uses language suggestive of them. They are not clearly apposite, because there is no evidence in the record of attempts to sell the Domain Name for a particular sum, nor is there any indication that the Respondent has engaged in a pattern of preventing trademark owners from reflecting their marks in corresponding domain names, nor is there any indication that the Respondent is a competitor. Further, it is not clear that the Respondent’s use of the Domain Name to date has actually directed Internet users to other websites for commercial gain.

The examples of bad faith furnished in the Policy are expressly not exhaustive, however, and the Respondent has already used the Domain Name, closely imitating a distinctive and well-established German insurance mark, to misdirect Internet users to a Chinese website with content unrelated to any generic or dictionary sense of the Domain Name. There is no plausible legitimate reason for doing this, and there is clearly the potential for trademark abuse through user confusion and fraudulent employment of the Domain Name (such as fake websites and email phishing scams). The inference of bad faith is reasonable and is supported in this case by the Respondent’s failure to reply to complete and accurate registration contact details and to reply to correspondence from the Complainant and the Center or to submit a Response in this proceeding.

The Panel finds that the inference of bad faith in the registration and use of the Domain Name is warranted on these facts and concludes that the Complainant has established the third element of the Complaint.

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 Domain Name, <vhv-versicherungen.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: September 2, 2021