Case No. D2006-1361 The Parties




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION



Zurich Insurance Company and Zurich Insurance Company (UK Branch) v. First Zurich

Case No. D2006-1361



1. The Parties

The Complainants are Zurich Insurance Company, Zurich of Switzerland and Zurich Insurance Company (UK Branch), London, United Kingdom of Great Britain and Northern Ireland.


The Respondent is First Zurich, Zurich, Switzerland.


2. The Domain Name and Registrar

The disputed domain name is registered with Network Solutions, LLC.




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2006 electronically and on October 23, 2006 in hardcopy. The Complaint was first filed with regard to the domain names and . The domain name was registered in the name of INNOVATIVE WEB IDEAS of New Delhi, India.


On October 24, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name and by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name . On October 24, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name and providing contact details for the administrative and technical contact. On October 25, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative and technical contact.
On the Center’s request Network Solutions, LLC confirmed that the domain name remains in registrar lock status, and will remain as is, until the UDRP proceedings are concluded in accordance with ICANN’s Expired Domain Deletion Policy, paragraph 3.7.5.7.
On the Center’s request dated November 1, 2006, the Complainant amended its Complaint with regard to the denomination of the Respondent.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2006.
On November 10, 2006, the listed Registrant of the domain name filed a Response with the Center stating that the domain name was registered for a client and that the registration was made in the name of INNOVATIVE WEB IDEAS due to a mistake. INNOVATIVE WEB IDEAS offered to transfer the domain name to the Complainant.
On November 30, 2006, Complainants’ representative filed a request for suspension of the proceedings in order to execute the transfer of the domain name. The Center suspended the proceedings until December 31, 2006.
On December 28, 2006, Complainants’ representative requested to continue the proceedings because the domain name was not transferred to the Complainants before the agreed deadline.
On January 3, 2007, Complainants’ representative filed a second request for suspension of the proceedings. The Center suspended the proceedings until February 2, 2007.
On January 29, 2007, the Complainants’ representative requested to continue the proceedings in respect of the domain name and the withdrawal of the proceedings with respect to the domain name .
On February 6, 2007, the Center confirmed the re-institution of the proceedings with regard to the domain name . In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2007.
The Center appointed Torsten Bettinger as the sole panelist in this matter on March 16, 2007. 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 Complainants are members of the Zurich Financial Services Group (“Zurich”) which is one of the world’s leading insurance based financial services organisations providing services for about 35 million customers around the world, carrying out financial activities in more than 120 countries and employing about 55,000 employees worldwide.


The Complainants are owners of a huge number of trademark applications and registrations which include the word ZURICH, attributable to the Zurich Financial Services Group of Companies, inter alia Swiss trademark registration No. 429078 ZURICH registered on December 5, 1994, for services in class 36 and Community trademarks No. 82867 ZÜRICH and No. 82834 ZURICH registered for goods and services in classes 16, 35 and 36 on May 21, 1999, and June 1, 1999 respectively.
The Complainants are also the owners of nearly 1500 domain names which incorporate the ZURICH mark.
Respondent is using the domain name for a website offering financial planning and investment management services.


5. Parties’ Contentions




A. Complainants

Complainants assert that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.


In reference to the element in paragraph 4(a)(i) of the Policy, Complainants argue that:
- the domain name contains words identical to the Complainants’ trade mark ZURICH and that the mere addition of the non-distinctive word “first” does not eliminate the similarity between the disputed domain name and Complainants’ registered and unregistered/common law trademark rights in the mark “ZURICH”
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainants contend that:
- Respondent has no relationship with the Complainants or permission from the Complainants to use of the mark ZURICH or FIRST ZURICH and that Complainants have not consented to the Respondent’s application for registration of, or use of, any domain name incorporating that mark;

- Respondent’s use of the domain name in connection with financial services without licence or authority from the Complainants is infringing Complainants’ common law and registered trademark rights; and therefore not a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.

- the Respondent does not make a legitimate, non-commercial or fair use of the domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainants contend that:
- it is beyond reasonable doubt that the Respondent registered the domain name with the Complainants or the Zurich Group in mind, in particular as the Respondent purport to be operating in the same field of activity as the Complainants and companies within the Zurich Group, namely the provision of financial services;

- the domain name was used in bad faith as any use of the domain name by the Respondent is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainants’ well known registered trade mark;

- the domain name was registered to take unfair advantage of the Complainants registered and unregistered / common law trademark rights and the goodwill which it has been developing in the ZURICH name over many years;

- Respondent has taken active steps to conceal its true identity and location as the WHOIS information referred to above is confusing and misleading, as the address quoted for the Registrant is not the same as the address shown on the website and the Swiss address provided on the website is false and the fax number is invalid;

- Respondent is acting in bad faith as it is purporting to provide financial services and advice without appropriate regulation by the relevant financial regulatory bodies of the various jurisdictions in which they are operating.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.




6. Discussion and Findings




A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).


The disputed domain name wholly incorporates Complainants’ famous trademark ZURICH, used in connection with financial services. The fact that the word “first” is added to Complainants’ trademark does not eliminate the similarity between Complainants’ trademark and the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the ZURICH marks in which Complainants have rights and that Complainants have established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the complainant to prove that the respondent has no right or legitimate interest in the disputed domain name. However, there is a consensus view among Panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.


The domain name fully includes the Complainants’ famous trademark ZURICH. The Complainants showed that the Respondent has neither a license nor any other permission to use the trademark ZURICH in which the Complainants have rights and that therefore by using the domain name at issue Respondent is infringing Complainants’ trademark rights in the word “Zurich”. The Panel thus finds that the Complainants have made a prima facie showing that Respondent has no rights or legitimate interests in the domain name .
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Panel therefore accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that the Respondent registered and has been using the domain name in bad faith.


Complainants’ ZURICH marks are known world wide in connection with financial services. It is therefore inconceivable that the Respondent registered the domain name unaware of the Complainants’ rights in its famous ZURICH marks.
The Respondent registered a domain name which is except for the descriptive term “first” identical to Complainants’ trademark. This creates confusion between the domain name and the mark in issue and it is this confusion on which Respondent relies to attract visitors to its sites. The Complainants have provided evidence that concerned members of the public have contacted the Complainants to establish whether they are connected to the Respondent in any way.
On this record, it is therefore clear that the Respondent has intentionally attempted to attract Internet users “for commercial gain to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website” and that the domain name was registered to take unfair advantage of the Complainants’ registered and unregistered / common law trademark rights and the goodwill which it has been developing in the ZURICH name over many years.
Moreover, Respondent’s default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith and had good faith bases for using the domain name, it should have asserted them.
Accordingly, the Panel concludes that Respondent registered and used the domain name in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.


7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainants.



                                            

Torsten Bettinger



Sole Panelist
Dated: April 16, 2007

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