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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zurich Insurance Company v. Domains For Sale

Case No. D2001-1423

 

1. The Parties

Complainant is Zurich Insurance Company, a corporation organised and existing under the laws of Switzerland, and represented by Harbottle & Lewis, London, UK.

Respondent is Domains For Sale, London, UK.

 

2. The Domain Name and Registrar

The domain names at issue are <zurichs.com>, <zurichs.net> and <zurichs.org>.

The registrar is Enom.

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 5, 2001, and subsequently in hard copy on December 7, 2001. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on December 11, 2001.

On December 12, 2001, a Request for Registrar Verification was transmitted to the Registrar. On December 13, 2001, the Registrar confirmed that they were in receipt of the Complaint sent to them by the Complainant and that the domain names <zurichs.com>, <zurichs.net> and <zurichs.org> were registered with them and were on "LOCK" status. The Registrar forwarded at the same time the requested WHOIS details.

A Formal Requirements Compliance Checklist was completed by the WIPO Center on December 17, 2001.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Supplemental Rules"), in effect as of December 1, 1999.

The Complainant paid on time and in the required amount the fees for a single-member Panel.

On December 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of January 6, 2001, by which the Respondent could file a Response to the Complaint.

A Response was received by the WIPO Center on January 4, 2002, with hard copies following on January 11, 2002. Some deficiencies were discovered by the WIPO Center and they were later rectified by the Respondent.

On January 28, 2002, the WIPO Center invited Knud Wallberg to serve as a Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on February 4, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was February 18, 2002.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.

The Administrative Panel has issued its Decision based on the Complaint, the Response, the Policy, the Rules, and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainantґs activities

The Complainant is a member of the Zurich Financial Services Group ("Zurich") which is one of the world’s leading financial services organisations providing services for around 35 million customers around the world.

The roots of Zurich stretch back to the 19th century with the founding of the Zurich Insurance Company in 1872 in Zurich as a reinsurance business under the name "Versicherungs-Verein" (Insurance Association). By 1877, Zurich was already providing financial services to customers outside Switzerland. Zurich expanded its business first into France followed by most of the rest of mainland Europe by the end of the 19th Century. In 1894 Zurich changed its name to "Zurich Allgemeine Unfall- & Haftpflicht-Versicherungs-Aktiengesellschaft" (Zurich General Accident and Liability Insurance Limited). By 1912 Zurich had begun business in the US and by 1923 was also active in the UK and Canada.

After a period of organic growth and some acquisitions prior to the mid-1950s, Zurich began extensive expansion between 1955 and 1976. In 1955, the Zurich Allgemeine Unfall- & Haftpflicht-Versicherungs-Aktiengesellschaft was renamed Zurich Versicherungs-Gesellschaft (Zurich Insurance Company).

In 1996 and 1997, Zurich made further acquisitions in the insurance market in the US. In 1998, Zurich and the financial services businesses of UK based B.A.T Industries combined their activities in the insurance and financial services sectors to become the Zurich Financial Services Group headed by two top holding companies, Allied Zurich p.l.c listed on LSE, and Zurich Allied A.G., listed on (SWX).

Today, Zurich carries out financial activities in more than 60 countries and has in the region of 70,000 employees worldwide. The Group has a total business volume of US$50 billion and as at 31 December 2000, had a normalised net income of over US$2 billion and over US$440 billion of assets under management.

Zurich’s five business segments are non-life insurance (including property, accident, car and liability insurance), life insurance, reinsurance, farmers’ management services and asset management. In March 2001, Zurich and the Bank of Scotland announced plans for a major joint venture to provide banking services and loan products to the Group’s 4.5 million UK retail customers. The joint venture, which will become operational in the near future, will offer bank accounts, personal loans, mortgages and credit cards under the ZURICH name.

In February 2001, Zurich launched its financial services portal accessed at <www.zurich.ch/financepoint>. This provides Zurich’s customers with online banking and insurance products together with share portfolio valuations and market news. The web site currently has about 35,000 customers and, on average, receives 3500 hits per day.

The Complainant is the owner of all worldwide trade mark applications and registrations which include the word ZURICH, attributable to the Zurich Financial Services Group of Companies. The Complainant is the owner of hundreds of trade mark applications and/or registrations around the world for marks incorporating the ZURICH name and, in particular, is owner of nearly 100 applications and registrations incorporating the ZURICH name which cover, amongst other Countries, the United Kingdom.

Zurich’s reputation has extended beyond financial services through its sponsorship of the English Rugby Union Clubs’ Premiership and Championship. Zurich has spent in the region of Ј12 million plus VAT on the sponsorship arrangements and during the initial three year sponsorship period will spend in the region of a further Ј12 million on exploitation and promotion of the sponsorship agreement.

Attached to the Complaint was a print out of all trade mark applications and registrations which include the word ZURICH in the name of the Complainant and which cover the United Kingdom. These include registered European Community trade marks for the word ZURICH alone and European Community and International (Madrid Protocol) applications for the words ZURICH BANK.

In addition to <zurich.com> the Complainant is also registrant of nearly 200 domain names which incorporate the ZURICH mark. Attached to the Complaint was a schedule of these domain names.

The Respondent’s Activities

Respondent informed the Panel that he is engaged in the business of "Front Page" design but has also been registering and selling domain names, which also the name of the Respondent clearly indicates.

The contested domain names were registered by Respondent on May 2, 2001.

 

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint.

The Complainant first became aware of the Respondent on May 6, 2001, when the Respondent sent an email to a Senior IT Security Specialist at Zurich in the UK who works in a part of the organisation that is responsible for, inter alia, IT Security Policy including the administration of Internet Security Policy. It is likely that the Respondent contacted her because her name, email and postal details appear as the Administrative Contact on various Zurich domain name registrations. A copy of this email was attached. In his email, Respondent indicated that he was a domain name broker and was owner of the domain names <zurichs.com>, <zurichs.net> and <zurichs.org>. He indicated that a third party had made a "satisfactory" offer for the domain names and wanted to give Zurich Group the opportunity to make an offer for the domain names before making a decision on sale. Respondent also indicated that if an offer for the domain names was not made within 7 days, the domain names would be sold elsewhere. Furthermore, Respondent indicated that various other domain names which he had registered had received bids from third parties for thousands of dollars. The offer for sale was made 4 days after registration of the domain names and, as at the date of filing the Complaint, the domain names have not, in fact, been sold to a third party but are still registered in the name of the Respondent.

Similarity with Complainant’s rights

The domain names <zurichs.com>, <zurichs.net> and <zurichs.org> contain words identical to the Complainant’s trade mark ZURICH with no relevant distinguishing matter, merely the addition of the letter "s". The Complainant and the entire Zurich Financial Services Group have established a reputation throughout the financial services and banking industries, in the ZURICH name and, furthermore, the Complainant has trade mark registrations for the ZURICH name in the European Union. The domain names are therefore confusingly similar to the trade mark ZURICH in which the Complainant has registered and unregistered/common law trade mark rights. Accordingly, the provisions of paragraph 4(a)(i) of the Policy are satisfied.

Legitimate Use/Rights

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names pursuant to the Policy paragraph 4(a)(ii) as evidenced by the following facts:

The Respondent has no relationship with or permission from the Complainant for the use of the mark ZURICH or ZURICHS nor has the Complainant consented to the Respondent’s application for registration of, or use of, any domain name incorporating that mark;

The domain names were registered by the Respondent on May 2, 2001. At this time the Complainant and its group of companies had a very considerable reputation in the ZURICH name in the UK and elsewhere. At that time the Complainant had both UK and overseas registered trade mark rights in the ZURICH name and had common law trade mark rights in the name which it had been accruing since 1884;

As far as the Complainant is aware there is no evidence of the Respondent’s use of or demonstrable preparations to use the domain names in connection with a bona fide activity. In particular, the domain names were offered for sale only four days after their registration, suggesting that the only reason for their registration by the Respondent was to offer them for sale to the Complainant. As at the date of filing the Complaint, the domain names did not access an active web site. The Complainant also contends that any commercial activity under the ZURICHS name without licence or authority from the Complainant is not bona fide due to the strength of its common law and registered trade mark rights;

As far as the Complainant is aware the Respondent is not commonly known by the domain names and submits that this is highly unlikely bearing in mind the substantial goodwill established by the Complainant in the trade mark to date and its policing of the ZURICH mark;

The Complainant is not aware that the Respondent is making a legitimate non-commercial or fair use of the domain names without intent for commercial gain and the Complainant submits that any use of the domain names by the Respondent is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainant’s well known registered trade mark. Furthermore, as set out above, the Complainant submits that the Respondent is merely attempting to sell the domain names to the Complainant or alternatively a third party for a sum in excess of registration costs.

Bad Faith

The Complainant contends that the Respondent has registered and is using the domain names in bad faith in violation of the Policy at paragraph 4(a)(iii) on the following grounds:

At the time of the registration of the domain names by the Respondent the mark ZURICH was well known both in the UK and overseas. The Complainant had created substantial goodwill in the mark since Zurich Insurance Company was formed in 1872 and had trade mark rights which were first registered in Switzerland in 1994;

It is beyond reasonable belief that the Respondent registered the domain names without the Complainant or the Zurich Group in mind, in particular, due to the fact that the Respondent offered the domain names for sale to the Complainant only four days after their registration;

From the evidence, the Complainant has reason to believe that the domain names were registered in order to hold the Complainant to ransom by forcing them to buy the domain names at a price. As mentioned above, Respondent clearly implied that he would sell for a sum in excess of registration costs, in his email of May 6, 2001, and gave various examples of his domain names allegedly receiving bids of many thousands of dollars.

B. Respondent

In the response, Respondent basically rebuts all the allegations made by Complainant.

First, the Respondent is of the opinion that the domain names are not confusingly similar to Complainants trademark rights. Complainant was not engaged in banking activities at the time, when the domain names were registered and he further questions whether the Complainant actually has rights in the name ZURICH, since it is the name of a city in Switzerland.

Second, he did not register and use the domain names in bad faith. His intention was to use the domain names to build an Internet Portal. He did not try to sell the domain names to Complainant for an excessive price but only asked them to make him an offer.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainants mark ZURICH is registered and has been used in numerous countries around the world including the UK. The fact that Zurich is the name of a city in Switzerland does not preclude it from being used and registered as a trademark. In addition the mark must be considered to be a well-known mark for financial services in particular but not limited to insurance services.

The domain names <zurichs.com>, <zurichs.net> and <zurichs.org> contain the word ZURICH in full with the addition of an "s" and the gTLD suffix. Both from a visual and phonetic point of view the domain names must be considered to be confusingly similar to the trademark ZURICH in which the Complainant has rights. See WIPO case D2001-0060 <ggoogle.com> and several other decisions under the Policy.

The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

Legitimate Interest

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.

Further, the Respondent has not demonstrated that he has any prior rights in the domain names, or that he had conducted business or made some other kind of bona fide use of the names before the commencement of these proceedings.

Respondent states that the domain names were intended to be used as part of some kind of portal services but these claims were not substantiated in way of a concrete business plan or examples of his engagement in other directories of the same nature. Seen in the light of Respondent’s offering to sell the domain names to the Complainant (see below) the Panel dismisses this information as unlikely.

The prerequisites of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.

Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.

Based on the information provided, ZURICH must be considered to be a well-known mark also in the country of residence of the Respondent, the UK.

It is uncontested that Respondent himself contacted Complainant and offered to sell the contested domain names. Although no specific price was mentioned, the very wording of the e-mail clearly indicated that the price should be considerably higher than the out-of-pocket costs directly related to the registrations. The Panel notes that Respondent contacted Complainant shortly after the domain names were registered, which makes Respondent’s claim that he had the intention of using the domain names himself quite unlikely. The actions of Respondent is clearly within the scope of the Policy, cf. Art 4(b)(i) of the Policy.

The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

7. Decision

In view of the above circumstances and facts the Panel finds that the domain names registered by the Respondent are confusingly similar to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain names, and that the domain names have been registered and are being used in bad faith.

Consequently the Panel decides that the domain names <zurichs.com>, <zurichs.net> and <zurichs.org> should be transferred to the Complainant.

 


 

Knud Wallberg
Sole Panelist

Dated: February 18, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1423.html

 

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