Generic Top Level Domain Name (gTLD) Decisions

Complainant is Zurich American Insurance Company, Baltimore, Maryland, USA ("Complainant") represented by Stephen C. Lee, of Fish & Richardson P.C., P.A. Respondent is Peter J. Schlumpf d/b/a PJS Consulting, Zug, Switzerland ("Respondent").

The domain names at issue are <yourzurich.com>, <zurichdirectinsurance.com>, <zurichcentrere.com>, <zurich-centrere.com>, <zurichdirectline.com>, <zurichdiversified.com>, <zurichdirectbank.com>, <zurichdot.com>, <zurichempire.com>, <zurichdirectinvestments.com>, <zurichfarmers.com>, <zurichfidelity.com>, <zurichdiversifiedproducts.com>, <zurichglobalsolutions.com>, <zurichguarantee.com>, <zurichenterprise.com>, <zurichhelpdesk.com>, <zurichhelpline.com>, <zurichglobalassetmanagement.com>, <zurichspecialties.com>, <zurichlegal.com>, <zurichinstitutional.com>, <zurichhelp.com>, <zurichpersonalfinance.com>, <zurichmarine.com>, <zurichhelppoint.com>, <zurichbusinesspartners.com>, <zurichriskmanagement.com>, <zurichinvestmentsolutions.com>, <zurichstrategicrisksolutions.com>, <zurichsupport.com>, <zurichmedical.com>, <zurichuniversal.com>, <zurichsupportline.com>, <zurichassetmanagement.com>, <zurichwarranties.com>, and <zurichwarranty.com> registered with Register.com, Inc.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 24, 2001; the Forum received a hard copy of the Complaint on May 25, 2001.

On May 25, 2001, Register.com, Inc. confirmed by e-mail to the Forum that the domain names <yourzurich.com>, <zurichdirectinsurance.com>, <zurichcentrere.com>, <zurich-centrere.com>, <zurichdirectline.com>, <zurichdiversified.com>, <zurichdirectbank.com>, <zurichdot.com>, <zurichempire.com>, <zurichdirectinvestments.com>, <zurichfarmers.com>, <zurichfidelity.com>, <zurichdiversifiedproducts.com>, <zurichglobalsolutions.com>, <zurichguarantee.com>, <zurichenterprise.com>, <zurichhelpdesk.com>, <zurichhelpline.com>, <zurichglobalassetmanagement.com>, <zurichspecialties.com>, <zurichlegal.com>, <zurichinstitutional.com>, <zurichhelp.com>, <zurichpersonalfinance.com>, <zurichmarine.com>, <zurichhelppoint.com>, <zurichbusinesspartners.com>, <zurichriskmanagement.com>, <zurichinvestmentsolutions.com>, <zurichstrategicrisksolutions.com>, <zurichsupport.com>, <zurichmedical.com>, <zurichuniversal.com>, <zurichsupportline.com>, <zurichassetmanagement.com>, <zurichwarranties.com>, and <zurichwarranty.com> are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@yourzurich.com, postmaster@zurichdirectinsurance.com, postmaster@zurichcentrere.com, postmaster@zurich-centrere.com, postmaster@zurichdirectline.com, postmaster@zurichdiversified.com, postmaster@zurichdirectbank.com, postmaster@zurichdot.com, postmaster@zurichempire.com, postmaster@zurichdirectinvestments.com, postmaster@zurichfarmers.com, postmaster@zurichfidelity.com, postmaster@zurichdiversifiedproducts.com, postmaster@zurichglobalsolutions.com, postmaster@zurichguarantee.com, postmaster@zurichenterprise.com, postmaster@zurichhelpdesk.com, postmaster@zurichhelpline.com, postmaster@zurichglobalassetmanagement.com, postmaster@zurichspecialties.com, postmaster@zurichlegal.com, postmaster@zurichinstitutional.com, postmaster@zurichhelp.com, postmaster@zurichpersonalfinance.com, postmaster@zurichmarine.com, postmaster@zurichhelppoint.com, postmaster@zurichbusinesspartners.com, postmaster@zurichriskmanagement.com, postmaster@zurichinvestmentsolutions.com, postmaster@zurichstrategicrisksolutions.com, postmaster@zurichsupport.com, postmaster@zurichmedical.com, postmaster@zurichuniversal.com, postmaster@zurichsupportline.com, postmaster@zurichassetmanagement.com, postmaster@zurichwarranties.com, and postmaster@zurichwarranty.com.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The disputed domain names are confusingly similar to Complainant’s registered marks.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

No response was received.

Complainant, Zurich American Insurance Company, along with its related Zurich entities, is a global provider of a variety of insurance and financial services such as investment services, fund management services, asset management services, risk management services, and insurance and re-insurance services. Complainant and its related companies have offices in over 60 countries reaching over 35 million customers and employing 73,000 people.

Complainant and its related companies are the owners of a vast number of trademarks and service marks worldwide, including the United States and Switzerland. Furthermore, Complainant’s ZURICH mark has achieved a high degree of fame for its related insurance services.

Among others, Complainant and its related companies are also the registrants of the following domain names: <zurich.com>; <zfsgroup.com>; <zurichgroup.com>; <zurichdirect.com>; <zurichcapital.com>; and <zurichinsurance.com>.

Respondent, a former employee of Complainant for twenty-one (21) years, registered the disputed domain names during the month of November, 2000. Respondent is passively holding the disputed domain names, as well as offering some of the domain names for sale through auctions.

On June 17, 2001 Respondent sent an email to the Forum requesting that the domain names be transferred to the Complainant.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

All of the disputed domain names include the Complainant’s ZURICH mark combined with a generic word or words. Furthermore, in several instances, the domain names include generic words or terms that describe the type of insurance services Complainant offers. The addition of a generic word or term to a mark makes the disputed domain names confusingly similar to Complainant’s ZURICH mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common generic nouns or geographic qualifiers can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the disputed domain names. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent’s registration and passive holding of the disputed domain names and, in some cases offering the domain names for sale, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); see also Amer. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the disputed domain names, pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii), when Respondent offers to sell the disputed domain names. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Respondent’s offer to transfer the disputed domain names to Complainant is also evidence that Respondent has no rights or legitimate interests in the domain names. See Marcor International v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (finding that Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Desotec v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (transferring the disputed domain name solely on the ground that Respondent contacted the dispute resolution provider after the action commenced offering to transfer the domain name).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the disputed domain names and that Policy ¶ 4(a)(ii) has been satisfied.

Respondent’s offer to sell the disputed domain names at auction on the Internet, for a minimum of $300, an amount in excess of out-of-pocket costs directly related to the domain names, is evidence of bad faith. Any offer to sell a domain name in excess of out-of-pocket expenses is evidence of bad faith under Policy ¶ 4 (b)(i). See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration); see also World Wrestling Fed’n Entertainment, Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of out of pocket costs).

Respondent’s passive holding of the disputed domain names is also evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, the fact that Respondent was a former employee of Complainant for twenty-one (21) years evidences that the registration and passive holding of the disputed domain names was in bad faith. See William Hill Org. Ltd. v. Fulfillment Management Servs. Ltd., D2000-0826, (WIPO Sept. 17, 2000) (finding bad faith registration and use where "Respondent’s employee must have had the Complainant’s trademarks in mind when choosing the disputed domain name and that the Respondent‘s interest was to deprive the Complainant of the opportunity to reflect its mark in that name until the registration expired"); see also Arab Bank for Inv. and Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was employed by Complainant’s business for over 17 years, was fully aware of the name of her employer and made no use of the infringing domain name).

Respondent’s registration and passive holding of the disputed domain names also establishes bad faith pursuant to Policy ¶ 4(b)(ii) in that Respondent has registered numerous infringing domain names preventing the Complainant’s from reflecting their mark in a corresponding domain name. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).

Bad faith is further evidenced by the obvious connection the disputed domain names have with Complainant’s enterprise, as it incorporates Complainant’s famous ZURICH mark in its entirety. Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain names combined with its offer to sell some of the disputed domain names in excess of out-of-pocket expenses supports a finding of bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’"); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <yourzurich.com>, <zurichdirectinsurance.com>, <zurichcentrere.com>, <zurich-centrere.com>, <zurichdirectline.com>, <zurichdiversified.com>, <zurichdirectbank.com>, <zurichdot.com>, <zurichempire.com>, <zurichdirectinvestments.com>, <zurichfarmers.com>, <zurichfidelity.com>, <zurichdiversifiedproducts.com>, <zurichglobalsolutions.com>, <zurichguarantee.com>, <zurichenterprise.com>, <zurichhelpdesk.com>, <zurichhelpline.com>, <zurichglobalassetmanagement.com>, <zurichspecialties.com>, <zurichlegal.com>, <zurichinstitutional.com>, <zurichhelp.com>, <zurichpersonalfinance.com>, <zurichmarine.com>, <zurichhelppoint.com>, <zurichbusinesspartners.com>, <zurichriskmanagement.com>, <zurichinvestmentsolutions.com>, <zurichstrategicrisksolutions.com>, <zurichsupport.com>, <zurichmedical.com>, <zurichuniversal.com>, <zurichsupportline.com>, <zurichassetmanagement.com>, <zurichwarranties.com>, and <zurichwarranty.com> domain names be transferred from Respondent to Complainant.