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Zurich Insurance Company v. Shi Wang [2005] GENDND 1775 (20 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zurich Insurance Company v. Shi Wang

Case No. D2005-0712

1. The Parties

The Complainant is Zurich Insurance Company, of Zürich, Switzerland, represented by Bevan Brittan, LLP, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Shi Wang, of Guangzhou, Guang Dong, China.

2. The Domain Name and Registrar

The disputed domain name <zurichan.net>is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2005. On July 6, 2005, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 5, 2005, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 2, 2005.

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 September 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2005.

The Center appointed William Lobelson as the sole panelist in this matter on October 7, 2005. 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.

The Complainant has filed a request to the effect that the proceedings should be conducted in English language, notwithstanding the fact that the language of the registration agreement for the disputed domain name is Chinese.

The Respondent has not raised any objection.

The Panel accepts to have the proceedings conducted in English language in view of the arguments developed by the Complainant in its letter dated September 2, 2005, in particular the fact that the web page associated to the Respondent’s disputed domain name was in English language and that all pre-complaint correspondence was also in English language.

4. Factual Background

The Complainant is Zurich Insurance Company and is a member of the so-called Zurich Group, a major insurance company known worldwide.

It owns numerous trademark registrations and domain names formed with the name ZURICH and used in relation with insurance and financial services.

Among the branches of the Group is Zurich Advice Network Ltd, which runs a website under “www.zurich.co.uk” and in particular offers specific services in a section of the website named “Advice”.

The Respondent has registered the domain name <zurichan.net> on February 4, 2005, and has directed the same to a web page which is almost identical to the web page named “Advice” of the website “www.zurich.co.uk” of Zurich Advice Network Ltd.

The cease-and-desist letter sent by the Complainant to the Respondent has remained unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar with its trademarks ZURICH and causes actual confusion with its affiliate Zurich Advice Networks.

The Complainant further states that the Respondent has no legitimate interests in the disputed domain name, as he has no relationship with the Zurich Group and could not ignore the rights vested in the mark ZURICH when he registered the disputed domain name.

The Complainant contends that the domain name was registered in order to benefit and distract the reputation and goodwill of the notorious trademark ZURICH, and more particularly with an intent to defraud the public since one of the official websites of the Complainant has been copied and is accessible through the disputed domain name. The Complainant also shows that the Respondent has registered other domain names formed with the name of well know banks and financial institutions.

B. Respondent

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

6. Discussion and Findings

The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint and Notification of Respondent Default were properly notified to the Respondent. The Panel finds that the Respondent had proper notice of this administrative proceeding.

Because the Respondent has defaulted in providing a Response to the Complaint, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the respondent’s 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 respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is <zurichan.net>.

It clearly appears confusingly similar with the trademark registrations owned by the Complainant, formed with the name ZURICH or close derivations thereof, copies and details of which are attached to the Complaint.

It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://arbiter.wipo.int/domains/search/overview/index.html”) that geographical terms can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark and furthermore if the Complainant owns a registration of the geographical term as a trademark (Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 <stmoritz.com>; Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217 <skipton.com>; FC Bayern München AG v. Peoples Net Services Ltd., WIPO Case No. D2003-0464 <bayernmuenchen.net> <bayernmunchen.net>; BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 <aberdeenairport.com>).

The addition of the letters AN after ZURICH in the disputed domain name are not sufficient to conceal the strong visual, phonetic and conceptual resemblance with the Complainant’s earlier marks.

The Complainant therefore has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the Domain Name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://arbiter.wipo.int/domains/search/overview/index.html”) that the overall burden of proof under paragraph 4(c) of the Policy rests with the Complainant, which is required to establish that the Respondent prima facie lacks any rights to, or legitimate interests in, a domain name. If the Respondent fails to answer the claim, the Complainant is deemed to have satisfied its burden of proof (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Complainant claims that it has no relationship with the Respondent and has never authorized him to use any of its trademarks, that the Respondent does not run any business and is not known under the name Zurich or Zurichan, and that he could not ignore the rights vested in the famous mark ZURICH when he registered the disputed domain name.

The Respondent has not responded to any of the assertions made by the Complainant and has not justified any legitimate interests or rights in the domain name.

The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with the provisions of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:

(i) circumstances indicating that the Respondent has registered and has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.

The Complainant has shown that the Respondent has redirected the domain name <zurichan.net> towards a web page which imitates an official web page of one of the Complainant’s subsidiary named Zurich Advice Networks Ltd.

This redirection has since been interrupted, but it shows nevertheless that the Respondent has registered the disputed domain name in bad faith, has been using and keeps on using the same in bad faith too.

The fame of the trademark ZURICH in the field of insurance and financial services is undisputable.

It is also obvious that the domain name <zurichan.net> evocates the name Zurich Advice Networks.

As the web page towards which the Respondent redirected the disputed domain name is a copy of the genuine web page of Zurich Advice Networks, there is no doubt that when he registered the disputed domain name, the Respondent had the Complainant’s marks in mind.

It appears that the use of the disputed domain name, namely its redirection towards an imitation of the web page of the Complainant, reveals an intent to mislead the public and attract the Complainant’s customers to a fake website for fraudulent purposes.

Such a practice is known as “phishing” : it consists of attracting the customers of a bank or any other financial company to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card code or a bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of it.

The Respondent has very likely registered and used the disputed domain name, which is confusingly similar with the trademarks and domain names of the Complainant, for such a purpose.

See Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237 <paramount-bank.net>: “the apparent potential for phishing and obtaining information by deception is not just evidence of bad faith but possibly suggestive of criminal activity”; Bayshore Bank & Trust (Barbados) Corporation v. Motschh Ivan, WIPO Case No. D2005-0011 <baysoretrust.net>: “The Respondent appears to be engaged in “phishing” for mistaken customers of the Complainant, that is, seeking to gain access to the user names and passwords of the Complainant’s clients through mistaken logins to the Respondent’s site. Not only is this activity criminal, it is clear evidence that the Respondent has no legitimate interest in the domain name”; CarrerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 <job-careerbuilder.com>; Banco Bilbao Vizcayas Argentaria v. X company, WIPO Case No. D2005-0289 <bbva-support.com>.

It is also very revealing to notice, as the Complainant reported, that the Respondent has registered other domain names which are identical or very confusingly similar to the names of well-known banks (Barclay’s, Bank of England …).

This pattern of conduct is an additional indication of the Respondent’s bad faith.

The redirection of the disputed domain name has now been interrupted (by the Respondent’s Registrar, and upon request of the Complainant), but as the Respondent has deliberately refrained from transferring the domain name to the Complainant, even after having been put on notice of the Complainant’s trademark rights, and after having been notified of the Complaint, the Respondent continues to withhold the domain name in bad faith.

This must be regarded as a passive bad faith use of the disputed domain name.

The Panel therefore considers the Respondent has registered, has been using and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

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 <zurichan.net> be transferred to the Complainant.

William Lobelson
Sole Panelist

Dated: October 20, 2005