CEPANI
Decision of the third-party decider
Case No. 4025 – allianz.be
I.
The parties
The Complainant is ALLIANZ AKTIENGESELLSCHAFT, with its registered office at 80802
München (Germany), Königinstrasse 28, represented by Mr. Jean-Jo EVRARD and Ms.
Florence VERHOESTRATE, attorneys at law, with offices at 1170 Brussels, Chaussée de la
Hulpe 177/6, hereinafter referred to as "the Complainant ".
The Licensee is CONSTANTIN EUROPEAN INTERNET CLUB ASBL, with its registered
office at 1000 Brussels, Quai du Batelage 11 (hereinafter referred to as "the Licensee ").
II.
Domain name
The domain name at issue is “allianz.be”, registered on June 8, 2001, hereinafter referred to
as "the Domain Name".
III.
Factual background
The relevant facts as they appear from the file submitted by the Complainant can be
summarized as follows.
The Complainant is a multinational insurance provider that owns the trademark ALLIANZ,
registered in many countries over the world.
The Complainant owns the following trademark registrations:
- International registration no. 447004 of the word mark ALLIANZ, filed on September
12, 1979 for services in class 36;
- International registration no. 713841 of the word and device mark ALLIANZ, filed on
May 3, 1999 for goods and services in classes 16, 35 and 36;
- International registration no. 714618 of the word and device mark ALLIANZ, filed on
May 4, 1999 for goods and services in classes 16, 35 and 36;
- Community registration no. 13656 of the word mark ALLIANZ, filed on April 1, 1996
for goods and services in classes 16, 35 and 36.
On June 8, 2001, the Licensee registered the Domain Name.
The Complainant wishes to register the Domain Name with respect to its activities in Belgium
because, according to the Complainant, consumers wishing to find information on its products
on the Internet will spontaneously introduce “www.allianz.be” in order to find information on
the Complainant’s products or to reach one of its web sites.
By an e-mail dated October 8, 2002, the Licensee was contacted with a mock purchase offer
to sell the Domain Name. That same day, the Licensee replied “I will come back to you asap
with a complete updated list of domains some of them are top domains for Europe
Allianz.be is not possible for sale at the moment…. the is a low in Belgium and not allow to
transfer but it will change in the next days (I hope)
note that allianz is the biggest insurance/financial company in Europe and the are also
interrest in this domain” (sic).
When, on October 29, 2002, he was requested to communicate a price offer for the Domain
Name, the Licensee, by e-mail dated October 31, 2002 replied that he would be willing to sell
the Domain Name for 15.000 Euro.
The Complainant filed the Complaint before the Belgian Center for Arbitration and Mediation
(hereinafter referred to as "CEPANI") to have the transfer of the Domain Name ordered,
because it wishes to make use of the Domain Name with respect to its activities in Belgium.
The Licensee has not filed any Response.
IV.
Object of the claim
The Complainant requires that the transfer of the Domain Name concerned be ordered.
V.
As to the admissibility
On December 12, 2002, following the Complaint from the Complainant dated November 6,
2002, CEPANI invited the undersigned to settle as Third-Party Decider the dispute concerning
the Domain Name and sent the file of the Complainant to the Third-Party Decider.
By letter dated December 12, 2002, CEPANI informed the Complainant and the Licensee of
the Domain Name of the appointment of the Third-Party Decider. The Secretariat of CEPANI
(hereinafter referred to as "the Complaint Manager") stated in this e-mail that the deliberations
should be concluded by December 19, 2002 and that the Third-Party Decider must inform the
Complaint Manager of her decision by January 3, 2002 at the latest.
On the basis of the file, the Third-Party Decider concludes that CEPANI has correctly applied
the CEPANI Rules for Domain Name Dispute Resolution (hereinafter referred to as "the
Rules") in administering this case, and that the case is admissible.
According to article 12 of the Rules, the debates were closed on December 19, 2002.
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VI.
As to the merits: examination of the position of the Complainant and the
Licensee
Pursuant to Article 15.1 of the Rules, the Third-Party Decider shall decide on the Complaint in
accordance with the Dispute Resolution Policy provided for in Article 10 of the Terms and
Conditions of Domainname Registration under the “.be” Domain operated by DNS
(hereinafter referred to as “the Policy”) and the Rules.
In order for the Third-Party Decider to be able to grant the remedy requested by the
Complainant, the Complainant has to prove the three cumulative elements indicated under b)
1. of the Policy.
A.
The Complainant
The Complainant petitions the Third-Party Decider to order the transfer of the Domain Name
since, according to the Complainant, the conditions provided for under b) 1. i - iii of the Policy
are clearly met.
Condition 1: the Licensee's domain name is identical or confusingly similar to a
trademark, a trade name, a social name or corporation name, a geographical
designation, a name of origin, a designation of source, a personal name or name of a
geographical entity in which the Complainant has rights.
The Complainant indicates in its Complaint that the Domain Name registered by the Licensee
is perfectly identical to the Complainant’s.
Except for the suffix ".be ", which is generally accepted as being irrelevant for determining the
similarity between a domain name and a trademark, the Domain Name and the trademark
ALLIANZ are indeed identical.
Condition 2: the Licensee has no rights or legitimate interests in the domain name.
The Complainant submits that the Licensee has no rights or legitimate interests in the Domain
Name.
The Policy under b) 3. provides for a number of circumstances that can establish that the
Licensee has rights or legitimate interests in the Domain Name.
The Licensee, not having filed a Response, a fortiori has not submitted any arguments or
evidence that could establish such rights or legitimate interests in the Domain Name.
The Complainant alleges that none of the circumstances mentioned under b) 3. of the Policy,
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nor any others, are applicable to the Licensee.
It appears that the Domain Name is automatically linked to the web site of StartDomains /
European Internet Club asbl, a company that presents itself as follows: “StartDomains.com
offer to members domain name registrations with a premium service set all included in the
discount price of the registration. We have been in business since 1997, specializing in
domain name registration and related services. You will find our domain names to be one of
the best values around. (…) We maintain multiple domain name servers located at different
locations throughout the United States.(…)”. The web site that appears when introducing
“www.allianz.be” indicates that the domain is “under construction”.
It appears from the evidence that prior to any notice of the dispute, the Licensee did not use
the Domain Name or a name corresponding to the domain name in connection with a bona
fide offering of goods or services or made demonstrable preparations for such use.
Also, there is no indication that the Licensee is commonly known by the Domain Name. On
the contrary, the Licensee is apparently known under another name, the name
“StartDomains.com”.
Finally, there is no indication that the Licensee is making a legitimate and non-commercial or
fair use of the domain name without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark, tradename, social name or corporation name,
geographical designation, name of origin, designation of source, personal name or name of
the geographical entity at issue.
Condition 3: the Licensee's domain name has been registered or is being used in bad
faith.
The Complainant alleges that the Domain Name was registered in bad faith by the Licensee.
The Licensee will be considered to have been acting in bad faith if by its behaviour, it
knowingly places itself in an illicit position so as to infringe upon a social value or cause
someone damage. As the existence of bad faith has to be proven, the Complainant must be
allowed to use all pertinent means to establish this, amongst others indications and
presumptions.
The Complainant states that according to the CEPANI case law, the identity between the
domain name and an existing trademark might as such establish bad faith, and in this respect
quotes a reference to the Wipo Report of April 30, 1999 in CEPANI-case no. 4004.
However, it should be emphasized, as is by the way also indicated in the quote, that a
“domain name registration can be abusive as soon as the domain name is identical”
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(emphasis added). Indeed, although the identity of the Domain Name with a trademark or
trade name is one important element that can assist in establishing the existence of bad faith,
the simple identity in itself will not be sufficient to establish such bad faith. The factual
circumstances of the case always need to be examined.
The Complainant states that the more a trademark is well-known, the more obvious it is that
bad faith is involved.
One of the additional circumstances to establish bad faith is indeed the well-known character
of the trademark or trade name used as Domain Name, because it will be more likely that the
Licensee knew or should have known about the existence or use of the well-known trademark
or trade name, and thus more unlikely that the Licensee registered the Domain Name in good
faith.
This is in particular illustrated in the present case, where the Licensee in response to a (mock)
offer amongst others replied “note that allianz is the biggest insurance/financial company in
Europe and the are also interrest in this domain” (sic).
The Complainant also refers to circumstances mentioned under b) 2 of the Policy that can be
considered evidence of bad faith.
The Policy indicates that if a domain name was “registered or acquired primarily for the
purpose of selling, renting, or otherwise transferring the domain name to the Complainant
who is the owner of the trademark, trade name, social name or corporation name,
geographical designation, name of origin, designation of source, personal name or name of
the geographical entity, or to a competitor of that Complainant, for valuable consideration in
excess of the costs directly related to the domain name”, this might indicate the bad faith of
the Licensee. This situation apparently applies in the present case to the Licensee of the
Domain Name.
First, the trade name of the Licensee “StartDomains.com” in itself indicates that the
Licensee is apparently commercialising domain names.
Secondly, this also appears from the reply from the Licensee to the mock offer dated October
8, 2002 : ”I will come back to you asap with a complete updated list of domains some of them
are top domains for Europe”. Although it is in theory possible that this list of domain names
would all concern generic words, this is rather unlikely, the more as the Licensee speaks of
“top domains for Europe”. This type of commercial activity involving the regist ration of large
numbers of domain names identical to famous brands is known as “domain name grabbing”
and is in general condemned as bad faith behaviour.
Thirdly, the Complainant submits evidence that the Domain Name on October 31, 2002
has been offered for sale for 15.000 Euro, an amount that significantly exceeds the costs
for having registered this Domain Name and having kept the registration active for a year
and a half.
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Moreover, by this registration combined with Licensee’s behaviour, the Domain Name was
under the present circumstances in fact also “registered in order to prevent the owner of a
trademark, a trade name, a social name or corporation name, a geographical designation, a
name of origin, a designation of source, a personal name or a name of a geographical entity
from reflecting this name in a corresponding domain name, provided that the licensee has
engaged in a pattern of such conduct”, another example of an indication of bad faith as
described under b) 2. of the Policy.
Indeed, by having registered this Domain Name, the Licensee prevents the Complainant from
registering its trademark as a domain name. It is likely , in view of the Licensee’s activity as it
can be deducted from its reply to the mock offer dated October 8, 2002, that the Licensee has
engaged in a pattern of such conduct.
An additional factual circumstance concerns the lack of Response of the Licensee, a fortiori
the failure to contest the Complainant’s allegations and evidence provided.
B.
The Licensee
The Licensee has not filed any Response.
VIII.
Decision
According to Article 5.4 of the Rules, because the Licensee did not submit a Response, the
Third-Party Decider has decided the dispute on the basis of the Complaint and its exhibits.
Based upon the circumstances as explained in the Complaint and based upon the evidence
supplied by the Complainant, the Third-Party Decider holds that the three cumulative
conditions of Article 10 b) 1. of the Policy are met:
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except for the suffix ".be ", which is generally accepted as being irrelevant for
determining the similarity between a domain name and a trademark, the Domain
Name and the trademark ALLIANZ are identical;
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there is no indication whatsoever that the Licensee might have a right or legitimate
interest in the Domain Name; and
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the combination of factual elements as outlined above clearly indicates that the
Licensee has registered the Domain Name in bad faith.
Consequently, Brigitte Dauwe, duly appointed according to Article 6 of the Rules to settle as
Third-Party Decider the dispute concerning the domain name “allianz.be”
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determines that, pursuant to the Policy, Articles 2 to 5 of the Rules, and Article 15 of
the Rules, the Complaint is admissible and founded;
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orders that, pursuant to Article 15 of the Rules and the Policy under e) and g), the
Domain Name be transferred from the Licensee to the Complainant;
As such decided on 2 January 2003.
Brigitte Dauwe,
Third-Party Decider
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