ADMINISTRATIVE PANEL DECISION
Allianz AG and Dresdner Bank AG v MIC
Case No. D2001-1298
1. The Parties
The Complainants in this administrative proceeding are ALLIANZ AG, a company organized under the laws of Germany, of Koeniginstrasse 28, 80802 München, Germany, and DRESDNER BANK AG, a company organized under the laws of Germany, of Jürgen-Ponto-Platz 1, 60301 Frankfurt am Main, Germany represented by Marc M. Gorelnik, Esq., of Townsend and Townsend and Crew LLP, whose address is Two Embarcadero Center, 8th Floor, San Francisco, CA 94111, USA. The Respondent is MIC, of 15 5th Street, Closter, New Jersey 07624, USA.
2. The Domain Names and Registrar
The domain names in issue are , , and (“the Domain Names”), the Registrar of the first three of which is Bulkregister.com (“Bulkregister.com”), of 7 East Redwood Street, Baltimore, MD 21202, USA. The Registrar of the last domain name (“the Group Domain Name”) is Easyspace, Ltd., of Rosemount House, Rosemount Avenue, West Byfleet, Surrey, KT14 6LB, England.
3. Procedural History
The WIPO Arbitration and Mediation Center (“the Center”) received on October 25, 2001, an electronic version of the Complaint and on October 29, 2001, a hard copy of the same and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (“the Policy”), and the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”). The Complainant made the required payment to the Center. On January 7, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On November 2, 2001, the Center transmitted via e-mail a request for registrar verification in connection with this case. On November 7, 2001, Bulkregister.com transmitted via e-mail to the Center its Verification Response, confirming that the registrant of the first three of the Domain Names is MIC, the Respondent herein and stating that the Administrative and Technical Contact is Syed Hussain of MIC, at the above address. Also on November 7, 2001, Easyspace confirmed that the registrant of the Group Domain Name is MIC, and that the Administrative and Billing Contact is Syed J. Hussain, for whom no address is given, but whose phone and fax numbers are the same as those given by Bulkregister.com for MIC. In the case of the Group Domain Name the Technical Contact is “Mr. Easyspace Hostmaster”.
No Response has been filed by the Respondent. The Center sent notification of the Complaint to the Respondent by FedEx courier, and the documents were signed for by “S. Hussain”. The Panelist concludes that the Respondent has received adequate notice of the Complaint.
On February 7, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by February 21, 2002.
4. Factual Background
(a) The First Complainant is the registered proprietor of the trade mark ALLIANZ in a large number of countries. To satisfy the requirements of the policy, it is sufficient to record that it owns United States Trade Mark No. 2,256,628, issued on June 29, 1999 (“the ALLIANZ Trade Mark”).
(b) The Second Complainant is the registered proprietor of the trade mark DRESDNER BANK. It owns United States Trade Mark No. 1,131,268, issued on January 29, 1985 (“the DRESDNER Trade Mark”).
(c) The first two of the Domain Names and the Group Domain Name were registered on March 28, 2001, and the third of the Domain Names () was registered on April 1, 2001.
5. Parties’ Contentions
The Complainants assert, inter alia, as follows:-
(i) The Complainant Allianz AG is one of the oldest and largest international insurance and financial services firms in the world. Allianz was founded in 1890 in Berlin, Germany. Allianz started doing business in the United States under the ALLIANZ mark in 1906.
(ii) The Complainant Dresdner Bank AG is one of Europe’s oldest and largest financial services groups. It is active worldwide, with some 1,400 branches and 50,000 employees in more than 70 countries.
(iii) The Complainants are large German companies with a worldwide presence. In late March, 2001, it became known in the financial community that the Complainants were considering a merger. Indeed, the Complainant Dresdner Bank later confirmed that the Complainants were in “strategic talks concerning the creation of a leading integrated financial services provider for insurance, investment and banking products”.
(iv) Coincident with the news that the Complainants were considering a merger, the Respondent on March 28, 2001, registered the , and domain names. A few days later, on April 1, the Respondent registered .
(v) On May 18, 2001, a representative of the Complainants made a confidential inquiry to Mr. Syed Hussain, the listed Administrative Contact, by email. The email contained an inquiry concerning the potential transfer of the and domain names. On May 21, 2001, Mr. Syed Hussain contacted the Complainants’ representative by telephone concerning the potential transfer of the domains. Mr. Hussain refused to suggest a price for the domain names, insisting that the first offer come from the Complainants. At the time, the Respondent did not know the identity of the Complainants, although he stated that he could guess who they were.
(vi) The Complainants’ legal counsel sent a demand letter to the Respondent on July 25, 2001, setting out the Complainants’ rights and seeking transfer of the , and domain names. The letter sought a response by August 6. Counsel transmitted this demand letter by facsimile and Federal Express according to the contact information in the domain name records and both methods of delivery were successful. The Respondent did not reply to this letter.
(vii) The Respondent contacted the Complainants’ legal counsel by telephone on August 30, 2001, concerning the July 25, 2001, demand letter. In this conversation, Mr. Syed Hussain admitted that he had no rights in the marks incorporated in the domain names. He stated that he registered these domains, as well as others, as a service to the trademark owners, although Mr. Hussain seems to be the only person standing to benefit from this “service”. Mr. Hussain stated that he deserved compensation for this service, some amount representing a fraction of the value of the merged Allianz/Dresdner entity. He would not advance a price for the domains, however.
(viii) With the Respondent unwilling to name a price and the Complainants unwilling to make an offer, the Complainants’ counsel and Mr. Hussain engaged in a hypothetical dialogue concerning the price range that would be acceptable to the Respondent. Counsel inquired of Mr. Hussain whether payment of $10,000 to the Respondent would be enough for the Complainants to acquire the domains incorporating the ALLIANZ and DRESDNER marks. Mr. Hussain responded that it would take an offer closer to $25,000 for the Complainants to acquire the domains.
(ix) There were no further communications with Mr. Hussain from August 30, 2001, until October 18, 2001, when he telephoned the Complainants’ counsel. Mr. Hussain inquired whether the Complainants would advance an offer. Counsel explained that the Complainants had not authorized an offer. Mr. Hussain then volunteered that he had reconsidered the $25,000 figure he earlier advanced, and thought that only half that amount would be required to purchase the domains sought by the Complainants. Indeed, “anything over $10,000” would be adequate, he said.
(x) It should be noted that the Respondent is no stranger to proceedings such as this. Under a variety of pseudonyms, Respondent has registered innumerable domain names corresponding to the well known trademarks and service marks of others. The following table lists proceedings against the Respondent under the Policy, each of which included a finding of bad faith:
Case NameCase No.Date
United States Olympic Committee v. MICWIPO D2000-0189May 4, 2000
The Hain Food Group v. MICNAF FA0005000094729June 15, 2000
Morgan Stanley Dean Witter & Co. v. Syed Hussain CPIC NetNAF FA0004000094449May 31, 2000
Time Warner Inc. and EMI Group plc v. CPIC NetWIPO D2000-0433Sep. 15, 2000
PHH Vehicle Management Services, LLC v. CPIC NetNAF FA0006000094958July 3, 2000
Valigene Corporation v. MICNAF FA0005000094860August 1, 2000
Valigene Corporation v. CPIC NETNAF FA0005000094861August 4, 2000
Bates Worldwide, Inc. v. MIC (Syed Hussain)WIPO D2000-1168Dec. 18, 2000
Unión Eléctrica Fenosa v. Sydey HussainWIPO D2000-0893Oct. 4, 2000
Red Hat, Inc. v. Syed Hussain, d/b/a CPIC Net and MICWIPO D2000-1442Jan. 9, 2000
Kinko’s Ventures, Inc. v MICNAF FA0011000095961Dec. 26, 2000
The London Metal Exchange Limited v. Syed HussainWIPO D2000-1388Dec. 15, 2000
prosieben media AG v. CPIC Net Syed HussainWIPO D2000-1517Jan. 7, 2000
Britannic Assurance PLC v. MICWIPO D2000-1516Jan. 15, 2000
The Body Shop International PLC v. CPIC NET and Syed HussainWIPO D2000-1214Nov. 26, 2000
EntergyShaw LLC v CPIC NetNAF FA0011000095950Dec. 8, 2000
Clifford Chance LLP And Pünder GmbH v. CPIC Inc.WIPO D2000-1603Jan. 28, 2000
Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. CPIC NETWIPO D2000-1742Feb. 13, 2001
Logica plc and Logica UK Limited v. CPIC NetWIPO D2000-1566Jan. 17, 2001
Grupo Financiero BBVA Bancomer and Banco Bilbao Vizcaya Argentaria, S.A. v MICNAF FA0101000096454Feb. 28, 2001
General Electric Company v. CPIC NET and Hussain SyedWIPO D2001-0087May 2, 2001
Tata Tea Limited v. CPIC NETWIPO D2000-1828May 3, 2001
Ameritrade Holding Corporation & Ameritrade (Inc.) v. MIC a/k/a Syed HussainNAF FA0105000097320June 25, 2001
[The accounts of the telephone conversations in (v) and (vii)-(ix) are attested to by Declarations made by the Complainants’ representative and legal counsel respectively].
As noted above, no Response has been filed.
The onus is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.
As to element (i), the Complainants assert that the Domain Names are identical to the service marks in which the Complainants have rights. The Panelist cannot accept this assertion. Although the Domain Names are a simple combination of two service marks, each of which is well known in the field of financial services, the requirement of the policy is that the domain name in issue be “identical . to a trade mark or service mark .” (Panelist’s emphasis). However, the Panelist has no hesitation in finding the Domain Names confusingly similar to each of the Trade Marks. The Complainant Allianz AG can justifiably object that the Domain Names are confusingly similar to its service mark ALLIANZ because they suggest a business association between the two Complainants – were a third party to set up a business under the name “Allianzdresdner” there would inevitably be confusion. By parity of reasoning, the Panelist also concludes that the Domain Names are confusingly similar to the service mark DRESDNERBANK, the distinctive feature of which, in the field of financial services, is DRESDNER.
In the case of the Group Domain Name the non-distinctive word “group” has been added to “allianzdresdner”. This added word in no way affects the finding of confusing similarity.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (ie before notice of the dispute preparation to use the Domain Names, being commonly known by the Domain Names or making a legitimate non-commercial or fair use of the Domain Names). The facts put forward by the Complainant suggest that the Respondent’s interest in the Domain Names was not in connection with a bona fide offering of goods or services, but rather to take advantage of the breaking news of merger talks between the Complainants to secure registration of domain names most likely to reflect the merged businesses’ name, with a view to selling them on to the Complainants at a substantial profit. In the absence of any justification from the Respondent of the activities in relation to the Domain Names, the Panelist concludes that the Complainants have established element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies. Paragraph 4(b)(i) of the Policy indicates to a respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:-
“circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
One of the earlier WIPO decisions involving the Respondent is United States Olympic Committee v. MIC, WIPO Case No. D2000-0189 (). The Panelist in that case recorded that “Mr. Hussain informed [Complainant’s counsel] that he subscribes to a variety of news services and obtains press releases and then searches the Internet to see whether there are domain names available that he believes would be useful to the companies issuing the press releases”. The Complainants point to a pattern of such opportunistic activities by Mr. Hussain in a number of the cases listed in paragraph 5(x) above.
In the present case, the circumstances surrounding the registration of the Domain Names, coupled with Mr. Hussain’s attempts to sell some or all of them for a price within the range of US$ 10,000 to US$ 25,000 lead the Panelist to conclude that the Complainants have established element (iii) of paragraph 4(a) of the Policy.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
– the domain names , , and are confusingly similar to the trade marks ALLIANZ and DRESDNER BANK of the Complainants;
– the Respondent has no rights or legitimate interests in the domain names;
– the domain names have been registered and are being used in bad faith.
Accordingly, the Panelist orders that the domain names , , and be transferred to the Complainant, Allianz AG.
Christopher Tootal Sole Panelist
Dated: February 19, 2002