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Case No. D2002–0989 - WIPO

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Case No. D2002–0989 - WIPO Powered By Docstoc
					                WIPO Arbitration and Mediation Center

                       ADMINISTRATIVE PANEL DECISION

     Zurich Insurance Company v. Multiweb Media Corporation and Mwebmedia

                                 Case No. D2002–0989




1.   The Parties

     The Complainant in this administrative proceeding is Zurich Insurance Company of
     Zurich, Switzerland.

     The Complainant is represented by Richard Penfold, of Harbottle & Lewis, Solicitors,
     of London, England.

     The Respondents are Multiweb Media Corporation, of Makati, Philippines
     (“First Respondent”) and Mwebmedia, of Makati, Philippines (“Second Respondent”).


2.   The Domain Names and Registrars

     The domain names in issue are <zurichinvestmentgroup.com> and
     <zurichadvisorygroup.com> (“the Domain Names”).

     The Registrars of the Domain Names are respectively Network Solutions, Inc. and
     Tucows, Inc.


3.   Procedural History

     The WIPO Arbitration and Mediation Center (“the Center”) received on
     October 23, 2002, an e-mail version and on October 25, 2002, hard copies of the
     Complaint and accompanying documents. The Center verified that the Complaint
     satisfies the formal requirements of the ICANN 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
     Dispute Resolution Policy (“the Supplemental Rules”). The Complainant made the
     required payment to the Center. On October 28, 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.



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     On October 24, 2002, the Center transmitted via e-mail a request for registrar
     verification in connection with this case. On October 25, 2002:-

     (a)   Network Solutions transmitted by e-mail to the Center its Verification Response,
           confirming that the registrant of the domain name <zurichinvestmentgroup.com>
           is the First Respondent, that the Administrative and Billing Contact is the First
           Respondent, and that the Technical Contact is VeriSign, Inc. of VA , USA; and

     (b)   Tucows, Inc. transmitted via e-mail to the Center its Verification Response,
           confirming that the registrant of the domain name <zurichadvisorygroup.com> is
           the Second Respondent, that the Administrative Contact is Francisco, William of
           Makati, Philippines and that the Technical Contact is Hostmaster, Domain
           Registration Phils. of Quezon City, Philippines.

     No Response has been filed by the Respondent. The Center attempted to send
     notification of the Complaint to the Respondents by courier and by e-mail. The courier
     was unable to effect delivery at the addresses given above, but the e-mail notifications
     seem to have been successfully transmitted. Notification of Respondent Default was
     sent by e-mail on November 18, 2002.

     On November 27, 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 December 5, 2002.


4.   Factual Background

     (a)   The Complainant is the registered proprietor of the trademarks ZURICH
           INVEST, Z ZURICH, Z ZURICH INVEST and Z ZURICH INVESTMENT
           MANAGEMENT, which are the subject of registrations in Switzerland and/or the
           EU.

     (b)   The domain name <zurichinvestmentgroup.com> was registered on
           November 7, 2001.

     (c)   The domain name <zurichadvisorygroup.com> was registered on May 27, 2002.

     (d)   The Complainant is the owner of the domain name <zurich.com>.


5.   Parties’ Contentions

     A.    Complainant

     The Complainant asserts, inter alia, as follows:-

     (i)   The Complainant is a member of the Zurich Financial Services Group
           (“Zurich”) which is one of the world’s leading insurance-based financial
           services organizations providing financial protection and wealth
           accumulation solutions for around 35 million customers in over
           60 countries around the world;




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(ii)   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);

(iii) 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. Zurich Financial
      Services is listed on the Swiss Stock Exchange with a secondary listing on
      the London Stock Exchange;

(iv) Today, Zurich’s five business segments are non-life insurance (including
     property, accident, car and liability insurance), life insurance, reinsurance,
     Farmer’s management services and asset management. Today, Zurich
     carries out financial activities in more than 60 countries and has in the
     region of 70,000 employees worldwide. Zurich Financial Services has a
     total business volume of US$50 billion and as at December 31, 2000, had a
     normalized net income of over US$2 billion and over US$440 billion of
     assets under management;

(v)    The Complainant is owner of all worldwide trademark applications and
       registrations which include the word ZURICH, attributable to the Zurich
       Financial Services Group of Companies. The Complainant is owner of
       hundreds of trademark applications and/or registrations around the world
       for marks incorporating the ZURICH name covering, inter alia, financial
       services and investments and, in particular, is owner of nearly 100
       applications and registrations incorporating the ZURICH name in countries
       including those in Europe, the USA and Asia (including Taiwan and
       China);

(vi) There are a substantial number of companies within the Zurich group which
     have in their names the words ZURICH and/or INVEST, INVESTMENT or
     ADVISORY. These are as follows:

       ●     Zurich Invest Bank AG, Vogelsangstrasse 15, 8307 Effrektikon,
             Switzerland;
       ●     Zurich Investments Life S.p.A., Piazza Carlo Erba 6, 20129 Milano, Italy;
       ●     Zurich Investment Services Limited, Crawford House, 23 Church Street,
             P.O. Box 2268, Hamilton HM JX;
       ●     Zurich Investment Management Limited, 5 Blue Street, North Sydney NSW
             2060, Australia;
       ●     Zurich Investments Sociedad Anónima, Cerrito 101, 11th floor, Buenos
             Aires City, Argentina;
       ●     Zurich Investments Chile S.A., Fidel Oteíza 1975, Floor 9, Santiago, Chile;
       ●     Zurich Invest (Jersey) Ltd., c/o Ogier & Le Masurier, P.O. Box 404,
             Whitley Chambers, Don Street, St. Hélier, Jersey;
       ●     ZCM (Zurich Capital Markets) Risk & Value Advisory Limited, Level 47,
             Citigroup Centre, 2 Park Street, Sydney NSW 2000, Australia;
       ●     ZURINVEST, 19, rue Guillaume Tell, 75808 Paris Cedex 17, France;
       ●     “Zurich” Investment Management AG, Mythenquai 2, Postfach, 8022
             Zürich, Switzerland.

(vii) The Complainant first became aware of the website at
      “www.zurichinvestmentgroup.com” on March 9, 2002, when an article
      entitled “Investment spam: When marketing takes a wicked turn” appeared

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       in the US daily newspaper, the International Herald Tribune (“the Article”).
       The article details how unsolicited bulk emails have been sent from the
       website at “www.zurichinvestmentgroup.com”, and the confusion which
       this has caused to members of the public between the website and the
       Complainant;

(viii) The website at “www.zurichinvestmentgroup.com”, which is in both
       English and Chinese text, states that all rights in the site are owned by
       Zurich Investment Group Limited (“ZIG”), a company incorporated in the
       British Virgin Islands. The website states that ZIG has a regional office in
       Taiwan. The website advertises financial services throughout the world,
       including Europe, the USA and Asia, and claims that its “multinational,
       multilingual advisors use innovative investment strategies aimed at
       investors who are seeking global diversification in one market place”. The
       “About Us” section of the website describes ZIG as:

             “an offshore investment company, providing a global network of
             investments, client services and operations professionals throughout
             the world.”

(ix)   Whilst the entity which operates the website at
       “www.zurichinvestmentgroup.com” is stated to be ZIG, the registrant of
       this domain name (the First Respondent) is Multiweb Media Corporation in
       the Philippines. The website at “www.mwebmedia.com” describes the
       First Respondent as a “web-development and e-solutions provider
       specialising in developing e-business solutions for financial services
       companies”;

(x)    The Complainant and its representatives have carried out various
       investigations into the activities of ZIG. As part of those investigations it
       was discovered that a second website at “www.zurichadvisorygroup.com”
       was being operated by a second entity called Zurich Advisory Group
       Limited (“ZAG”). The address given on the website at
       “www.zurichadvisorygroup.com” for ZAG is the same as that given at
       “www.zurichinvestmentgroup.com” for ZIG. The website at
       “www.zurichadvisorygroup.com” contains substantially the same material
       as that at “www.zurichinvestmentgroup.com”, and the same individual,
       Magne Svaartbek, is quoted as being the chairman of both companies;

(xi)   The website at “www.zurichinvestmentgroup.com” purports to give users
       the opportunity to sign up for a newsletter by submitting an email address
       to the website. The Complainant’s investigators attempted to subscribe to
       the newsletter, but have not received any newsletters. Instead they received
       an email stating the following:

            "Please be advised Zurich Investment Group has now changed its name to
            Zurich Advisory Group, re-focusing our attention on different aspects of the
            global security markets, however we remain the same company from a
            personal perspective..."

(xii) As the Complainant’s investigators did not receive any other
      correspondence from ZIG, they sent an email to
      info@zurichinvestmentgroup.com, the address given on the website at
      “www.zurichinvestmentgroup.com” for general enquiries, asking ZIG to

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           contact them. The email was returned with the message that the mailbox
           did not exist;

     (xiii) A further email was sent to the individual stated on the website at
            “www.zurichinvestmentgroup.com” to be the Managing Director of ZIG,
            Mark Zuckerman, using the email address
            zuckerman@zurichinvestmentgroup.com. The email was returned
            undelivered;

     (xiv) On September 18, 2002, the Complainant’s investigators received an email
           from Dean Marshall, apparently the “Assistant Vice President of
           International Trading” stating the following:

                  “Please feel free to contact me on 886 2 2599 5030 or on 886 935 746 497
                  to discuss the procedures in opening an account. Please feel free to visit
                  our website “www.zurichadvisorygroup.com” and Dain Rauscher’s
                  website “www.rbcdain.com” where we clear our trades and with whom our
                  clients actually hold their accounts.

                  Apologies for the trouble you encountered in trying to open an
                  account. There may be a technical error on the website, thanks for
                  pointing it out! Please email us with any contact numbers.”

     (xv) The website at “www.zurichadvisorygroup.com” also gives visitors the
          opportunity to subscribe to a newsletter. The Complainant’s investigators
          have subscribed to that newsletter, and received an automated message
          stating the following:

                   “Thank you for subscribing. You will periodically receive free
                   research through the e-mail you entered.”

     To date, the Complainant’s investigators have not received a copy of any
     newsletter or research.

     B.    Respondents

     As noted above, no Response has been filed.


6.   Discussion

     The onus is on the Complainant to prove each of the three elements set out in
     paragraph 4(a) of the Policy, as follows:

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

     Before discussing these elements of the Policy, the Panelist wishes to record that
     he accepts that despite the fact that on the face of the Registrars’ records the
     Domain Names are owned by different entities, the Complainant was fully
     justified in starting a single administrative proceeding against the Respondents

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jointly. It is immaterial whether the Respondents are in truth one and the same
legal entity – there is plainly a single overall enterprise at work.

Turning to the element set out in paragraph 4(a)(i) of the Policy, the Domain
Names are <zurichinvestmentgroup.com> and <zurichadvisorygroup.com>. The
name ZURICH is internationally very well known in the fields of insurance and
financial services to be associated with the Complainant and other companies in
the Zurich Financial Services Group. Furthermore, the Complainant is the owner
of the trademark “Z ZURICH” in respect of such services. The “Z” is set in a
circle, in stylized form, over “ZURICH” and as such forms part of the visual
representation of the mark, but would not form part of the mark when spoken.
The Domain Names associate “ZURICH” with “INVESTMENT GROUP” and
“ADVISORY GROUP” respectively. Because these latter words are descriptors
of activities in the general field of financial services, their combination in the
Domain Names with “ZURICH” plainly serve to suggest an association with the
Complainant. Accordingly, the Panelist has no hesitation in finding that the
Domain Names are confusingly similar to the trademark Z ZURICH.

With regard to the Complainant’s registrations of the trademarks ZURICH
INVEST and ZURICH INVESTMENT MANAGEMENT, the domain name
<zurichinvestmentgroup.com> is plainly also confusingly similar to those
trademarks.

As to element (ii) of paragraph 4(a) of the Policy, the Respondents have done
nothing to demonstrate that they have any rights or legitimate interests in the
Domain Names. There is nothing to suggest that any of the circumstances
mentioned in paragraph 4(c) of the Policy apply (i.e. before notice of the dispute
preparation to use the Domain Name, being commonly known by the Domain
Name or making a legitimate non-commercial or fair use of the Domain Name).
The facts put forward by the Complainant suggest that the Respondents’ 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 reputation of the Complainant’s
Marks to attract potential customers to their own Internet sites. In the absence of
any justification from the Respondents of their activities in relation to the Domain
Names, the Panelist concludes that the Complainant has 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 Policy applies.

Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as
follows:-

      “by using the domain name, [Respondent has] intentionally attempted
      to attract, for commercial gain, Internet users to [his] 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 [Respondent's] website or location, or of a product or
      service on [Respondent's] website or location.”

Given the undoubted worldwide reputation of the Complainant and its associated
group of companies in the fields of insurance and financial services generally, the
inference that the Domain Names were registered in bad faith is irresistible. In
the light of the circumstances alleged in paragraph 5(A)(vii) to ((xv) above it is

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     clear that the Respondents’ activities come within the terms of (iv) of paragraph
     4(b) of the Policy. The Panelist has also taken note of the fact that the extracts
     from the websites at the Domain Names which have been exhibited by the
     Complainant are more than simply headed with the names “Zurich Investment
     Group” and “Zurich Advisory Group”. In each case there is set alongside the
     relevant name a larger, stylized “Z”, further emphasizing an association with the
     Complainant (and its use of a larger capital “Z” in association with ZURICH),
     and so providing further evidence of the Respondents’ bad faith.

     The Panelist therefore concludes that the Respondents registered and have been
     using the Domain Names in bad faith.


7.   Decision

     In the light of the findings in paragraph 7 above, the Panelist concludes that:-

           -     the domain names <zurichinvestmentgroup.com> and
                 <zurichadvisorygroup.com> are confusingly similar to the trademark Z
                 ZURICH of the Complainant;
           -     the Respondents have 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 <zurichinvestmentgroup.com>
     and <zurichadvisorygroup.com> be transferred to the Complainant, Zurich Insurance
     Company.




                                     Christopher Tootal
                                       Sole Panelist

                                 Dated: December 4, 2002




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