Generali France v Franck Bouvrain

WIPO Case No. D2024-3150

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GENERALI FRANCE v. Franck Bouvrain

Case No. D2024-3150

1. The Parties

The Complainant is GENERALI FRANCE, France, represented by Cabinet Lavoix, France.

The Respondent is Franck Bouvrain, France.

2. The Domain Names and Registrar

The disputed domain names <generali-gestion.com>, <generaligestionpatrimoine.com>, and
<generalipatrimoine-fr.com> (hereinafter the “Disputed Domain Names”) are registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2024. On
July 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Names. On July 31, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain Names
which differed from the named Respondent (Privacy service provided by Withheld for privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
August 5, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

August 9, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 20, 2024. In accordance with the Rules, paragraph
5, the due date for Response was September 9, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 16, 2024.

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The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 21, 2024.
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.

4. Factual Background

The Complainant is a French Company part of worldwide group founded in Italy in 1831 which is one of the largest players in the insurance industry.

The Complainant is the owner of two French trademarks incorporating its group name (the “GENERALI

Trademarks”):

- the French semifigurative mark
36; No.3351701 registered on April 8, 2005, for services in class

- the French semifigurative (construed with a red square with the words “GENERALI ASSURANCE

PRIVEE”) No. 4303950 registered on October 3, 2016, for services in classes 35 and 36.

The Complainant is also the owner of the domain name <generali.fr> since July 30, 1996.

The disputed domain name <generali-gestion.com> (“the First Disputed Domain Name”) was registered on
February 19, 2024, and is inactive.

The disputed domain name <generaligestionpatrimoine.com> (the “Second Disputed Domain Name”) was registered on February 5, 2024, and is inactive.

The disputed domain name <generalipatrimoine-fr.com> (the “Third Disputed Domain Name”) was registered on February 5, 2024, and is inactive.

The Disputed Domain Names were all used to impersonate employees of the Complainant as part of a phishing scheme.

The Respondent appears to be a natural person residing in France.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names.

Notably, the Complainant contends that the Disputed Domain Names are identical or confusingly similar to its GENERALI Trademarks. The Complainant highlights that the word “generali” is the dominant and distinctive element in its GENERALI Trademarks and in the Disputed Domaine Names and that the addition of the word “France” in one of its trademarks does not have an impact since it is purely a geographical term. Regarding the Disputed Domain Names, the Complainant submits that the addition of the words “gestion” (which means “management” in English) and “patrimoine” (which means “assets” in English) does nothing to prevent a finding of confusing similarity since they are clearly related to the Complainant’s activities.

Then, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Names since it is not a licensee of the Complainant, nor it was authorized to use the
GENERALI Trademarks to register the Disputed Domain Names. The Complainant underlines that the

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Disputed Domain Names are used for phishing purposes which is evidence that they were registered for fraudulent activities and commercial gain. The Complainant adds that is obvious that the Respondent does not use the Disputed Domain Names in connection with a bona fide offering of goods and services and does not make a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain.

Finally, the Complainant submits the Disputed Domain Names were registered and are being used in bad faith. The Complainant contends the Respondent was aware of its GENERAL Trademarks when registering the Disputed Domain Names since they are well known. This fact is further proved by the emails sent from the email addresses generated from the Disputed Domain Names which reproduce the Complainant’s logo, name, current address, and the name of another affiliated company. The Complainant asserts the Disputed Domain Names were registered for the purpose of using them in connection with the Complainant’s GENERALI Trademarks to perpetrate phishing attacks. The Complainant also highlights the Respondent used a privacy service to hide its identity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

.

The Panel finds the mark is recognizable within the Disputed Domain NamesAccordingly, the Disputed section 1.7.

Indeed, the First Disputed Domain Name consists of:
- the distinctive element of the GENERALI Trademarks (the word “generali”);
- a hyphen;
- the French word “gestion” which means “management” in English;

- the generic Top Level-Domain (“gTLD”) “.com”.

The Second Disputed Domain Name consists of:
- the distinctive element of the GENERALI Trademarks (the word “generali”);
- the French words “gestion” and “patrimoine” which mean respectively “management” and “asset” in English;

- the gTLD “.com”.

The Third Disputed Domain Name consists of:
- the distinctive element of the GENERALI Trademarks (the word “generali”);
- the French word “patrimoine” which means “asset” in English;
- a hyphen;
- the letters “fr” which is the country code for France where the Complainant is established;
- the gTLD “.com”.

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The Panel finds that these additions in the Disputed Domain Names do not prevent a finding of confusing similarity notably since the distinctive element of the GENERALI Trademarks is reproduced in each of the Disputed Domain Names and thus the Complainant’s GENERAL Trademarks are recognizable.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant

evidence demonstrating rights or legitimate interests in the disputed domain names such as those

enumerated in the Policy or otherwise.

Indeed, it appears that the Respondent has not received any authorization to use the GENERALI affiliated with nor authorized by the Complainant in any way.

Moreover, the Complainant has demonstrated that the Disputed Domain Names, which are inactive at the time of the Decision, were used to create emails addresses as part of a phishing scheme in which the email senders attempted to pass off as employees of the Complainant.

Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, phishing schemes, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has targeted the Complainant’s GENERALI Trademarks on purpose and uses the Disputed Domain Names to create email addresses which, in the public mind, would be associated with the Complainant. The composition of the Disputed Domain Names themselves reflect the Respondent’s intention to impersonate and mislead Internet users as to an association with the Complainant. The Complainant has provided evidence showing the Respondent used the Disputed Domain Names as part of a phishing scheme while trying to pass off as employees or people affiliated with the Complainant.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off,
constitute bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <generali-gestion.com>, <generaligestionpatrimoine.com>, and

<generalipatrimoine-fr.com> be transferred to the Complainant.

/Christiane Féral-Schuhl/
Christiane Féral-Schuhl
Sole Panelist
Date: October 6, 2024