Generali France v Name Redacted

WIPO Case No. D2023-2953

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Generali France v. Name Redacted

Case No. D2023-2953

1. The Parties

The Complainant is Generali France, France, represented by Me Haas, France.

The Respondent is Name Redacted.0F1

2. The Domain Name and Registrar

The disputed domain name <generali-patrimoine.info> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2023. On July 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2023 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 July 17, 2023.

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 July 18, 2023. In accordance with the Rules, paragraph 5,

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the due date for Response was August 7, 2023. The Respondent did not submit any response. The Center
received an email from a third party claiming the Respondent has used his identity and contact details to
register the disputed domain name. Accordingly, the Center notified the commencement of panel

appointment process on August 8, 2023.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on August 11, 2023. 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 corporation operating in the highly regulated insurance, reinsurance and financial services sectors, offering insurance solutions to more than 7.5 million customers in France. It belongs to the Italian insurance company Assicurazioni Generali Spa (“Generali”) founded in 1831. Generali

is one of the leading global insurance companies, active in 50 countries worldwide, and the third largest
insurance company in Europe, with over 82,000 employees and a turnover in 2022 of more than EUR 81,5

billion.

The Complainant owns several registered trademarks containing the term “Generali”, including the French
trademark No. 3351701 for GENERALI FRANCE, registered on April 8, 2005 (hereinafter referred to as “the

Mark”).

The Complainant owns inter alia the <generali.fr> domain name, registered on July 31, 1996, and the
<generali-patrimoine.fr> domain name, registered on September 11, 2006 (the latter giving access to a

dedicated website offering the Complainant’s bespoke wealth management services).

The disputed domain name was registered on December 29, 2022, and resolves to an error page.

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 name.

Notably, the Complainant contends that the disputed domain name reproduces the Mark, in which it has rights, and is confusingly similar to the Mark insofar as the disputed domain name contains the distinctive element “Generali” and that the addition of a hyphen and the French word “patrimoine” after “Generali” is not capable of dispelling the confusing similarity, as the Mark remains recognizable in the disputed domain name.

The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the
disputed domain name and never had any affiliation with the Complainant (which never authorized the
Respondent to use the Mark in any manner).

Furthermore, the Complainant contends that the Respondent had knowledge of the Mark and registered the disputed domain name in bad faith, and is also using it in bad faith.

B. Respondent

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

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6. Discussion and Findings

6.1. Procedural Aspects – Failure to respond

As aforementioned, no formal Response was received from the Respondent.

Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

The Panel does not find any exceptional circumstance in this case which would cause the Panel to proceed differently.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the
Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of paragraph 4(a) of the Policy

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 name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds 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 dominant feature of the Mark is recognizable within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the Mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

While the addition of another term here, such as “patrimoine”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Regarding the generic Top-Level Domain (“gTLD”) “.info” in the disputed domain name, it is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds the first element of the Policy has been established.

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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.

While 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 often impossible 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. 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.

prima facie

Having reviewed the record, the Panel finds the Complainant has established a case that the 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 name such as those enumerated in the Policy or otherwise.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

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 found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that

have been considered relevant in applying the passive holding doctrine include: (i) the degree of
distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response
or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its
identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the
implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the record, the Panel notes the composition of the disputed domain name, which is almost identical to the Complainant’s prior domain name <generali-patrimoine.fr> in use since 2006, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a

Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
finding of bad faith under the Policy. known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, evidence of bad faith registration. See

In this case, the Complainant provided evidence that the “Generali” name is used in commerce in France since 1832. Considering the duration of this use and the size of the Complainant’s current operations, the Panel finds implausible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate

Spade, LLC v. Darmstadter DesignsD2001-1384Cellular One Group v. Paul Brien

, WIPO Case No. , citing , his identity and contact details to register the disputed domain name. This reinforces the Panel’s finding of

WIPO Case No. D2000-0028; and Sembcorp Industries Limited v. Hu Huan Xin, WIPO Case No.

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bad faith.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have a
duty to abstain from registering and using a domain name, which is either identical or confusingly similar to a
prior trademark held by others and which would infringe upon or otherwise violate the rights of a third party.
See Policy, paragraph 2(b); Nike, Inc. v. Ben de Boer, WIPO Case No. D2000-1397; Nuplex Industries
Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO
Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media
General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible

Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 name <generali-patrimoine.info> be transferred to the Complainant.

/Louis-Bernard Buchman/
Louis-Bernard Buchman
Sole Panelist
Date: August 18, 2023

1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-
12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.