Generali France v Whois Privacy Protection Foundation / Pierre perrin

WIPO Case No. D2022-1017

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Generali France v. Whois Privacy Protection Foundation / Pierre perrin

Case No. D2022-1017

1. The Parties

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

The Respondent is Whois Privacy Protection Foundation, Netherlands / Pierre perrin, France.

2. The Domain Name and Registrar

The disputed domain name <generali-europe.com> (“Disputed Domain Name”) is registered with Hosting

Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2022. On March 24, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 25, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 2022, 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 March 30, 2022.

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 March 31, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2022.

The Center appointed Isabelle Leroux as the sole panelist in this matter on April 27, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a well-known French company operating in the financial services and insurance sectors, offering insurance solutions to more than 7.5 million customers.

It belongs to the Italian group Assicurazioni Generali Spa, referred to as Generali Group, founded in Trieste, largest insurance company in Europe.

For the needs and purposes of its activities, the Complainant is the owner of several trademarks including the following one:

- French semi-figurative trademark “GENERALI FRANCE” no. 3351701, registered on April 8, 2005, in
class 36 designating insurance and management and investment services and duly renewed.

Hereinafter the “Trademark”.

The Complainant is also the holder of the domain name <generali.fr>, registered on July 31, 1996.

The Disputed Domain Name <generali-europe.com> was registered on December 14, 2021.

The Disputed Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

a) The Disputed Domain Name is confusingly similar to the Complainant’s Trademark since it reproduces the distinctive verbal element of its Trademark.

b) The Respondent has no rights nor legitimate interests in the Disputed Domain Name, since:

- The Respondent is not a licensed distributor of the Complainant;
- The Respondent is not commonly known by the Disputed Domain Name;
- Before any notification of the dispute, the Respondent did not use the Disputed Domain Name in

connection with a bona fide offering of goods and services.

c)	the Respondent has registered and uses the Disputed Domain Name in bad faith given the following
factors:

- The Complainant and its Trademark are well-known in the fields of insurance and investments products;
- The Respondent used the Disputed Domain Name to create email addresses with the first and last names
of real employees of the Complainant. These email addresses were used to impersonate these employees,
to offer fraudulent investment products, and to illegitimately collect and use personal data (Annexes 21 and
22).

Therefore, according to the Complainant, the Respondent had knowledge of the Complainant’s Trademarks when registering the Disputed Domain Name, and the Respondent is unfairly and intentionally disrupting its business and misleading consumers to sell financial products falsely presented as being offered by the

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Complainant.

Finally, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

First of all, the Panel finds that the Complainant has provided evidence that it has prior rights in the
Trademark.

Then, the Panel notices that the Disputed Domain Name is composed of the reproduction of the distinctive element of the Trademark “GENERALI”, to which has been added (i) the term “europe” and (ii) the generic Top-Level Domain (gTLD) “.com”.

The addition of the geographical term “Europe” does not avoid a finding of confusing similarity. The dominant element of the Complainant’s Trademark is recognizable within the Disputed Domain Name.

Furthermore, the gTLD “.com” does not affect the confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.

Consequently, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s

Trademark. The first element of paragraph 4(a) of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof
under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the
Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See
Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Hence, after the Complainant has made prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.

In this case, the Complainant brings forward the following elements:

- No license or authorization has been granted by the Complainant to the Respondent;
- The Respondent is not known under the Disputed Domain Name;
- The Respondent has no relationship whatsoever with the Respondent.

Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Moreover, use of the Disputed Domain Name for illegal activity (e.g., impersonating the Complainant’s employees and using their pictures in a phishing activity) cannot confer rights or legitimate interests on the Respondent, see section 2.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Respondent has not responded to the Complainant’s contentions and therefore not proved otherwise.

Given these circumstances, the Panel finds that the second element of the paragraph 4(a)(ii) of the Policy is

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satisfied.

C. Registered and Used in Bad Faith

It is commonly admitted that the use of the domain name to send emails impersonating the Complainant to
target its customers using a fraudulent scheme constitutes bad faith (See Minerva S.A. v. Whoisguard
Protected, Whoisguard, Inc., / Greyhat Services, WIPO Case No. D2016-0385).

It is established that the Respondent impersonated the Complainant by sending emails allegedly signed by the Complainant’s employees and incorporating the Complainant’s Trademark and graphic identity. The Panel accepts that this was a clear attempt to target the Complainant’s customers using a fraudulent scheme. This behavior clearly indicates that the Disputed Domain Name was registered and is being used in bad faith.

In addition, the Respondent’s failure to formally reply to the Complainant’s contentions give no other basis to the Panel to believe that the Disputed Domain Name might conceivably be put to good faith use.

Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate.

Consequently, the Panel finds that the third and final element of the Policy is met.

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-europe.com> be transferred to the Complainant.

/Isabelle Leroux/
Isabelle Leroux
Sole Panelist
Date: May 11, 2022