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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Danish Re Underwriting Agencies ApS v. A/S Det Kjobenhavnske Reassurance-Compagni

Case No. D2000-1096

 

1. The Parties

The Complainant is Danish Re Underwriting Agencies ApS, a corporation organized and existing under the laws of Denmark, located and conducting business at Gammel Torv, 14-16, 1457 Copenhagen K, Denmark. The Respondent is A/S Det Kjobenhavnske Reassurance-Compagni of Midtermolen 7, DK-2100 Kobenhavn Ø Denmark.

 

2. The Domain Names and Registrar

The domain names in issue are:

"danishre.com"
"danish-re.com"
"danre.com"
"dan-re.com"

The Registrar is Network Solutions, Inc. ("NSI"). Confirmation from NSI was received by the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2000 stating that the Complainant had forwarded to it a copy of the Complaint and, further, that the Respondent was the current registrant of "danishre.com", "danish-re.com", "danre.com" and "dan-re.com" all of which names were at that date in "active" status.

 

3. Procedural History

The Complaint dated August 18, 2000 was received by the Center on the same day by email and on August 21, 2000 in hard copy together with the attachments.

Notice of the proceedings was served on the Respondent in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy") on August 28, 2000. The Respondent filed a Response to the Complaint on September 18, 2000, which was received by the Center on that date i.e. after the deadline of September 16, 2000.

A Panel has been constituted with three panelists, Mr. Nick Gardner, Mr. David Perkins and Mr. Knud Wallberg. Statements of acceptance and declarations of impartiality and independence have been filed by the Panelists.

The Complainant filed a Request for leave to file a Reply to Response and the Reply itself on September 25, 2000.

On September 28, 2000 the Respondent filed a Reply in response to the Complainant’s Reply to Response.

The date scheduled for the Panel to render its decision is November 1, 2000. The Panel in its discretion admits and has taken all the above filed material into account.

The Complainant is represented by Kathy Silberthau Strom, Cahill Gordon & Reindel, 1990 K Street, N.W., Suite 950, Washington DC 20006. The Respondent is represented by Christian Akhoj, International Patent-Bureau, Hoje Taastrup Boulevard 23, DK-2630 Taastrup, Denmark.

 

4. Factual Background

The Complainant offers reinsurance services in various locations, including the United States, Europe and the Far East.

Between May 1999 and April 2000, the Complainant collected approximately $117,400,000 in annual gross premiums for its services.

The Complainant announced in a press release on or about January 19, 1999 (there seems to be a difference in the papers as to whether this occurred on January 19 or 20 but it does not matter) the formation of the Danish Reinsurance Company Limited, which is referred to as "Danish Re" in the press release submitted annexed to the Complaint. The release stated "Danish Re will form and capitalize a new Lloyd’s agency and syndicate, which will be the underwriting base for a world wide insurance and reinsurance business". The announcement appears to have been fairly widely reported in the press for the reinsurance industry following the announcement on or about January 19, 1999.

A number of the Respondent’s staff joined the Complainant, including the Respondent’s former London Managing Director and former Chief Executive Officer, Mr. Corinth-Hansen.

On January 21, 1999 the Complainant applied in Denmark to register as company names "Danish Re Underwriting Agencies A/S" and "Danish Reinsurance Agency Ltd A/S". These names were registered on March 16, 1999.

The Respondent registered the domain names in dispute on January 31, 1999. At that date the Complainant had no trade mark applications in respect of "Danish Re".

The Complainant is the proprietor of registered Danish trade marks for "DANISH RE", "DANISHRE " and "DANISH.RE" in each case for financial affairs in the form of insurance underwriting and consultancy in this connection (Class 36). All three registrations have an effective date of February 11, 1999 and are being opposed by the Respondent on the basis that "DANISH RE" is devoid of any distinctive character per se.

The Complainant has also applied to register "DANISH RE" as a trademark for insurance and reinsurance underwriting services in a number of other jurisdictions including the European Community and Australia. The Complainant’s related company, Danish Re (Bermuda) Limited, is the owner of pending trademark applications for "DANISH RE" in the United States.

The Respondent has alleged that, prior to the registration of any of the domain names in dispute, the Complainant lacked the necessary official Danish concession to conduct insurance activities, implying that the Complainant was not at that time entitled to register any name indicating activities within the insurance field. The Complainant in its Reply asserts that such an "official Danish concession" was not necessary under Danish law in order to register the company names and provides an opinion from its in-house legal counsel which support this. Accordingly, the Complainant claims that it was entitled to use and register the names as of January 19, 1999 when it announced its commercial activities.

 

5. The Complainant’s Contentions

These may be summarized as follows:

The Complainant claims that it is known and referred to in the reinsurance industry as "Danish Re" and that to the best of the Complainant’s knowledge and belief the Respondent has never operated a business in connection with or which has used the name or marks "DANISH RE" or the mark or name "DAN RE".

The domain names "danishre.com" and "danish-re.com" are identical to Complainant’s use of "Danish Re " and to its registered "DANISH RE" trademarks;

The domain names "danre.com" and "dan-re.com" are confusingly similar to Complainant’s use of "Danish Re" and to its registered trademarks including "DANISH RE". In support of this the Complainant argues that there is a substantial similarity in sound and appearance between "danre.com" and

"dan-re.com" on one hand and the "DANISH RE" marks on the other, "dan" being a natural abbreviation of "Danish".

In addition, the domain names "danre.com" and "dan-re.com" are identical to Complainant’s use of "danre". An example given by the Complainant is its use of the email address

danre@danre.net

. "DANRE" is also in use by the Complainant as the name of its Singapore operation.

The Respondent is quite familiar with the services of "Danish Re" and competes with them and will also be familiar with the use of the mark and name "DANISH RE " by the Complainant.

The Complainant submits that the registration and use by the Respondent of the domain names in dispute are solely for the purpose of disrupting the Complainant’ s business and preventing it from being able to use these domain names. In support of this, the Complainant observes that the Respondent did not seek to register the domain names in dispute, or take any other steps to claim any rights to use "Danish Re", until after January 19, 1999 when the Complainant first publicly announced the launch of its "Danish Re" business. In this regard the Complainant says the Respondent learned of the formation of the Complainant’s "Danish Re" business at least as early as January 20, 1999.

On January 28, 1999 (i.e. after the Complainant’s application on January 21, 1999 to register its company names) the Respondent applied for the company names Danish Reassurance Company Limited, Danish Reinsurance Limited and Danish Re Limited Further, on February 16, 1999 the Respondent applied to the Danish Patent Office to register as trade marks "Danish Re Copenhagen" and "The Danish Reinsurance Company".

On March 2, 1999 the Respondent filed an application for a Community TradeMark for "DANISH RE COPENHAGEN". This application is being opposed by the Complainant.

The Respondent is now and has been since March 21, 2000 using the domain names in dispute to direct users to its "Copenhagen Re" website, normally found under

www.copre.com

but the Respondent makes no use of the marks "DANISH RE" or "DAN RE" actually at that site.

By using the domain names in dispute in such a way, the Respondent has attempted to attract users to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship or affiliation of the websites at "danishre.com", "danish-re.com", "danre.com" and "dan-re.com".

The Complainant is aware of no evidence that the Respondent has attempted to make any bona fide offerings of goods or services in connection with the marks "DANISH RE" and or "DANRE".

The Respondent has refused to transfer the domain names to the Complainant even upon an offer of reimbursement of its costs, such offer having been made on several occasions.

The Respondent’s conduct constitutes bad faith registration and use.

The Complainant’s Reply evidence addresses a factual mistake as to the date of registration of the Complainant’s companies (later accepted by the Respondent, in its Reply evidence).

In addition, the Complainant refutes the allegation of reverse domain name hijacking and attaches a statement from Mr. Corinth-Hansen the former Chief Executive Officer of the Respondent (now with the Complainant) which states that so far as Mr. Corinth-Hansen is aware, the Respondent "has never been generally referred to by the public under any term including …’ Danish Re’ in connection with its services."

Mr. Corinth-Hansen also states that "Danish Re has on various occasions received correspondence from its customers, which correspondence erroneously initially has been sent to the Respondent as a result of the Respondent’s registration of the Domain Names in Dispute." Mr. Corinth-Hansen attaches, by way of example, a copy of a misdirected email from a customer.

The Respondent’s Contentions

The Respondent contends:

It has offered reinsurance services since 1915 on a world wide basis. Further, it has to a large extent and for many years been referred to as The Danish Reinsurer or Danish Reinsurance Group.

The Respondent asserts that it enjoys a significant reputation also under the term "Danish Re" due to the relevant public’s association between the name and the Respondent and that such an unregistered right has been in existence long before the formation of the Complainant and for this reason the Respondent has a legitimate interest in the domain names in dispute.

The Respondent and the Complainant are direct competitors both in Denmark and internationally.

The primary purpose of the Complainant at the time of formation of its business was to disrupt the business of the Respondent (1) by acquiring several employees from the Respondent and (2) by choosing a name which for years has been "nickname" of the Respondent.

The Complainant’s purpose is to gain goodwill rightfully belonging to the Respondent.

The Complainant had no rights in the term "DANISH RE" or the like, either as registered trade marks or unregistered marks based on use, prior to the Respondent registering the domain names in dispute on January 31, 1999.

The Complainant has not produced any evidence to indicate that it had a prior right to any relevant company name before registration of the domain names in dispute.

The Respondent rejects the validity of the Complainant’s evidence regarding the public announcement of its launch, on the grounds that it is not documented if, when, to what extent or from where the announcement was actually released to the public. Further, the Respondent contends that, regardless of any such release, no right is established by a mere announcement or by articles in the media.

Neither of the company names "Danish Reinsurance Agency Limited ApS" and "Danish Re Underwriting Agency ApS" are identical or confusingly similar to any of Respondent’s domain names in dispute and none of the domain names hinders the Complainant from registering or using its actual company names as domain names.

The term "Danish Re" is devoid of any distinctive character per se being a geographical term linked with a word generally descriptive of the services provided. Therefore the name is unregistrable as a word mark. On these grounds the Respondent has filed a request "for administrative annulment of the Complainant’s Danish trade mark registrations".

Although the Respondent’s "dan-re.com" domain name was registered after Complainant’s Danish trade mark applications for "danishre" it is asserted that the Complainant’s Danish trade marks are invalid and therefore there is no prior right and, further, the terms are not confusingly similar.

The Respondent registered the domain names in dispute as a legitimate defense against the above actions on the part of the Complainant in order to avoid confusion among the public and relevant markets. The registration of the domain names in dispute took place as an ordinary business decision and was in no way directed against any rights of the Complainant.

The links at the domain names have been set up technically so that they all point towards the home page of the Respondent in order to avoid confusion among the public. This does not constitute a sign of bad faith use. No one using the domain names in dispute could seriously believe he was in contact with the Complainant.

The Complainant has filed its Complaint in bad faith trying to retrieve the domain names from the Respondent and thereby attempting to reverse domain name hijack.

 

6. Discussion and Findings

The Panel has reviewed the Complaint, the Response, the Complainant’s Reply, the Respondent’s Reply and the documents annexed to each of these. In the light of this material this Panel’s finding are set out below.

The domain names "danishre.com" and "danish-re.com" are identical to the Complainant ’s "DANISH RE" registered trademarks. The domain names "danre.com" and "dan-re.com" are confusingly similar to the Complainant’s trade marks "DANISH RE" and identical to the company name of the Complainant’s Singapore branch, DANRE.

It is not the function of this Panel to rule on questions of Danish law nor to determine allegations of bad faith based on employees leaving one company and joining a competitor. So far as the Panel is concerned it has to determine whether the domain names were registered in bad faith. In this regard:

it is clear on the evidence that the Complainant’s intended business was widely announced on January 19 or 20, 1999.

The Respondent registered the domain names in the knowledge of the Complainant’s intended business and choice of name.

The Panel concludes that whether this amounts to bad faith depends on whether or not the Respondent can show, on the evidence, that it was doing so as a protective move because the Complainant was in fact setting up a business under a name that was associated with the Respondent. In other words did the Respondent have a prior (before January 19 or 20, 1999) interest in "Danish Re" as a name?

The Respondent’s claim in this regard is that it enjoys long standing reputation in, and has been referred to as, "The Danish Reinsurer" or "Danish Reinsurance Group". It says this is documented in Annex 5 to the Response. In fact the material contained in Annex 5 does not support this claim at all. The following are examples of the type of evidence Annex 5 contains

"Copenhagen Re, the London-based subsidiary of the Danish reinsurance group, unveiled an increase…";

"Danish and international reinsurance group Copenhagen Re is to convert its UK and Singapore operations…" and

"Danish reinsurer Copenhagen Re underlined its intention to grow in the Far East …"

In the light of this evidence the Panel rejects, on the balance of probabilities, the Respondent’s claim that it enjoys a significant reputation under the term "Danish Re" and that this term is a "nickname".

Accordingly the Panel concludes that the registrations were effected in bad faith in that the domain names were registered primarily for the purpose of disrupting the business of a competitor (see 4(b)(iii) of the Policy).

The Panel has considered the Respondent’s contention that at the time it registered the domain names the Complainant had no trade mark rights in respect of the words "Danish Re". The Panel does not regard this as fatal to the success of the Complainant’s Complaint – it clearly had plans to use the words and announced those publicly. Further, it is now accepted by the Respondent that the Complainant had sought registration of the relevant company names immediately after this announcement and before the domain names were applied for.

The Panel therefore concludes that the Complainant is correct and that the domain names in dispute were registered and have subsequently been used in bad faith.

 

7. Decision

In the light of the above findings, the Panel’s decision is as set out below.

The domain names are, in the case of "danishre.com" and "danish-re.com", identical to registered trade marks of the Complainant and, in the case of "danre.com" and "dan-re.com", confusingly similar to registered trade marks of the Complainant (see paragraph 4(a)(i) of the Policy).

The Respondent has no rights or legitimate interests in the domain names (see paragraph 4(a)(ii) of the Policy).

The domain names were registered and are being used in bad faith (see paragraph 4(a)(iii) of the Policy). The domain names were registered primarily for the purpose of disrupting the Complainant’s business (see paragraph 4(b)(iii) of the Policy).

The Panel finds that the bringing of this Complaint does not amount to reverse domain name hijacking.

This decision is the unanimous decision of the Panel.

This Panel directs that the domain names in dispute be transferred to the Complainant.

 

 

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Nick Gardner
Presiding Panelist

David Perkins Knud Wallberg
Panelists

Dated: November 1, 2000