The Complainant is Swiss Reinsurance Company Ltd. of Zurich, Switzerland, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Farris Nawas of Austin, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2014. On October 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2014.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on November 24, 2014. 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 wholesale provider of reinsurance, insurance and other insurance based forms of risk transfer. Dealing direct and working through brokers, its global client base consists of insurance companies, mid to large sized corporations and public sector clients. It offers standard products and tailor made coverage across all lines of business.
It is proprietor of the following registered trade marks on which it relies:
- United States registered trademark No. 2014747 for the word mark SWISS RE GROUP in class 36 for “insurance services, namely reinsurance underwriting services”, filed on August 29, 1994.
- United States registered trademark No. 2016777 for the word mark SWISS RE in class 36 also for “insurance services, namely reinsurance underwriting services”, filed on August 29, 1994.
- International trademark No. 1067014 for the word mark SWISS RE in classes 9, 16, 35, 36, 41 and 42 for various goods and services, with a registration date of November 26, 2010 and designating Australia, Bahrain, CTM, Israel, Japan, South Korea, Norway, Oman and Singapore.
(SWISS RE trade marks).
The Complainant is also owner of the domain name created on November 10, 1995. It operates a website at that location featuring information about its global activities. Evidence shows that as at July 14, 2014 Google searches for “swiss re” and “swiss re careers” returned as the first result a link to the Complainant’s website located at .
The Complainant states that it has used the SWISS RE trademarks since 1994, and that it currently uses those trademarks in external communication and branding, including on its website, products themselves, billboards and advertisements.
The Complaint states that its trademark is very well known globally. A previous panel has found that the Complainant is “well-known” under the trademark SWISS RE and its domain name (Schweizerische Rückversicherungs-Gesellschaft v. Texas International Property Associates – NA NA, WIPO Case No. D2007-1455).
The disputed domain name was created on May 3, 2014 (the “Relevant Date”). “.careers” is a generic top level domain (“gTLD”). Evidence shows that as at July 14, 2014, the disputed domain name was being used as a parking page hosting sponsored links. The parking page included the text “Would you like to buy this domain?” situated beside a button marked “Learn more”.
Evidence shows that on September 1, 2014, the Complainant sent a cease and desist letter to the Respondent seeking transfer of the disputed domain name to it. The Respondent replied by email on September 8, 2014, stating (inter alia):
“My intentions in registering the disputed domain name were not to infringe on your client’s IPs [sic], confuse/misdirect any customers, nor for any commercial purposes or any financial gains. I have acquired the domain through an online public offering and the acquiring process is fully legal.
However, as a show of good faith, if your client is willing to acquire the domain, I will happily transfer it immediately. All I ask in return is reimbursements [sic] of the out-of-pocket expenses related to the domain. These expenses will sum to USD 425.”
On September 12, 2014, the Complainant’s attorney replied requesting proof of the out-of-pocket expenses referred to before September 18, 2014. The Complainant states that the Respondent never replied to this email.
The Complainant has provided evidence that as at October 20, 2014, the Respondent’s registrar GoD was offering for sale a domain name with the “.careers” top level domain for Euro 53.13.
The Complainant has pointed to seven previous UDRP or Uniform Rapid Suspension (URS) decisions adverse to the Respondent (namely,WIPO Case No. D2014-0705; NAF Case No. FA1404001554566; NAF Case No. FA1404001553753; NAF Case No. FA1404001552908; NAF Case No. FA1404001552547; NAF Case No. FA1403001547721; NAF Case No. FA1402001545160). 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademark SWISS RE as at the Relevant Date by way of its United States and international registered trademarks specified above. Even though not decisive under the first element of the Policy, the Panel notes that each registered trademark well predates the Relevant Date.
The Panel considers that the Complainant’s SWISS RE registered trademark is instantly recognizable within the disputed domain name and that the gTLD “.careers” does not differentiate the disputed domain name from the Complainant’s trademark.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states, and the Panel accepts, that it has not granted the Respondent any authorization by which it could use the disputed domain name.
The Respondent did not use the disputed domain name in his correspondence with the Complainant, and the SWISS RE (or similar) is not specified in the relevant WHOIS records.
The Complainant notes that, in his response to the Complainant’s cease and desist letter, the Respondent did not provide any indication of any right or legitimate interest in the disputed domain name.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any formal Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
As already outlined, the Complainant had United States trademark registrations, and an international trademark registration designating numerous jurisdictions, for SWISS RE (and a mark incorporating it) which well pre-date the Relevant Date. Further, the facts establish and a previous panel has recognized that the Complainant was and is “well-known” under the trademark SWISS RE. The Panel finds that the Respondent must have been aware of the Complainant’s distinctive trademark at the time of registration of the disputed domain name. In circumstances where:
(a) the Respondent did not dispute in his response to the Complainant’s cease and desist letter that the Complainant had rights to the trademark SWISS RE; and
(b) the Respondent failed to respond to the Complaint (from which the Panel is entitled to draw adverse inferences),
the Panel is satisfied that the disputed domain name was registered in bad faith.
As to the second limb of the third element, the Panel is also satisfied that the disputed domain name is being used in bad faith. In this regard the Panel relies on the following:
- The Respondent offered to sell the disputed domain name to the Complainant for USD 425 in response to the Complainant’s letter of demand. Evidence shows that the cost of acquiring a domain name in the “.careers” gTLD with the Respondent’s registrar is Euro 53.13. The Panel is therefore satisfied that the Respondent was using the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration and in excess of his documented out-of-pocket costs directly related to the disputed domain name;
- The Respondent has been the subject of seven adverse UDRP and URS decisions. Examples include the following domain names registered by the Respondent:
, , and .
The Respondent has thus engaged in a pattern of conduct of preventing trademark holders from reflecting their mark in a corresponding domain name;
- The Respondent did not respond to the Complaint from which the Panel is entitled to draw adverse an inference;
- At the time of the Complaint the disputed domain name was being used to host sponsored links. This demonstrates an intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
In all the circumstances the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: December 8, 2014
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