The Complainants are Old Mutual Life Assurance Company (South Africa) Limited of Cape Town, South Africa; Old Mutual PLC of London, United Kingdom of Great Britain and Northern Ireland; Old Mutual Investment Advisers, Inc. of Boston, Massachusetts, United States of America; Old Mutual Life Assurance Company Zimbabwe Limited of Harare, Zimbabwe; South African Mutual Life Assurance Society of Cape Town, South Africa; Old Mutual Life Assurance Company Kenya of Nairobi, Kenya; and Old Mutual Swaziland (Proprietary) Limited of Mbabane, Swaziland, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is OLDMUTUAL FINANCE of Johannesburg, South Africa / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2016, 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 Complainants on January 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 6, 2017.
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 January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2017.
The Center appointed Archibald Findlay S.C. as the sole panelist in this matter on February 9, 2017. 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 seven Complainants are all related entities and form part of the Old Mutual Group of companies (the “Group”) internationally. The Group carries on the business of international investments, savings, insurance and banking and was established in South Africa in 1845. The Group has more than 18.9 million customers and assets of GBP 168.2 billion under its management. The Complainants are listed on the London, Johannesburg, Zimbabwe, Malawi and Namibian stock exchanges as Old Mutual and information in respect of its activities can be accessed from its websites online, notably “”. The Group has registered trademarks in many countries around the world and has put up schedules detailing a selection of them. The first of these refers to some 24 countries in which they held registration, most of which are in the name of the Second Complainant and the schedule sets out details thereof.
The Complainants have put up a further schedule of 172 trademarks also registered to various of them and other companies (who are not Complainants) in the Group. It is significant that the earliest of the registered OLD MUTUAL trademarks set out in the various annexures appears to be trademark number 1976/03077 which is registered in the name of the First Complainant with effect from January 24, 1980. The First Complainant also has several other registered trademarks.
The schedules also reflect a large number of trademarks registered in different countries thereafter in the name of the Second Complainant. Further trademarks registered also thereafter in the name of the First, Second, Third, Fifth and Seventh Complainants specifically. Among the trademarks put up are all either a wordmark OLD MUTUAL or a wordmark containing the words “old mutual” and describing a specific service in one of the businesses.
The schedules show that most, if not almost all, of the trademarks registered in foreign countries (i.e. not South Africa) have been registered in the name of the Second Complainant.
The Third Complainant is the registered owner of the Old Mutual trademark number 2051432 having been registered on April 8, 1997 in the United States of America.
The Fifth Complainant is the registered owner of the Namibian OLD MUTUAL trademark number 97/0676.
The Seventh Complainant is the registered owner of the OLD MUTUAL trademark in Swaziland, number 193/2015.
The trademarks set out in the schedules registered in the names of these Complainants are valid and operative. Although the Complaint does not mention the trademark holding of the Fourth and Sixth Complainants, Kenya and Zimbabwe are listed as being two of the 37 countries in which OLD MUTUAL trademarks are held.
The disputed domain name was registered on September 15, 2016. The Respondent was using the disputed domain name as part of a scam for its own commercial gain. The disputed domain name currently resolves to the website “”. 5. Parties’ Contentions A. Complainants
The Complainants contend that they became aware of the disputed domain name during October 2016 and that once it was registered it was being used as part of what they describe as an “advanced fee scam”. The Complainants put up copies of documents which have been sent to various consumers, both Old Mutual and non-Old Mutual clients, offering loans from Old Mutual Finance.
The Complainants point out that the disputed domain name appears at first blush to be legitimate and, in consequence, an increasing number of consumers are falling victim to what is described as the “advanced fee scam”. The Complainants point out further that the Respondent is not yet using an active website but they have concerns that this may well occur in the near future and that further confusion is already being created by the Respondent indulging in what they describe as fraudulent activities in misrepresenting itself as Old Mutual and also using the identical Old Mutual logo which is depicted on the Complainants’ documents.
The Complainants allege that the Group is the proprietor of the OLD MUTUAL trademark together with various marks incorporating that wordmark and that, although the Group holds far too many registrations worldwide to be included in this proceeding, they have furnished a selection of the OLD MUTUAL trademark registrations worldwide, naming 37 countries most of which are referred to in the schedules put up. They make particular mention of the Old Mutual websites, one of which is “”, and point out this is identical to the disputed domain name apart from the generic Top-Level Domain (“gTLD”) “.com” added.
The Complainants therefore submit they have acquired substantial statutory and common law rights over the many years of use of the name Old Mutual, that their registered trademarks are inherently distinctive and through its extensive user, the major advertising and promotional activities carried out by them, there is no question but they have rights derived from their trademarks and that the disputed domain name is identical if not confusingly similar to their trademarks.
They proceed to contend further that the Respondent has no rights or legitimate interests in respect of the domain name in that no legitimate user is taking place in the light of the soliciting of custom in the name of Old Mutual which is clearly for commercial gain and misleading consumers so that they cannot be bona fide. Moreover, having identified the Respondent in the WhoIs report there is no question that the Respondent carries on any business in relation to any goods or services under the name Old Mutual Finance and is using the Complainants’ Old Mutual name to attract customers to it illegally, if not fraudulently, by so misrepresenting itself.
The Complainants further aver that the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name and that in any event, it cannot be bona fide, more particularly in that it does not have any business interest in the Complainants’ registered trademarks nor has it obtained permission from the Complainants to make use thereof.
The Complainants contend that what they have already referred to (summarized above) shows that the disputed domain name must have both been registered and is being used in bad faith intentionally to attract commercial gain from Internet users as well as disrupting the business of the Complainants. It is also averred that the use of the disputed domain name was clearly fraudulent in order to attract the Complainants’ customers or potential customers for illegitimate commerce gain and that this fraud is what they describe as part of a scam for the Respondent’s financial and criminal gain in the circumstances. Thus it must follow that the disputed domain name was registered and is being used in bad faith. B. Respondent
As pointed out earlier, in the absence of any response, reaction or communication from the Respondent, nothing is before the Panel reflecting any views, comments or likely defenses from the Respondent. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainants have rights;
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii) of the Policy. B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainants bear the burden of proof in respect of each of the three elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainants to a finding in its favor by reason thereof, as failure by the Complainants to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc.,WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA,WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainants but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd,WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942).
From this the Panel considers that it may be accepted that the Respondent does not deny the facts asserted and contentions made by the Complainants based on such facts (Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994; Standard Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. A Domain Privacy/Host Master, Transure Enterprises Ltd.,WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainants (Reuters Limited v. Global Net 2000 Inc., supra; RX America LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. A Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group Auchan v. Anirban Mitra,WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc.,WIPO Case No. D2012-1213). C. Identical or Confusingly Similar
As pointed out above, both in the factual background and the Complainants’ contentions, it is apparent that the Complainants consider that as they form part of the Group, this entitles them to act collectively in respect of any violation of the trademark or domain name rights which one or more of the members of the Group may hold.
The Panel is not unmindful, particularly since the Complainants’ principal office is situated in South Africa of the view expressed by the Supreme Court of Appeal in AM Moola Group Ltd and Others v. Gap Inc and Others, 2005 (6) South African Law Reports 568 at 584I – 585D (particularly at 585D) as to a group of companies owning or controlling trademarks.
It was there found that a group of companies in South Africa could not merely claim user by a member thereof as being the user required by the Trade Marks Act, No. 194 of 1993 (hereinafter referred to as “the Trade Marks Act”) as that company within the group had to establish that it was a user as prescribed by the Trade Marks Act.
That principle was, however, limited to bona fide user in terms of the Trade Marks Act, supra, and the Panel is of the view that the views in that case can be distinguished from the present circumstances in that members of the Group, in this UDRP procedure, are in a different position. Five of the seven Complainants, particularly the First and Second Complainant, owned a series of trademarks each in various countries in the world. The remaining two, being the Fourth and Sixth Complainants have not put up any evidence of trademark registrations in their names.
The Panel has also not overlooked the caveat expressed in Imperial College of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association – ICMSAA),WIPO Case No. D2000-1079, cited by the Complainants (albeit on a different aspect), which sets out what is considered to be the minimum information to be set out by a complainant to prove at least prima facie rights based upon trademark registrations.
The Panel must, however, also consider whether there are circumstances which could show that the Group consists of a series of affiliated companies who all trade under the same banner collectively and that reliance may be established depending upon the intra-enterprise relationships or even licensing arrangements inter se, they may all be involved in what can be considered to be a common venture (Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson,WIPO Case No. D2004-0097) and thus establish an individual member company thereof has locus standi as a co-complainant.
Applying the principles enunciated and in the light of the above, the Panel is satisfied that the Complainants have established trademark rights in OLD MUTUAL and that they have common grievance against the Respondent, and that the Respondent has engaged in common conduct that has affected the Complainants’ individual right in a similar fashion. (See also of theparagraph 4.16 WIPO Overview 2.0) Five of them own individual trademarks and that, in any event, the Fourth and Sixth Complainants could possibly be harmed by unlawful interference with the rights flowing therefrom enjoyed by any particular member or members of the Group and that interference would impact on the Group generally and thus other members of the Group as well from a commercial and business point of view. This could entitle them to bring this Complaint forward as joint Complainants had that foundation been laid in the Complaint by the Complainants vis-à-vis the Fourth and Sixth Complainants.
The Imperial College of Science, Technology & Medicine v. Zahid Khan (for Imperial College Management School Alumni Association – ICMSAA), supra, however, makes it plain that the minimum threshold (when a complainant relies upon a trademark as the basis of its right to prevent wrongful registration and use of a domain name in violation of those of a complainant) is prima facie proof by a complainant of registration in its name of the requisite trademark which is valid and enforceable. Despite examination of the schedules put up by the Complainants, the Panel has not found such evidence in the Annexures to the Complaint or a description of any trademarks registered in the names of the Fourth and Sixth Respondent. Nor is there evidence of the nature alluded to in the Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson, supra (“Pro Dive Pty Ltd case”), as to possible interest in, or control of, any of the marks specifically referred to in the Complaint and the Annexures.
As an aside, the Panel shares the view in the Pro Dive Pty Ltd case, that a group of companies may collectively be complainants if sufficient evidence is put up as suggested in that case to establish the entitlement of each company to rely upon a trademark registered in the name of another company in the group. This is, however, not the basis advanced by the Fourth and Sixth Complainants. (See also paragraph 1.8 and 4.16 of the WIPO Overview 2.0)
The fact that this would non-suit the Fourth and Sixth Complainants does not mean that the Complaint must be dismissed. The other five Complainants have amply established their trademark rights and any finding in their favor will, in all probability redound to the benefit of the Group as a whole and achieve the result they seek.
It is also apparent from the selection of trademark registrations put up that all predate the disputed domain name registration and that it follows as a matter of probability therefore that the domain names based on the OLD MUTUAL trademark held by one or more of the Complainants or the Group as a whole also predate the disputed domain name registration.
The fact that the word mark OLD MUTUAL has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is confusingly similar to the Complainants’ registered marks (Quixtar Investments, Inc. v. Dennis Hoffmann,WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking /Neo net Ltd,WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,WIPO Case No. D2008-0016).
The Panel holds the further view that the addition of the word “finance” and of the gTLD “.com” after the trademark OLD MUTUAL is not sufficient to exclude the confusing similarity (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans,WIPO Case No. 2002-0367; Fry’s Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar,WIPO Case No. D2006-0240; and Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero,WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainants have established the first element in terms of paragraph 4(a)(i) of the Policy. For convenience these Complainants will be referred to hereinafter collectively as “the Complainants”. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or 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) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainants to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainants establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent to rebut or displace the Complainants’ evidence in this regard, despite the overall burden of proof remaining upon the Complainants to disprove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainants, and the enquiry must therefore focus upon what is said by the Complainants in order to determine whether or not it has been so established.
The Complainants contend that they are the owner of the trademark OLD MUTUAL, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainants. It follows, therefore, that the Respondent has no rights to the use of that mark as part of a domain name for purposes of the Policy. (Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertain Corporation v. Japan Nippon,WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless,WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems,WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., supra).
Apart from there being no authorization on the part of the Complainants, there is no relationship or association between the Complainants and the Respondent, whether by license, express, implied or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, supra).
Of particular weight, in the view of the Panel, is the fact that the documents issued by the Respondent are soliciting custom and monies from Internet users in the name of Old Mutual without having any rights, legitimate interests or authority derived from the Complainants and that this is a factor which strongly cuts against there being any legitimacy in respect of the activities of the Respondent.
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainants should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainants has established the second element of the Policy. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants who is the owner of the trademark or service mark or to a competitor of that Complainants, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”
In this case, the Complainants argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy given that the disputed domain name was used in connection with what the Complainants has described as a scam “for the Respondent’s financial gain”. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd. and Sanlam Ltd. v. Atlantic Internet Services (Pty) Ltd, supra). See also Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742; Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128; Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387.
Moreover, the registration of the disputed domain name, which is confusingly similar to the Complainants’ trademark, with the gTLD “.com” is indicative of the Respondent’s intent to trade on the value established by the Complainants in its mark, to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website as and when it may become operative and by receiving compensation from others if these would-be customers are routed away from the Complainants and to the Respondent. Such a practice also would constitute bad faith (Yahoo! Inc. and Geo Cities v. Data Art Corp., Data Art Enterprises, Inc., Stonybrook Investments, Globalnet 2000, Inc., Powerclick, Inc., and Yahoo Search Inc.,WIPO Case No. D2000-0587).
The selection of a domain name that is identical or confusingly similar to the Complainants’ trademark, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainants and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC,WIPO Case No. D2003-0128; Encyclopaedia Britannica, Inc. v. LaPorte Holdings,WIPO Case No. D2005-0866; Barclays Bank PLC v. Miami Investment Brokers Inc.,WIPO Case No. D2012-1213).
The Panel is therefore satisfied that the Complainants has established the third element under paragraph 4(a)(iii) of the Policy. 7. Decision
As it may not be possible, or be difficult, for the disputed domain name to be transferred to all the Complainants (Pro Dive Pty Ltd, supra; Asprey & Garrard Limited and Garrard Holdings Limited v. /domainnames.html,WIPO Case No. D2001-1501), the Panel agrees with the Complainants, as to the appropriate order, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules and the Panel, accordingly, orders that the disputed domain name be transferred to the First Complainant (Old Mutual Life Assurance Company (South Africa) Limited).
Archibald Findlay S.C.
Sole Panelist
Date: February 16, 2017
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