The Complainants are Old Mutual Life Assurance Company (South Africa) Limited of Cape Town, Republic of South Africa, Old Mutual PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), 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, Republic of South Africa, Old Mutual Life Assurance Company Kenya Corner of Nairobi, Kenya, and Old Mutual Swaziland (Proprietary) Limited of Mbabane, Swaziland, represented by Spoor & Fisher, South Africa.
The Respondent is Private Whois, Knock Knock WhoIs Not There, LLC of Beaverton, Oregon, United States of America / Daria Werbowy of New York, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Automattic Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2017. On November 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2017, 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 December 22, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on January 8, 2018.
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 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2018.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on February 21, 2018. 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
At the time when the disputed domain name was registered (on June 8, 2017), the Complainants were the registered proprietors of the trademark OLD MUTUAL in numerous countries worldwide. The OLD MUTUAL trademark is registered in relation to financial services in the Republic of South Africa, the United States of America, Namibia, India, United Kingdom, the Republic of Ghana, the Federal Republic of Nigeria, Austria, Switzerland, Colombia, Mexico, Singapore, United Arab Emirates, the Republic of Uganda, the Republic of Botswana, the Republic of Zambia, Zanzibar, United Republic of Tanzania, the Republic of Mozambique, Angola, Uruguay, the Republic of Zimbabwe, the republic of Kenya, Panama, the Republic of Burundi, the Republic of Mauritius, Democratic Republic of Congo, South Sudan, the Republic of Tunisia, the Arab Republic of Egypt, the Kingdom of Swaziland, Federal Democratic Republic of Ethiopia, Federal Democratic Republic of Sierra Leone, Morocco, African Intellectual Property Organization (OAPI) and the Republic of Rwanda. The Complainant has submitted relevant registration certificates to the Panel.
The Complainant also maintains that it has strong common law rights in its OLD MUTUAL trademark. It has been using this trademark for over 150 years, with registrations in South Africa dating back to 1976.
The disputed domain name was registered on June 8, 2017. No website has been established in relation to the disputed domain name. 5. Parties’ Contentions A. Complainant
The seven Complainants (hereinafter “the Complainant”), listed on the London, Johannesburg, Zimbabwe, Malawi and Namibian stock exchanges as “Old Mutual”, make up an international investment, savings, insurance and banking group, established in 1845 in the Republic of South Africa, with more than 18.9 million customers and UK£ 168.2 billion assets under management.
In November 2017, the Complainants became aware that the disputed domain name was created, registered and is being used as part of what they refer to as an “Advance Fee Scam”: batches of emails are thereby sent to consumers (Old Mutual clients and others) offering loans supposedly from Old Mutual Finance. According to the Complainant, the Respondent, because it has registered the disputed domain name, can create any email address ending with [@], which to the untrained eye seems to be legitimate and emanate from the Complainant. The Complainant alleges that an increasing number of consumers is falling victim to the scam. An active website is not required to engage in this scam and the Respondent has not in fact created one. The disputed domain name itself is being used to create confusion and deception and to further the Respondent’s fraudulent activities, says the Complainant. The Respondent’s emails also incorporate the Complainant’s logo.
According to the Complainant, its registered trademarks are inherently distinctive of the Complainant and it’s commercial activities in South Africa and across the world. The distinctiveness of the mark has been sustained and developed from the Complainant’s substantial advertising and promotional activities, resulting in exclusive rights for the Complainant.
The Complainant maintains that the disputed domain name contains the dominant and essential features of its trademark. The addition of the term loan does not serve to distinguish. Instead, the word “loan” directly designates the type of services which the Complainant offers under it’s OLD MUTUAL trademarks. This further enhances the possibility of confusion between the offending domain name and the registered OLD MUTUAL trademarks of the Complainant. The likelihood of confusion is also furthered by the Respondent additionally misusing the Complainant’s logo in email correspondence.
The Complainant also points out that as the Respondent uses the offending domain name as part of a fraudulent scam, it is not used by the Respondent in the bona fide offering of goods and services.
The Complainant also points out that the Respondent does not conduct any business in relation to any goods or services under the name OLD MUTUAL LOAN. This is evident considering that the Respondent is not even using the offending domain name in relation to an active website. The Complainant submits that the Respondent is not commonly known by the disputed domain name and has merely registered the domain name to create confusion and deception and as a tool to further the Respondent’s fraudulent activities in misrepresenting itself as the Complainant. When the public is defrauded by the Respondent’s activities by way of the disputed domain name, they are likely to attribute this to the Complainant. Alternatively it will cause much harm to the Complainant’s reputation in the trade. The Complainant says that it takes it upon itself to protect the public against the Respondent’s misuse of the OLD MUTUAL name.
In terms of bad faith, the Complainant maintains that it is clear from the facts above that the Respondent’s use of the offending domain name is intended to fraudulently attract the Complainant’s customers or potential customers for illegitimate commercial gain. These possible clients will use or wish to use the disputed domain name on the assumption that there is a link between the Complainant and the Respondent, which there clearly is not.
The fact that the Respondent is not even using the disputed domain name in relation to an active website further indicates its bad faith intention in registering the offending domain name. In fact, the Complainant submits that the Respondent is using the offending domain name in a fraudulent manner as part of a scam for its own financial and criminal gain. In the circumstances, the Complainant submits that it has discharged the onus of showing that the offending domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the registered trademark OLD MUTUAL of the Complainant. However, it includes that distinctive trademark as its initial and most prominent part. The addition of the term “loan” (separated by a dash) only further adds to the impression that the disputed domain name is authorized by or connected with the Complainant, since the latter offers financial services including monetary loans. Consumers will be confused into thinking that there is a legitimate connection between the disputed domain name, in whatever context it is placed before them, and the Complainant. Such a connection does not in fact exist.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s OLD MUTUAL trademark. B. Rights or Legitimate Interests
There is nothing before the Panel to indicate that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or authorized to use the OLD MUTUAL trademark belonging to the Complainant in any way, nor is it known under that name, nor does it use the mark for legitimate business purposes. The only evidence of any activity by the Respondent in relation to the disputed domain name is its apparent use for the sending of fraudulent emails. It seeks to derive an illegitimate and dishonest advantage from using the disputed domain name with its incorporated OLD MUTUAL trademark. That activity is not of a kind to vest rights or legitimate interests in a Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant has put material before the Panel that indicates that the Respondent has used the acquisition of the disputed domain name simply for the purpose of obtaining an apparently legitimate email address. It has then used this address, which gives the impression to consumers that the sender is the Complainant or legitimately connected with the Complainant, to obtain some financial advantage. This is at best a dishonest and most likely a fraudulent practice, which takes illegitimate advantage of the reputation the Complainant has built up over many years for its legitimate financial services.
Therefore the Panel holds that the disputed domain name was registered and 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.
William A. Van Caenegem
Sole Panelist
Date: March 6, 2018
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