The Complainant is Sagicor Financial Corporation Limited of West Palm Beach, Florida, United States of America (“United States”) represented by Shutts & Bowen LLP, United States.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / VMI INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom (“Grand Cayman”). 2. The Domain Name and Registrar
The disputed domain name (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 November 28, 2018.
On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
On November 30, 2018, 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 5, 2019 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 December 10, 2018 and a second amended Complaint on December 18, 2018.
The Center verified that the Complaint 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 December 19, 2018.
In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2019.
The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 9, 2019.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 18, 2019. 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 belongs to a financial services group established in 1840, listed on the stock exchanges of London, United Kingdom, Trinidad and Tobago, and Barbados.
The Complainant and its affiliates operate in 22 countries across the Caribbean, United Kingdom, United States, and Latin America, offering financial services including life and health insurance, banking, management of annuities, pensions, employee benefits, as well as investment services.
The Complainant owns the following trademark registrations in the United States:
Trademark
Registration Number
Registration Date
Class
Jurisdiction
SAGICOR & Design
3008558
October 25, 2005
36
United States
SAGICOR
4048313
November 1, 2011
36
United States
The Complainant owns thedomain name which was registered on March 17, 2006.
The disputed domain name was registered on December 31, 2012 and displays pay-per-click (PPC) links. 5. Parties’ Contentions A. Complainant
The Complainant states the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Complainant is the owner of trademark registrations in the United States for SAGICOR, which are currently in use in said country.
That the disputed domain name is confusingly similar to the Complainant’s trademark SAGICOR because the dominant portion of the disputed domain name is identical to said trademark, except for an appended “e” that does not affect its sound or pronunciation.
That the disputed domain name includes two descriptive terms: “life”, which refers to life insurance (a type of service) and “usa”, which refers to the United States (a geographic location). That these additional terms are intended to confuse relevant consumers because the Complainant provides life insurance services within the United States.
That the Respondent’s use of the disputed domain name is likely to cause confusion as to the affiliation or association of the Respondent with the Complainant, and the Complainant’s sponsorship of the Respondent.
That there is a high likelihood that Internet users will type the Complainant’s trademark SAGICOR in the browser address window and be directed to the Respondent’s Web site.
That the Respondent’s use of the disputed domain name will dilute the value of the SAGICOR trademark. (ii) The Respondent has no rights or legitimate interests in the disputed domain name.
That the Respondent has no rights to or legitimate interests in the disputed domain name. That the Respondent was at no time authorized by the Complainant to use the trademark SAGICOR.
That the Respondent has never been affiliated to the Complainant or any of the goods and services associated with the trademark SAGICOR.
That the Respondent is not commonly known by the name SAGICOR.
That there is no evidence showing that the Respondent uses the disputed domain name in connection with a bona fide offering of goods and services, or that the disputed domain name is being used for a legitimate fair use without intent for commercial gain.
That the Respondent’s Web site appears to be intentionally designed to confuse the consuming public with the Complainant’s legitimate Web site to which the disputed domain name resolves, as it includes misleading links that provide additional links to third party Web sites related to insurance services offered by direct competitors of the Complainant.
That the Respondent’s registration of the disputed domain name constitutes an unauthorized conduct intended to profit from the Complainant’s SAGICOR trademark.
That the Web site to which the disputed domain name resolves includes a banner indicating that the disputed domain name is for sale, which further evidences a bad faith intent to profit on the side of the Respondent. (iii) Registration and Use of Bad Faith
That the Respondent’s registration of the disputed domain name was carried out in bad faith as it includes the Complainant’s trademark SAGICOR with a slight variation in the spelling thereof, i.e., the addition of a silent “e”. That the disputed domain name is an intentional misspelling of the Complainant’s legitimate Web site to which the Complainant’s domain name resolves.
That the Web site to which the disputed domain name resolves includes multiple links displaying the trademark SAGICOR, which constitutes a false indication of the Complainant’s sponsorship of, or affiliation to the linked content. That those links redirect to new links that in turn direct traffic to third party Web sites that are in direct competition with the Complainant.
That the Respondent is using the disputed domain name to intentionally attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
That the disputed domain name is not being used for good faith competition, but has been registered with a malicious intent to disrupt the Complainant’s business by trading on the Complainant’s reputation and goodwill to divert customers to the Complainant’s competitors.
That the Respondent had actual knowledge of the Complainant’s trademark rights and became the registrant of the disputed domain name with a bad faith intent to profit from those rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in this Complaint, the Complainant must prove that the three elements enumerated in paragraph 4(a) of the Policy have been met:
(i) The disputed domain name is identical or confusingly similar to a trademark or service trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complainant (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487, and Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark SAGICOR, because it incorporates said trademark in its entirety, with a minimal variation which consists of the addition of a letter “e”. The addition of a single, silent letter to the trademark SAGICOR is irrelevant for purposes of analyzing confusing similarity.
This is a case of typosquatting, which panels have consistently found is not sufficient to avoid a finding of confusing similarity (see, E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043, , and Allstate Insurance Company v. PrivacyProtect. org / Purple Bucquet, WIPO Case No. D2011-0003, ).
The Complainant’s trademark SAGICOR is clearly recognizable within the disputed domain name. The addition of the terms “life” and “usa” to the disputed domain name, does not prevent the risk of confusing similarity among Internet users.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is without legal significance for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919).
The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has have acquired no trademark or service trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service trademark at issue.
The Complainant has submitted evidence showing that it has trademark rights for SAGICOR in the United States.
The Complainant argued that it has not authorized the Respondent to use the trademark SAGICOR in any way, and that there has never existed an affiliation between the Complainant and the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The evidence in the case file demonstrates that the disputed domain name has resolved to a Web site that displays the following hyperlinks: “Sagicor”, “Sagicor Life Insurance Co.”, and “Sagicor Life Insurance”, which directly target the Complainant and its services. These advertising hyperlinks divert Internet users to Web sites that promote services identical to those being rendered by the Complainant, which increases the risk of confusion or wrongful association among Internet users (see AltaVista Company v. O.F.E.Z. et al.,WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan,WIPO Case No. D2001-1220; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071).
This use of the domain name including a PPC mechanism for commercial gain to misleadingly divert consumers to Web sites of competitors of the Complainant cannot be deemed as fair, legitimate, or noncommercial (see Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413).
The Respondent’s conduct does not appear to be coincidental as the disputed domain name is almost identical to Complainant’s domain name. It is an intentional conduct to mislead Internet users, and it cannot constitute a bona fide offering of goods or services.
The Respondent has not submitted any evidence showing that it is commonly known by the disputed domain name.
The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service trademark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service trademark from reflecting the trademark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the respondent’s Web site or location or of a product or service on its Web site or location.
Considering the PPC links available on the Web site to which the disputed domain name resolves, and the fact that the disputed domain name is almost identical to the complainant’s domain name , it is reasonable to conclude that the Respondent was well aware of the Complainant and its trademark SAGICOR when it registered the disputed domain name. This conduct generates a risk of deception among Internet users as to the source, affiliation, or endorsement of the Web site to which the disputed domain name resolves (see B BV v. Chen Guo Long,WIPO Case No. D2017-0311, The Johns Hopkins University (“JHU”), The Johns Hopkins Health System Corporation (“JHHS”), Johns Hopkins Medicine International, L.L.C. (“JHI”) v. Marketing Express,WIPO Case No. D2013-0148).
The fact that the disputed domain name incorporates the terms “life”, descriptive of the services offered by the Complainant and covered by its trademark registrations for SAGICOR, and “usa”, descriptive of the country where the services of the Complainant are rendered, can increase the risk of confusion among Internet users, in connection with “life insurance services”.
These circumstances lead this Panel to conclude, according to section 3.2.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that the Respondent has registered and used the disputed domain name to divert Internet traffic for commercial gain by creating a likelihood of confusion with the Complainant’s trademark SAGICOR, under paragraph 4(b)(iv) of the Policy (see, Arla Foods Amba v. Hu Yifei,WIPO Case No. DCO2017-0046, and Dr. Ludwig Manfred Jacob v. Whois Privacy Shield Services / Kohei Yamaguchi,WIPO Case No. D2017-1975).
Additionally, the banner displayed on the Web site to which the disputed domain name resolves, which reads “DOMAIN SALE CLICK HERE TO BUY NOW…”, as well as the content of the Web site to which said banner redirects traffic, suggests that the Respondent acquired the domain name primarily for the purpose of selling it to the Complainant or to a direct competitor of the Complainant, for a price consideration in excess of the documented out-of-pocket costs directly related to the domain name registration and maintenance.
The Respondent has engaged in a pattern of abusively registering domain names corresponding to trademarks held by legitimate trademark rights holders, which constitutes a basis for a finding of bad faith under Paragraph 4 (b)(ii) of the Policy (see, Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / VMI INC,WIPO Case No. D2018-2535, and G4S Plc v. Domains By Proxy, LLC / VMI INC,WIPO Case No. D2018-2512)
The third element of the Policy has been 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 be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: February 11, 2019
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