Complainants are Swiss Life AG (“Complainant No. 1”) and Swiss Life Intellectual Property Management AG (“Complainant No. 2”), Switzerland, represented by FMP Fuhrer Marbach & Partners, Switzerland.
Respondent is Gregory Williams, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2020, 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 Complainant on April 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 27, 2020. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 19, 2020. 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 Complainants are companies organized under the laws of Switzerland, which both belong to the “Swiss Life” group of companies that is active in the life insurance business. Complainant No. 2 is a subsidiary of Complainant No. 1 and is responsible for managing all intellectual property owned by the “Swiss Life” group. Complainants have documented that Complainant No. 2 is the registered owner of various trademarks relating to Complainants’ company names and brand “Swiss Life”, inter alia, the following, some of which enjoy protection also for the territory of the United Kingdom: - Word mark SWISS LIFE, European Union Intellectual Property Office (“EUIPO”), registration number: 003438413, registration date: October 20, 2006, status: active; - Word/design mark SWISS LIFE, EUIPO, registration number: 003438496, registration date: March 27, 2006, status: active; - Word/design mark SWISSLIFE ASSET MANAGEMENT, Swiss Federal Institute of Intellectual Property, registration number: P-474062, registration date: July 11, 2000, status: active. Moreover, Complainants have documented to own various domain names relating to the SWISS LIFE trademark, inter alia, the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the United Kingdom who registered the disputed domain name on February 19, 2019; by the time of the rendering of this decision, the disputed domain name does not resolve to any active content on the Internet. Complainants request that the disputed domain name be transferred to Complainants. 5. Parties’ Contentions A. Complainants Complainants contend that the “Swiss Life” group of companies is Switzerland’s largest life insurance company and one of Europe’s leading comprehensive life and pensions and financial solutions provider with a 150-year-old company history. Complainants claim to have spent substantial time, effort and money in advertising and promoting the SWISS LIFE trademark and that the latter has meanwhile achieved a well‑known, if not famous status. Complainants submit that the disputed domain name is confusingly similar to their SWISS LIFE trademark, as the disputed domain name incorporates the latter in its entirety, added by the descriptive element “asset management”. Moreover, Complainants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainants are the only legitimate service or product provider under the SWISS LIFE brand and did not give any permission to Respondent to use such trademark for the registration and/or use of the disputed domain name. Finally, Complainants argue that Respondent registered and is using the disputed domain name in bad faith since (1) given the strong reputation of Complainants’ SWISS LIFE trademark, Respondent must clearly have had Complainants and their rights in the SWISS LIFE trademark in mind when it registered the disputed domain name, (2) the subsequent additional term “asset management” refers to one of Complainants’ core services provided to their customers which is why consumers will assume a sort of affiliation or endorsement between the Parties which in fact does not exist, and (3) Respondent registered the disputed domain name merely for commercial gain with a view of taking unfair advantage of Complainants’ rights in the SWISS LIFE trademark. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that 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. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. As a procedural comment, given that Complainant No. 2 is a subsidiary of Complainant No.1 and is responsible for managing all intellectual property owned by the same “Swiss Life” group of companies, both have a specific common grievance against Respondent why it is appropriate in the case at hand and in line with the UDRP panelists’ majority view to accept this Complaint filed by multiple complainants against a single respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1). A. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name incorporates both the SWISS LIFE and the SWISSLIFE ASSET MANAGEMENT trademarks in their entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether, e.g., descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “asset management” which even refers to Complainants’ core business does not dispel the confusing similarity arising from the incorporation of Complainants’ SWISS LIFE trademark in the disputed domain name. Therefore, Complainants have established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainants’ undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainants to use their SWISS LIFE and/or SWISSLIFE ASSET MANAGEMENT trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “Swiss Life” and/or “Swiss Life Asset Management” on its own. Finally, it appears that by the time of the rendering of this decision the disputed domain name does not resolve to any active content on the Internet and that it never has done so in the past. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1). Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. As a general rule, UDRP panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include, e.g., the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put. Complainants contend, and Respondent has not challenged this contention, that their SWISS LIFE trademark enjoys considerable recognition worldwide. Given the composition of the disputed domain name, which not only reflects Complainants’ entire SWISSLIFE ASSET MANAGEMENT trademark, but combines Complainants’ SWISS LIFE trademark with the term “asset management” which refers to Complainants’ core business, this Panel has no reasonable doubts that Respondent was well aware of Complainants and their SWISS LIFE and SWISSLIFE ASSET MANAGEMENT trademarks when registering the disputed domain name, and that the latter is directly pointing thereto. By the same time, the circumstances to the case at hand leave no room for any plausible use of the disputed domain name, which would not take unfair advantage by profiting from the undisputed reputation, which Complainants’ SWISS LIFE and SWISSLIFE ASSET MANAGEMENT trademarks enjoy. Against this background, the passive holding of the disputed domain name by Respondent is not in contrast to hold that Respondent registered and is using the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy. Accordingly, the Panel finds that Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung
Sole Panelist
Date: July 3, 2020
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