The Complainant is Reassure Midco Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is New Ventures Services, Corp, New Ventures Services, Corp, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2020, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) confirming that the Respondent is listed as the registrant and providing the contact details; (c) indicating the language of the registration agreement is English; and (d) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”). The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 28, 2021. 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 an insurance company based in the United Kingdom with operations also in Ireland, specialising in providing financial services including pensions, life insurance, and investment. The Complainant was founded in 1963 under the name Occidental Life Insurance Company Limited. It was rebranded to its current name in 2011. As at 2017, it was ranked as the sixth largest life insurance group in the United Kingdom. According to the Complaint, it currently has more than 2.2 million policies on its books and manages approximately GBP 39 billion in investments. According to the Complainant’s website at “www.reassure.co.uk”, printouts of which are included in the Complaint, its strategy is to consolidate the businesses of companies who have closed their insurance books and wish to exit the insurance business. The Complaint includes evidence that the Complainant has registered: (a) European Union Registered Trademark No. EU010347524, for “ReAssure” and a Crown device in respect of pension and insurance services in International Class 36 which was filed on October 18, 2011 and registered on March 6, 2012; (b) European Union Registered Trademark No. EU017910195, for a figurative mark “ReAssure Now” in respect of a range of insurance and financial services in International Class 36 which was filed on May 31, 2018 and registered on October 25, 2018; (c) United Kingdom Registered Trademark No. UK00003358801, for “ReAssure” and a Crown device in respect of a range of insurance and financial services in International Class 36 which was filed on December 5, 2018 and registered on April 26, 2019; and (d) United Kingdom Registered Trademark No. UK00003312775, for the “ReAssure Now” figurative mark in respect of a range of insurance and financial services in International Class 36 which was filed on May 23, 2018 and registered on August 31, 2019. According to the Complainant, the Respondent registered the disputed domain name on September 10, 2020. It resolves to a fairly typical pay-per-click (PPC) website with links to various insurance offerings. Some of these are to the Complainant’s services, but many others are to services offered by competitors or other third-party insurance providers. The disputed domain name is also listed as being offered for sale: (a) on the Registrar’s website for USD 977; and (b) on the Afternic website for, somewhat confusingly, a buy now and a minimum offer price of USD 277. A reverse WhoIs search on the Respondent’s name and email address discloses that the Respondent has registered over 850,000 domain names. A number of these include or are based on famous trademarks including O2, Sky, Lego, and VISA. 5. Discussion and Findings No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Accordingly, paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademarks for “ReAssure” with device and “ReAssure Now” in a figurative style identified in section 4 above. It also appears likely that the Complainant has common law rights in its name and brand in the United Kingdom. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7. In making that comparison, it is usual to disregard device elements and focus on the verbal element only as device and figurative elements are not capable of representation in a domain name. See WIPO Overview 3.0, section 1.10. The Crown device included in the first of the Complainant’s registered trademarks does not so dominate the verbal element, “ReAssure”, as to make this principle inapplicable. Disregarding the generic Top-Level Domain (gTLD) (see WIPO Overview 3.0, section 1.11), the disputed domain name consists of the Complainant’s registered trademark and the term “financial”. As this requirement under the Policy is essentially a standing requirement, the addition of that descriptive term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. A similar analysis applies to the Complainant’s “ReAssure Now” trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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 consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. These considerations are usually sufficient to raise the required prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Moreover, the disputed domain name resolves to a parked page with PPC links to providers of insurance services, many of whom are competitors of, or unrelated third parties to, the Complainant. In the absence of some right or legitimate interest in the disputed domain name such conduct does not constitute a bona fide offering of goods or services under the Policy. See WIPO Overview 3.0, section 2.10. That the Respondent is not engaged in a good faith offering of goods or services is reinforced by the offer of the disputed domain name for sale on the websites of both the Registrar and Afternic. Accordingly, the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Therefore, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that: For the purposes of paragraph 4(a)(iii), 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 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 mark or to a competitor of that Complainant, for valuable consideration in excess of your 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 mark from reflecting the mark 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 your 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 your website or location. The instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v. Tropic WebWIPO Case No. D2000-0624. Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. As already noted, while the words “reassure” and “financial” are ordinary English words, their combination in the one expression related to financial services appears to have significance by reason of the Complainant’s adoption of the word “ReAssure” as its name and trademark. The disputed domain name has been used only to generate revenues through PPC links to providers of insurance services, many of whom compete with or some of whom are unrelated to the Complainant. The disputed domain name has also been offered for sale. Each of these factors indicate an intention to take advantage of the significance of the term “ReAssure” as a trademark denoting financial and, in particular, insurance services. The offer for sale at prices in excess of typical registration costs are indicative of the circumstances indicated in paragraph 4(b)(i) of the Policy. The use of PPC links to direct browsers to third-party insurance services is indicative of the circumstances outlined in paragraph 4(b)(v) of the Policy. Bearing in mind that the disputed domain name was registered only in October 2020, it appears likely that the disputed domain name was registered for these purposes. In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith. Accordingly, the Complainants have established all three requirements under the Policy. 6. 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, Warwick A. Rothnie
Sole Panelist
Date: February 18, 2021
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