The Complainant is Swiss Reinsurance Company Ltd, Switzerland, represented by TIMES Attorneys, Switzerland.
The Respondent is MICHEL MANZANERA, Cayman Islands, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2021, 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 June 29, 2021, 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 amendment to the Complaint on June 30, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on September 1, 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 BackgroundThe Complainant is part of the Swiss Re Group, founded in 1863 in Switzerland, which is a global wholesale provider of reinsurance, insurance and financial services through a network of over 60 offices globally. The Swiss Re Group is currently one of the largest reinsurers in the world.
The Complainant’s parent company Swiss Re Ltd is the owner of the following trademark registrations for the sign “SWISS RE” (the “SWISS RE trademark”):
− the Swiss trademark SWISS RE with registration No. 411846, registered on August 16, 1994 for services in International Class 36 (a trademark with acquired distinctiveness);
− the Swiss trademark SWISS RE with registration No. 717011, registered on June 1, 2018 for goods and services in International Classes 9, 16, 35, 36, 41 and 42;
− the International trademark SWISS RE with registration No. 624637, registered on August 16, 1994 for services in International Class 36; and
− the International trademark SWISS RE with registration No. 1067014, registered on November 26, 2010 for goods and services in International Classes 9, 16, 35, 36, 41 and 42.
The Complainant’s affiliate Schweizerische Rückversicherungs-Gesellschaft AG is the owner of the Swiss trademark SWISS RE SECURITY BOOSTER with registration No. 762277, registered on April 14, 2021 for goods and services in International Classes 9, 35, 36, and 42 (the “SWISS RE SECURITY BOOSTER trademark”), two days before the Respondent registered the disputed domain name.
The disputed domain name was registered on April 16, 2021. It resolves to a website containing a notice that the disputed domain name is for sale for USD 990.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name is identical to the SWISS RE SECURITY BOOSTER trademark, because the addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant does not know the Respondent and has not granted him any license or other right to use any of its trademarks in a domain name or otherwise. The Complainant states that it is not aware of any person or entity outside the Swiss Re Group who could hold any license or who could raise any other justification for registration or use of the disputed domain name. The Complainant adds that the disputed domain name is not in use, and is offered for sale on the website at “www.dan.com” for a minimum price of USD 990. According to the Complainant, this shows that the Respondent does not have legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent never used the disputed domain name, but offered it for sale shortly after its registration, which was made only two days after the publication of the SWISS RE SECURITY BOOSTER trademark. The Complainant points out that both the disputed domain name and the SWISS RE SECURITY BOOSTER trademark are a combination of the name “Swiss Re” and the words “security” and “booster”. According to the Complainant, this combination is unusual, and no one outside the Swiss Re Group would choose the disputed domain name coincidentally and in good faith. According to the Complainant, the Respondent registered the disputed domain name with the sole purpose to sell it to the Complainant or to someone who desires to be illegitimately associated with the Swiss Re Group or to benefit from its reputation.
The Complainant notes that before initiating these proceedings, it sent a cease-and-desist letter to the Registrar, and the Registrar stated to have forwarded the letter to the Respondent. The Respondent did not send a response to this letter.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
By the Rules, paragraph 5(c)(i), it is expected for a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name”.
The Respondent has however not submitted a Response and has not disputed the Complainant’s contentions and evidence in this proceeding.
A. Identical or Confusingly SimilarThe Complainant has submitted evidence that the SWISS RE and SWISS RE SECURITY BOOSTER trademarks have been registered by its parent company Swiss Re Ltd and by one of its affiliates in the Swiss Re Group. As discussed in section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. Therefore, the Panel accepts that the Complainant has established that it has rights in the SWISS RE and SWISS RE SECURITY BOOSTER trademarks for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” TLD section of the disputed domain name.
The disputed domain name incorporates all elements of the SWISS RE SECURITY BOOSTER trademark in their entirety, which makes it identical to this trademark. It also incorporates the SWISS RE trademark entirely in combination with the dictionary words “security” and “booster”, and the SWISS RE trademark is easily recognizable in it. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. See sections 1.7 and 1.8 of the WIPO Overview 3.0.
In view of the above, the Panel finds that the disputed domain name is identical to the SWISS RE SECURITY BOOSTER trademark and is confusingly similar to the SWISS RE trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it has not been licensed to use the SWISS RE and SWISS RE SECURITY BOOSTER trademarks and is not using the disputed domain name for a legitimate purpose, but only offers it for sale. The Complainant points out that the disputed domain name was registered two days after the official publication for the registration of the SWISS RE SECURITY BOOSTER trademark. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainants’ allegations in this proceeding. The Respondent has not provided a plausible explanation why it has chosen such unusual combination of words to register as a domain name. As discussed above, the disputed domain name is identical to the SWISS RE SECURITY BOOSTER trademark. The evidence in the case shows that it was indeed registered only two days after the publication of this trademark, and that it indeed redirects to a webpage that offers it for sale for USD 990, which is an amount well in excess of the usual out-of-pocket costs directly related to the registration of a domain name.
In view of the above, and in the lack of any contrary evidence, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the Swiss Re Group and of the SWISS RE and SWISS RE SECURITY BOOSTER trademarks, has registered and used the disputed domain name primarily for the purpose of selling it to the Complainant or to another entity of the Swiss Re Group for valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain name. To the Panel, such conduct does not appear to be giving rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 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) 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 online location, by creating a likelihood of confusion with the complainant’s 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.”
As discussed above, the disputed domain name is identical to the SWISS RE SECURITY BOOSTER trademark and confusingly similar to the SWISS RE trademark. This creates the risk that Internet users may be led to wrongly believe that the disputed domain name is related to or endorsed by the Complainant or by the Swiss Re Group of which the Complainant is a member. The Respondent has not submitted a Response and has not disputed the Complainant’s allegations in this proceeding or provided any plausible explanation why it has chosen such combination of words to register as a domain name only two days after the publication of the registration of the SWISS RE SECURITY BOOSTER trademark, and it is being offered for sale for USD 990, which is an amount well in excess of the usual out-of-pocket costs directly related to the registration of a domain name.
In view of the above, and in the lack of any contrary evidence, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the Swiss Re Group and of the SWISS RE and SWISS RE SECURITY BOOSTER trademarks, has registered and used the disputed domain name primarily for the purpose of selling it to the Complainant or to another entity of the Swiss Re Group for valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain name. This supports a finding of bad faith conduct under Paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
7. DecisionFor 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
Assen Alexiev
Sole Panelist
Date: September 21, 2021