The Complainant is Swiss Re Ltd, Switzerland, represented by TIMES Attorneys, Switzerland.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Tobe Uche, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 September 22, 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 September 24, 2021.
The Respondent sent an informal communication on September 22, 2021. On September 24, 2021 the Complainant requested the suspension of the proceeding to explore settlement options. The Proceeding was suspended on September 27, 2021. On November 26, 2021 the Complainant requested the reinstitution of the proceeding.
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 December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 30, 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 a global and leading wholesale provider of reinsurance, insurance and financial services. Founded in Zurich, Switzerland in 1863, the Complainant serves clients through a network of over 60 offices globally and currently the Complainant’s Group is the largest reinsurer in the world.
The Complainant owns various trademark registrations, in many jurisdictions, for or including SWISS RE for several goods and services in Classes 9, 16, 35, 36 (covering insurance), 41 and 42, including the following:
- Swiss Trademark Registration No. CH 717011 SWISS RE, filing date and beginning of protection July 26, 2010;
- International Trademark Registration No. 1067014 SWISS RE, registered on November 26, 2010;
- Swiss Trademark Registration No. 2P-411846 SWISS RE, filing date and beginning of protection June 8, 1994 and
-International Trademark Registration No. 624637 SWISS RE, registered on August 16,1994.
The Complainant’s company and its trademarks are well known internationally. The Swiss Federal Institute of Intellectual Property, by way of example, registered the word mark SWISS RE as a mark with acquired distinctiveness.
The disputed domain name
The Complainant claims that the disputed domain name is confusingly similar to the trademark SWISS RE in which the Complainant has rights and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant is not aware of any person or entity outside its organization who could hold any license or who could raise any other justification for the registration or use of the disputed domain name.
The Complainant further contends that it is obvious that the Respondent’s intention is: (i) to benefit from the Complainant’s reputation and to deceive customers about a connection with the Complainant, or (ii) to sell the disputed domain name to a person with such intentions, or (iii) to sell the disputed domain name to the Complainant.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
B. RespondentAs indicated above, the Respondent sent an informal communication to the Center on September 22, 2021. On September 24, 2021 the Complainant requested the suspension of the proceeding to explore settlement options. The Proceeding was suspended on September 27, 2021. On November 26, 2021 the Complainant requested the reinstitution of the proceeding.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith.
A. Identical or Confusingly SimilarAs set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s SWISS RE trademark.
The disputed domain name incorporates the Complainant’s trademark SWISS RE in its entirety, with the addition of the descriptive terms “insurance”, “investors” and “relation” which do not prevent a finding of confusing similarity.
Pursuant to section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name –as it occurs in this case- the addition of other terms whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark SWISS RE in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the respondent’s use 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well-established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. In fact, the name of the Respondent is “Tobe Uche”, which is completely different to the disputed domain name.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is an official site of the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not formally responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark SWISS RE when it registered the disputed domain name on August 18, 2021.
By registering the disputed domain name, the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark SWISS RE in its entirety with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit.
Furthermore, UDRP panelists have found that a domain name that resolves to an inactive website does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and that the current non-use of the disputed domain name does not prevent a finding of bad faith in these circumstances (section 3.3 of WIPO Overview 3.0).
For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.
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
Miguel B. O'Farrell
Sole Panelist
Date: January 10, 2022