The Complainant is Reassure Midco Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Name Redacted. 1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 November 1, 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 amended Complaint on November 5, 2021.
The Center verified that the Complaint together with the 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 November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. On November 22 and 23, the Center received email communications from the Respondent. The Respondent did not submit any formal Response. Accordingly, on December 7, 2021, pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 23, 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 leading insurance company, specialized in financial services including pensions, life insurance, and investment services.
For the purpose of its activities, the Complainant has registered several trademarks (the “REASSURE trademarks”), including:
- the European Union (“EU”) trademark REASSURE No. 010347524, registered on March 6, 2012, for products and services in class 36;
- the EU trademark REASSURE NOW No. 017910195, registered on October 25, 2018, for products and services in class 36;
- the United Kingdom trademark REASSURE No. UK00910347524, registered on March 6, 2012, for products and services in class 36;
- the United Kingdom trademark REASSURE NOW No. UK00917910195, registered on October 25, 2018, for products and services in class 36.
The Complainant also registered several domain names containing “reassure” and “reassurelife” (including
The disputed domain name
The disputed domain name resolves to a website which includes pay-per-click links featuring financial services including pensions, life assurance, and insurance.
5. Parties’ Contentions A. ComplainantFirst, the Complainant stands that the disputed domain name is virtually identical and confusingly similar, to the Complainant’s REASSURE trademarks, given that the disputed domain name consists of the Complainant’s REASSURE trademark in its entirety, which is combined with the term “life” which is not distinctive and is descriptive of life insurance products provided by the Complainant. The Complainant adds that the use of the generic Top-Level domain (“gTLD”) “.com” does not form part of the assessment of identity or similarity.
Second, the Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name as, to the best of the Complainant’s knowledge, the Respondent has not made use of or made any 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. The Complainant adds that the Respondent is not affiliated with the Complainant and has not been authorized or licensed to register or use any of the Complainant’s trademarks. The Complainant asserts that the Respondent’s interest in the disputed domain name is neither fair nor legitimate, considering that the disputed domain name directs to a pay-per-click website, featuring financial services, including life assurance and insurance.
Moreover, the Complainant submits that the disputed domain name was registered in bad faith, considering that (i) the Respondent could not credibly claim to have been unaware of the Complainant’s REASSURE trademarks; and (ii) the disputed domain name was registered to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s REASSURE trademarks.
Lastly, the Complainant asserts that the Respondent is using the disputed domain name in bad faith, given that the disputed domain name directs to a pay-per-click website. The Complainant also states that the Respondent’s details are masked by a privacy service with a view to shield itself from proceedings.
B. RespondentThe Respondent did not substantively reply to the Complainant’s contentions, but indicated that he was not aware of the disputed domain name.
As a result, it appears that the Respondent has used the name and contact details of a third party when registering the disputed domain name. Therefore, pursuant to article 4(j) of the Policy, the Panel has redacted the Respondent’s name from the Decision.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant shall prove the following three elements:
(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 SimilarAccording to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the REASSURE trademarks.
Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. 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 confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Regarding the disputed domain name, the Panel finds that it is composed of (i) the REASSURE trademarks; and (ii) the term “life” does not prevent a finding of confusing similarity.
The Panel also points out that a gTLD in a domain name is viewed as a standard registration requirement and as such is typically disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- 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 mark at issue.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while 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 prima facie 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).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Indeed, it appears that the Respondent has no connection or affiliation with the Complainant and has not received any authorization, license, or consent, whether express or implied, to use the Complainant’s REASSURE trademarks in the disputed domain name or in any other manner. Moreover, the Panel finds that there is no evidence that the Respondent is known by the term of the disputed domain name or that the Respondent has the intent to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is linked to a pay-per-click website, featuring financial services including pensions, life assurance and insurance, related to the Complainant's business sector, which does not represent a bona fide offering (see section 2.9 of the WIPO Overview 3.0).
In any case, the Respondent did not reply to the Complainant’s contentions. Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithAccording to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that the 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 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 its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
First, the Panel considers that it is established that the Complainant’s REASSURE trademarks were registered well-before the registration of the disputed domain name and that the Complainant also owns several domain names and company names containing “reassure” and “reassurelife”. Therefore, there is a presumption of bad faith registration of the disputed domain name, given the fact that the disputed domain name wholly reproduces the REASSURE trademarks along with a term descriptive of the Complainant’s products (see section 3.1.4 of the WIPO Overview 3.0).
Moreover, the Panel points out that the disputed domain name is linked to a pay-per-click website, featuring financial services including pensions, life assurance and insurance, related to the Complainant's business sector. This use of the disputed domain name constitutes an intentional attempt of the Respondent to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s REASSURE trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which is a scenario constituting evidence of the Respondent’s bad faith in using the disputed domain name.
The Panel finds that the following circumstances reinforce the fact that the Respondent has registered and is using the disputed domain name in bad faith:
- the Complainant has provided evidence that the REASSURE trademarks are well-known;
- the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name;
- the Respondent has not provided any answer to the Complainant’s contentions;
- the Respondent has masked its identity by a privacy service when registering the disputed domain name.
Considering all of the above, it is not possible to conceive of any plausible actual or contemplated good faith registration and use of the disputed domain name by the Respondent.
Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).
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,
Christiane Féral-Schuhl
Sole Panelist
Date: January 6, 2022
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.