The Complainants are Swiss Life AG, Switzerland, (the “First Complainant”) and Swiss Life Intellectual Property Management AG, Switzerland, (the “Second Complainant”) represented by FMP Fuhrer Marbach & Partners, Switzerland.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / David Lanski, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainants on November 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on November 23, 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 November 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 4, 2022. 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 Complainants are part of the same economic group which is ranked amongst the 15 largest European insurance conglomerates and which has had, in 2019, a total turnover of more than CHF 23 billion.
The First Complainant was founded in 1857 and adopted its current name in 2002. The Second Complainant is the owner, amongst several others, of the following trademark registrations (Annex 10a to the Complaint):
- Switzerland Trademark Registration No. 436709 for SWISS LIFE, registered on February 12, 1997, and subsequently renewed, in class 36;
- Switzerland Trademark Registration No. 491528 for SWISS LIFE, registered on November 15, 2001, and subsequently renewed, in classes 09, 16, 35, 38, 41, and 42;
- European Union Trademark Registration No. 003438413 for SWISS LIFE, registered on October 20, 2006, and subsequently renewed, in classes 09, 16, 35, 38, 41, 42, and 44.
The well-known status of the Complainants’ SWISS LIFE trademark has been affirmed by the Swiss Supreme Court in 2007 (decision BGE 4C.341/2005, Annex 11 to the Complaint).
The disputed domain name
The Complainants’ assert rights over the SWISS LIFE trademark, intensely used by the Complainants’ group in all kinds of media in Switzerland, Europe and abroad, what has led to independent trademark rankings depicting the SWISS LIFE trademark amongst the 50 most famous and valuable trademarks of Switzerland, as well as regularly recognized as the most popular and most trusted life insurance brand of Switzerland (Annexes 10b-10e to the Complaint).
In addition to that, the Complainants point out that scholars list the SWISS LIFE trademark not only as a
well-known trademark but also as a famous trademark in the sense of Article 15 of the Swiss Trademark Act (DAVID/FRICK, Basler Kommentar, MschG 15 N 49; Die wirtschaftliche Rechtsprechung des Bundesgerichts im Jahr 2007, printed in: ZBJV 144/2008, S. 675 ff., 702).
According to the Complainants, the disputed domain name is confusingly similar with the Complainants’
well-known and famous trademark since the SWISS LIFE trademark is reproduced in its entirety and the “join” term in the disputed domain name is insufficient to add distinctiveness thereto.
Also according to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has no rights over the disputed domain name, being the Complainants the only legitimate service or product provider under the SWISS LIFE trademark;
(ii) the Complainants did not give any permission to the Respondent or any third party to use the SWISS LIFE trademark for the registration and/or use of the disputed domain name; and
(iii) the Respondent cannot provide any proper justification as to why it would be entitled to register a domain name containing the Complainants’ SWISS LIFE trademark and use the SWISS LIFE trademark as part of an email address and/or forged documents.
As to the registration and use of the disputed domain name in bad faith, the Complainants state that given the well-known status and strong reputation of the SWISS LIFE trademark and the nature of the disputed domain name, which is confusingly similar therewith, there simply cannot be any actual or contemplated good faith use of the disputed domain name as this would invariably result in misleading diversion and taking unfair advantage of the Complainants’ rights (as in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), or to impersonate the Complainants or otherwise exploit the Complainants’ goodwill and reputation.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly SimilarThe Complainants have established rights in the SWISS LIFE trademark which has been found as a
well-known trademark by the Swiss Supreme Court.
The Panel finds that the disputed domain name reproduces the Complainants’ mark in its entirety, the addition of the term “join” in the disputed domain name does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, sections 1.7 and 1.8).
The first element of the Policy has therefore been established.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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, in spite of not having acquired 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.
The Respondent, in not responding to the Complainant, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Nevertheless, the burden of proof is still on the Complainants to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainants have made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and neither is there a connection or affiliation between the Complainants and the Respondent. Also, the Respondent has not received any permission to use the SWISS LIFE trademark in any way. Contrastingly, the construction of the disputed domain name, combining the entirety of the Complainants’ trademark with the term “join”, carries a high risk of implied affiliation to the Complainants’, contrary to the fact, which cannot constitute fair use, as it effectively impersonates or suggests sponsorship or endorsement by the Complainants’. See section 2.5.1 of the WIPO Overview 3.0.
In addition to that, the lack of any good faith use of the disputed domain which is being passively held, does not characterize an evidence of 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.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainants’ 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.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, not having submitted a response;
(ii) the lack of apparent use of the disputed domain name;
(iii) the well-known status of the Complainants’ trademark; and
(v) the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark), suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put.
Moreover, the use of a privacy service and the apparently false contact details provided in WhoIs information relating to the disputed domain name, which did not allow the delivery of the Written Notice by courier to the underlying registrant is a further indication of the Respondent’s bad faith. Accordingly, pursuant to the doctrine of passive holding, the inactive status of the disputed domain name does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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
Wilson Pinheiro Jabur
Sole Panelist
Date: January 13, 2022