Complainant is Liberty Group Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
Respondent is Contact Privacy Inc. Customer 1249293481, Canada / Liberty Group, Lesotho.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 24, 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 Complainant on November 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 29, 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 Respondent of the Complaint, and the proceedings commenced on December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2021.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 7, 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 BackgroundFounded in 1957, Complainant is a financial services group providing products and services relating to health and life insurance, asset management, investment management services, property investment, and retirement income facilitation. Complainant serves over 3 million persons across 24 countries in Africa. Since 1957, Complainant has used its LIBERTY trademark and other marks incorporating LIBERTY, such as LIBERTY LIFE, in connection with its products and services. Complainant owns several registrations in various jurisdictions for its LIBERTY and LIBERTY LIFE trademarks, including Eswatini (Registration No. 2008000449 for LIBERTY LIFE, registered on November 4, 2011), Ghana (Registration No. 2013045638 for LIBERTY, registered January 5, 2017), Mozambique (Registration No. 2013025035 for LIBERTY, registered June 15, 2014), Namibia (Registration No. 2008001873 for LIBERTY LIFE, registered on April 18, 2017), and Zimbabwe (Registration No. 2013001514 for LIBERTY, registered May 20, 2015). Complainant also owns the domain name
Respondent registered the Disputed Domain Name on February 1, 2021. The Disputed Domain Name resolves to an error page.
On February 2, 2021, the day after Respondent registered the Disputed Domain Name, an advertisement for a job opening circulated on a Facebook page, directing interested prospective applicants to send application materials including an ID to an email address connected to the Disputed Domain Name.
On May 1, 2021, an advertisement for a job opening with “Insurance Broker of Liberty” circulated on a separate Facebook page, directing interested prospective applicants to send application materials including an ID to an email address connected to the Disputed Domain Name.
On August 30, 2021, Complainant sent Respondent a cease-and-desist letter, requesting that Respondent transfer the Disputed Domain Name to Complainant. Complainant sent Respondent a follow-up letter on September 15, 2021. Respondent did not reply to the letters.
5. Parties’ Contentions A. ComplainantComplainant asserts it has established rights in the LIBERTY and LIBERTY LIFE marks and that the Disputed Domain Name wholly incorporates and is confusingly similar to Complainant’s marks. Complainant contends that the additional term “cover” in the Disputed Domain Name adds to the likelihood of confusion as it relates to Complainant’s services.
Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Name and that Complainant has not licensed or authorized Respondent’s use of Complainant’s marks. Complainant contends that Respondent is using the Disputed Domain Name to take unfair advantage of the benefit from the reputation and goodwill in Complainant’s marks, namely by attracting, for commercial gain, Internet users to Respondent’s job advertisements.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. According to Complainant, Complainant’s LIBERTY and LIBERTY LIFE marks are well known, and Respondent registered the Disputed Domain Name with the intent to exploit Complainant’s marks through a fraudulent employment scheme where Respondent advertised false job vacancies with Complainant and required prospective employees that emailed Respondent to pay for training.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel finds that Complainant’s trademark registrations establish that it has rights in the LIBERTY and LIBERTY LIFE trademarks. The Panel further finds that the Disputed Domain Name is confusingly similar to Complainant’s marks because the Disputed Domain Name incorporates the marks in their entirety. Respondent’s addition of the term “cover” in the Disputed Domain Name does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 1.8.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, which Respondent has not rebutted. There is no evidence of record showing that Respondent is commonly known by the Disputed Domain Name or that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. Indeed, the use of a disputed domain name for phishing “can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1. The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent registered and used the Disputed Domain Name in bad faith. The evidence establishes Respondent was aware of Complainant and its rights in the LIBERTY and LIBERTY LIFE marks when Respondent registered the Disputed Domain Name. This awareness is evident from Respondent’s use of part of Complainant’s name to register the Disputed Domain Name and from job opening advertisements using an email address connected with the Disputed Domain Name and incorporating the term “hr”, which supports an inference of an intentional effort to deceive Internet Users into mistakenly believe there is an affiliation with Complainant’s human resources department. One of the advertisements was created one day after Respondent registered the Disputed Domain Name, and another claimed there was a job opening with “Insurance Broker of Liberty”. The Disputed Domain Name’s incorporation of the entirety of Complainant’s LIBERTY and LIBERTY LIFE marks, and the word “cover” associated with insurance coverage services Complainant offers, indicate an attempt to trick Internet users into sending emails to Respondent in the mistaken belief that they are communicating with Complainant. This evidences bad faith. WIPO Overview 3.0, section 3.1.4.
The evidence supports the finding that Respondent sought to use the Disputed Domain Name to promote a phishing scheme targeting individuals that sought employment with Complainant. Use of a domain name in connection with phishing is bad faith use. WIPO Overview 3.0, section 3.4; see also, e.g., Sarepta Therapeutics, Inc. v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / Name Redacted,WIPO Case No. D2020-3239 (finding that the disputed domain name was registered and used in bad faith because the respondent used the disputed domain name incorporating complainant’s mark to send emails making false offers of employment with complainant).
Complainant has satisfied 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
Lawrence K. Nodine
Sole Panelist
Date: January 21, 2022