ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Phoenix Group Management Services Limited v. Domain Administrator Case No. D2024-1830 1. The Parties Complainant is Phoenix Group Management Services Limited, United Kingdom (“U.K.”), represented by Freeths LLP, U.K. Respondent is Domain Administrator, U.K. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2024. On May 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2024, 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 (Registration Private) and contact information in the Complaint. The Center sent an email communication to Complainant on May 3, 2024, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 10, 2024. 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 Respondent of the Complaint, and the proceedings commenced on May 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2024. The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on June 12, 2024. 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.
page 2 4. Factual Background Complainant provides pension, savings, and life insurance products to millions of account holders in the UK. Complainant owns numerous international registrations for its STANDARD LIFE family of trademarks, including registrations of its SL logo in the U.K. and Europe: U.K. Trademark Registration Number UK00003705764 for SL mark (figurative, including in the design the letters “sl”), registered January 21, 2022 in Classes 35, 36, 38, and 41; and European Union Trade Mark Registration Number 018648114, registered June 29, 2022 in Classes 35, 36, 38, and 41 for SL mark (figurative, including in the design the letters “sl”). The disputed domain name was registered on February 27, 2024. The webpage to which the disputed domain name resolves has changed at least a few times since its registration.1 The disputed domain name currently resolves to a parking page displaying pay-per-click (“PPC”) links that generate commercial advertisements and further links to third party websites.2 5. Parties’ Contentions A. Complainant Complainant avers that it is the U.K.’s largest long-term savings and retirement business, servicing 12 million customers. Complainant contends that it has satisfied each of the elements required under the Policy for transfer of the disputed domain name. The Panel notes that Complainant has not attached a screen capture of the webpage to which the disputed domain name resolves. Complainant alleges that Complainant has been made aware that an email address associated with the disputed domain name is being used in a fraudulent manner. Annexed to the Complaint is a redacted exhibit which appears to reflect an email exchange between someone purporting to be a Standard Life Customer Service Representative (using the disputed domain name in the sender’s email address) and an unidentified recipient. Complainant characterizes the email as seeking “to arrange a call with a potential customer” and notes that Complainant’s STANDARD LIFE registered trademark is used in the body of the email. Complainant contends that it is “inevitable that Internet users will be, confused into believing that the Domain has some form of association with the Complainant. The registration of the Domain therefore takes unfair advantage of the Complainant’s rights….” Complainant also contends that under UK law, Respondent is liable for trademark violations, including fraud and passing off.3 B. Respondent Respondent did not reply to Complainant’s contentions. 1The panel has undertaken limited factual research into matters of public record. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8. In historical archives, the Panel has seen that two days after registration, the disputed domain name resolved to a parking page that displayed the disputed domain name as a title on a largely blank page, adding in small print notes both from the Registrar and separately from the website’s parking page generation ad service. “www.https://web.archive.org/web/20240000000000*/https://sl-ukclients.com/” 2The Complaint did not include a description or screen capture of Respondent’s webpage, and on May 13, 2024, shortly after the Complaint was filed, the disputed domain name did not resolve to an active webpage. 3The Panel expresses no opinion respecting the parties’ respective rights or responsibilities under laws other than the UDRP.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1 The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the figurative mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7, 1.10 (“Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity….”). Although the addition of other terms (here, “-ukclients”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy; rather, here in the case circumstances (see below) this affirms targeting of Complainant’s mark. WIPO Overview 3.0, section 1.8. The Panel finds the first element of Policy paragraph 4(a) has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Complainant avers that its trademarks were in use long before registration of the disputed domain name and that therefore Respondent has no rights or legitimate interest in use of the disputed domain name. Complainant also alleges that it has not authorized Respondent’s use of its marks and that Respondent is using the disputed domain name illegally. Panels have held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (here, there are allegations of impersonation/passing off, or other types of fraud). WIPO Overview 3.0, section 2.13.1. This Panel generally adheres to that reasoning. Complainant’s evidence of illegal activity in the present case is an email exchange emanating from an email address using the disputed domain name between an unidentified member of the public and an individual purporting to be a Customer Service Representative at Standard Life.
page 4 In either event, as already stated above, the Panel has determined that the disputed domain name points to a webpage displaying PPC links that generate commercial advertisements and links to third-party websites. The Panel finds in this case that such commercial activity is incompatible with a finding of fair or bona fide use. See WIPO Overview 3.0, section 2.9 (“panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”). Finally, it is self-evident that Respondent is not commonly known by the disputed domain name, as provided under paragraph 4(c) of the Policy. Having reviewed the available record, the Panel finds a prima facie case has been established that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted that prima facie case nor come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith The Panel also finds that the circumstances fulfill the requirements of paragraph 4(a)(iii) of the Policy, registration and use in bad faith. For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Policy paragraph 4(b)(iv) provides that registration and use in bad faith may be established where a respondent has, “by using the domain name, … intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”. In the present case, Respondent registered the disputed domain name well after Complainant used and registered the SL marks use in association with the services that Complainant provides to millions of clients in the U.K. Under these circumstances, it appears highly likely that Respondent registered the disputed domain name with Complainant’s trademark in mind, thus supporting the Panel’s finding of bad faith registration. Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). WIPO Overview 3.0, section 3.5. As described earlier, the disputed domain name resolves to a webpage displaying links to commercial advertisements and PPC links to third-party websites. Given the confusing similarity between the disputed domain name and the distinctiveness and repute of Complainant’s SL mark, Internet users are likely be confused into believing that Complainant is affiliated with the website to which the disputed domain name resolves. The Panel therefore finds that this case falls directly under the circumstances described in Policy paragraph 4(b)(iv). While paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Respondent’s efforts to conceal its identity and refraining from submitting a response to the Complaint in this proceeding are additional factors supporting the Panel’s findings of bad faith registration and use.
page 5 The Panel finds that the third element of Policy paragraph 4(a), bad faith registration and use, is established. 7. Decision For 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 be transferred to Complainant. /Jeffrey D. Steinhardt/ Jeffrey D. Steinhardt Sole Panelist Date: June 26, 2024
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