ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Phoenix Group Management Services Limited v. Name Redacted Case No. D2024-3829 1. The Parties The Complainant is Phoenix Group Management Services Limited, United Kingdom (“UK”), represented by Freeths LLP, UK. The Respondent is Name Redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with eNom, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2024. On September 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 (WhoIS Privacy Protection Service, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 2024, 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 October 2, 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”). 1The 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Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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.
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2024. On October 8, 2024, the Center received an email from a third-party alleging the identity theft of his direct relative in the registration of the disputed domain name. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on October 24, 2024. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 29, 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. 4. Factual Background The Complainant, a registered company based in Birmingham, UK, is the proprietor of Standard Life, an insurance and investment company. Standard Life is the Complainant’s primary brand and advertises itself as “Standard Life / Part of Phoenix Group”. The Complainant has some 12 million customers in the UK. The Complainant owns 52 registrations in the UK or the European Union for STANDARD LIFE standing alone or in combination, or for the abbreviation SL by which Standard Life is also known, including: SL, United Kingdom Intellectual Property Office (“UKIPO”), registered January 21, 2022, registration number UK00003705764, in classes 35, 36, 38, and 41; SL, European Union trademark, registered June 29, 2022, registration number 018648114, in classes 35, 36, 38, and 41; STANDARD LIFE PART OF PHOENIX GROUP, UKIPO, registered January 6, 2023, registration number UK00003829989, in classes 9, 35, 36, 38, 41, and 42. The Complainant also owns the domain name , through which it operates its main website, and is active on social media. The Respondent has not provided any background information. The disputed domain name was registered on July 31, 2024, with the public-facing registrant given as a privacy protection service. The Registrar duly disclosed to the Center the purported underlying registrant, as submitted at the time of registration, as being a named individual and a street address in the UK. As mentioned above, a communication was received from a direct relative of the disclosed named Respondent, demonstrating to the full satisfaction of the Panel, that the named Respondent never had any connection with the disputed domain name and was apparently a victim of identity theft. The disputed domain name does not resolve to an active website but has been used as the basis of an email address. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
page 3 Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant says the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection with the Complainant and has not been permitted to use the Complainant’s trademarks, which predate the registration of the disputed domain name. The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Internet users are likely to be confused by the similarity of the disputed domain name to the Complainant’s trademark and may believe that the disputed domain name belongs to and represents the Complainant. Furthermore, an example has come to light of a potential investor having received an email from the Respondent that purported to come from the Complainant, in an attempt to induce that potential investor to do business with the Respondent. The Respondent’s email incorporated an attachment comprising a brochure with the appearance of having been produced by the Complainant. The investor initially corresponded with the Respondent in the mistaken belief they were corresponding with the Complainant. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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 the 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. The 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. In isolation, the term “sluk” of the disputed domain name appears somewhat cryptic. With the benefit of the Complainant’s uncontested explanation, it becomes clear that the disputed domain name comprises the Complainant’s registered trademark SL followed by “UK-clients”. The WIPO Overview 3.0, at section 1.7, in discussion of the consensus of previous decisions, says “… panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”. In this instance the Respondent’s Internet presence is as an email address in circumstances that, as found under “Registered and Used in Bad Faith” in section 6C below, will lead the Panel to the conclusion that the disputed domain name was registered precisely because the Respondent believed it to be confusingly similar to the Complainant’s trademark. The entirety of the trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the SL trademark is figurative in nature, prior panels have found that the assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the
page 4 relevant mark, particularly where the design elements of the relevant trademark do not comprise the dominant portion of the trademark such that they effectively overtake the textual elements in prominence, such as in this instance (the design element being a mere yellow or gold triangle accented over the letter “L” in the Complainant’s trademark). Although the addition of other terms (here, “UK-clients”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not 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. In particular, there is no evidence the Respondent has been known by the disputed domain name or anything similar. According to the evidence, such use as has been made of the disputed domain name has been as the basis of an email address conveying investment promotional literature intended to imply falsely that it is attributable to and has originated from the Complainant. Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation or passing off), can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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, but other circumstances may 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. The Complainant has produced evidence that the disputed domain name had been used in an attempt by the Respondent to represent itself falsely as the Complainant in order to attempt to deceive a person into participating in a consequently fraudulent transaction. The evidence includes an email letter with the sender’s address “info” at the disputed domain name. The subject line was “Information on Your Recent Enquiry” and the opening line of the letter read “Thank you for considering our investment options”. Whilst
page 5 those two references to an apparent investor enquiry do not conclusively prove the investor had made any such enquiry, on the evidence the Pane finds it more probable than not that the investor had been induced to make an enquiry and was thereby actually deceived. The Respondent’s letter appeared in every way to be fully professional and was signed “Finance Team / Standard Life” over a large and prominent direct copy of the Complainant’s full STANDARD LIFE trademark in logo form complete with its yellow device. A nine-page “Investment Guide 2024” was attached as a .PDF in the form of a professional-looking illustrated brochure that makes liberal use of the Complainant’s trademark and has all the appearances of having been produced by the Complainant, except that the Complainant’s use of the phrase “purports to be from the Complainant” implies that it is not. The potential investor noticed certain irregularities in the correspondence received from the Respondent that need not be revealed here, and forwarded the correspondence to the Complainant. On the totality of the evidence, the Panel finds it inescapable that the Respondent targeted specifically the Complainant at the time of registration and in the subsequent use of the disputed domain name. As discussed under the heading of Identical or Confusingly Similar in section 6A above, this reinforces the finding of confusing similarity between the disputed domain name and the Complainant’s trademark, particularly since a bona fide enquirer initially mistook the disputed domain name, as an email address, to be genuine. Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation or passing off), constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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 the Complainant. /Dr. Clive N.A. Trotman/ Dr. Clive N.A. Trotman Sole Panelist Date: November 11, 2024
Full & Egal Universal Law Academy