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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swiss Re Ltd. v. Jai Shan

Case No. D2017-0609

1. The Parties

The Complainant is Swiss Re Ltd. of Zurich, Switzerland, represented by Crowell & Moring, LLP, Belgium.

The Respondent is Jai Shan of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <swissrelifecapital.com> (“the disputed domain name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2017. On March 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2017.

The Center appointed Isabel Davies as the sole panelist in this matter on May 9, 2017. 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 is well-known as a provider of insurance services and is the owner of many trademarks for SWISS RE LIFE CAPITAL internationally dating from 2013.

The disputed domain name was registered on December 22, 2016.

The disputed domain name directs to a registrar parking page.

5. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in Zurich in 1863 and that today it is a global leading wholesale provider of reinsurance, insurance and other insurance-based forms of risk transfer. Dealing directly and working through brokers, its global client base consists of insurance companies, mid-to-large-sized corporations and public sector clients.

The Complainant states that it is the right holder of numerous trademarks which it uses in connection with its business, including the following:

- SWISS RE LIFE CAPITAL, Swiss word mark registered under number 642128 on April 9, 2013 in classes 35 and 36;

- SWISS RE LIFE CAPITAL, international word mark registered under number 1163676 on April 10, 2013 in classes 35 and 36; and

- logo, combined Swiss trademark registered under number 691609 on August 18, 2016 in classes 9, 16, 35, 36, 41 and 42;

(hereafter referred to as the “SWISS RE LIFE CAPITAL trademark”).

The Complainant states that its trademark is well-known all over the world and that the SWISS RE LIFE CAPITAL trademark is used across the globe, creating a widespread partner base, with large clients often having a global presence themselves. With offices in over 25 countries over the world, including China and Hong Kong, and more than 14,000 employees, the Complainant states that its business and its SWISS RE LIFE CAPITAL trademark are represented globally, resulting in an international reputation. The Complainant also actively promotes its SWISS RE LIFE CAPITAL trademark through its website linked to the domain name <swissre.com>.

The Complainant states that the disputed domain name directs to a standard registrar parking page and that on February 8, 2017, it sent a cease-and-desist letter to the Respondent, requesting the transfer of the disputed domain name. The Respondent replied that it was willing to transfer the disputed domain name in exchange of EUR 5,500.

The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1));

The Complaint is based on the Complainant’s SWISS RE LIFE CAPITAL trademark referred to above.

The Complainant has used its trademark continuously since its first trademark registration in 2012 including in its external communication and branding, e.g., on its company website accessible through <swissre.com>, in the services it offers, on banners, etc.

The Complainant states that the disputed domain name incorporates the Complainant’s SWISS RE LIFE CAPITAL trademark in its entirety.

It submits that it is well established that the addition of the generic Top-Level Domain (“gTLD”) can be disregarded when comparing the similarities between a domain name and a trade mark and therefore, the “.com” gTLD does not prevent a finding of identity under the Policy.

Since the disputed domain name is identical to the trademarks in which the Complainant has rights, the Complainant submits that the first element of Paragraph 4(a) of the Policy must be considered as proven.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2));

The Complainant states that under Policy paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It states that it is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent.

The Complainant submits that the first indication that the Respondent has no rights or legitimate interests in the disputed domain name can be found in the fact that the Respondent is not commonly known by the disputed domain name. (See Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500 (finding that the respondent does not have rights in a domain name when there has been no evidence adduced to show that the respondent has been commonly known by the domain name) and World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642 (finding that the respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name)). In the instant case, the WhoIs records indicate that the Respondent’s name is “Jai Shan”. Consequently, the Respondent is not commonly known by the disputed domain name.

Furthermore, the Complainant submits, the Respondent has not acquired trademark or service mark rights and the Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. In the absence of any license or permission from the Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

Finally, the Complainant submits, the disputed domain name directs to a standard registrar parking page. Such passive use does not constitute a legitimate or fair use according to the Policy.

For the above reasons, the Complainant contends that it is clear that the Respondent has no rights or legitimate interests in the disputed domain name.

The Disputed Domain Namewas registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3));

The Complainant states that it must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith

Registration in bad faith

The Complainant states that Policy paragraph 4(b) provides a non-exclusive list of factors, any one of which may demonstrate bad faith registration and use, namely:

- circumstances indicating that a domain name is registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name (Policy paragraph 4(b)(i));

- the registration of a 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 (Policy paragraph 4(b)(ii));

- the registration of a domain name primarily for the purpose of disrupting the business of a competitor (Policy paragraph 4(b)(iii)); and

- the use of a domain name for intentionally attempting to attract, for commercial gain, Internet users to a 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 web site or location or of a product or service on the Respondent’s web site or location (Policy paragraph 4(b)(iv)).

The Complainant states that, on receipt of a cease-and-desist letter from the Complainant, the Respondent proposed to sell the disputed domain name for a price of EUR 5,500 and that such a price is clearly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name and consequently provides sufficient evidence that the disputed domain name is registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name. Such a practice, the Complainant submits, demonstrates that the Respondent has registered and used the disputed domain name in bad faith in accordance with Policy paragraph 4(b)(i).

In addition, the Complainant contends that, at the time the Respondent registered the disputed domain name, the Respondent must have known of the Complainant and its trademarks because:

- The Complainant’s business and its SWISS RE LIFE CAPITAL trademark are well-known all over the world;

- The Complainant’s headquarters for the Asia-Pacific region is located in Hong Kong, where the Respondent is residing;

- In its entirety, the Complainant’s SWISS RE LIFE CAPITAL trademark is solely connected to the Complainant’s business and its use could only refer to the Complainant. By copying the Complainant’s SWISS RE LIFE CAPITAL trademark in its entirety in the disputed domain name, the Respondent could not but have been aware of the trademark while registering the disputed domain name;

- A simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant’s trademark registrations. Also a simple search on the Internet would have revealed the Complainant’s presence and trademarks.

As a result, the Complainant contends, the Respondent could not reasonably have been unaware of the Complainant’s SWISS RE LIFE CAPITAL trademark at the time of registration.

The Complainant states that it has previously been held that knowledge of a corresponding trademark at the time of a domain name registration suggests bad faith.

As there is bad faith pursuant to the Policy when the Respondent knew or should have known of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating a mark, in circumstances where Respondent itself had no rights or legitimate interest in said trademark, the Complainant submits, that the Respondent registered the disputed domain name in bad faith.

Use in bad faith

By registering the disputed domain name, the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its mark in a corresponding domain name. The effect of the registration is to affect the business of the Complainant by attracting visitors looking for information about the Complainant or its marks and creating difficulties for persons searching the Internet

The Complainant states that the disputed domain name currently only resolves to a standard holding page. Under the circumstances of the case, the passive holding of a domain name can amount to bad faith registration and use.

The passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the domain name by the Respondent that would be legitimate and not infringe the Complainant’s well-known mark or unfair competition and consumer protection legislation

In the instant case, the Complainant contends, it is impossible to imagine any plausible legitimate use of the disputed domain name by the Respondent, especially in view of the well-known character of the Complainant’s trademark. Moreover, it cannot be excluded that the Respondent uses or will use the disputed domain name for fraudulent activity, e.g., by profiting from the likelihood of confusion with the Complainant’s trademark for phishing activities.

The Complainant points out that, in view of the regulated sector in which the Complainant is operating, fraudulent use of the disputed domain name poses a real threat to the Complainant and its clients. It harms the Complainant’s reputation and is detrimental to the services it provides. Also, fraudulent use of the disputed domain name could have severe consequences as the Complainant’s life and health business concerns itself with several high profile clients and often entails the use of sensitive information.

For all the above reasons, the Complainant submits that the Respondent registered and uses the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name;

(iii) The disputed domain name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a response.

In the absence of a response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant was founded in 1863 and that today it is a well-known international wholesale provider of a variety of insurance services and that it owns many trademarks internationally for SWISS RE LIFE CAPITAL dating from 2012. The Panel accepts that this trademark is well-known internationally. It also accepts that the Complainant operates its website at “www.swissre.com”.

The Panel accepts that the disputed domain name incorporates the Complainant’s SWISS RE LIFE CAPITAL trademark in its entirety and that the addition of the gTLD can be disregarded when comparing the similarities between a domain name and a trade mark and therefore, the “.com” gTLD does not prevent a finding of identity under the Policy.

The Panel finds that the disputed domain name is identical to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts that the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel accepts that it is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name in order to shift the burden of production to the Respondent. (Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel accepts that the WhoIs records indicate that the Respondent’s name is “Jai Shan” and that the Respondent is not commonly known by the disputed domain name.

The Panel accepts that the Respondent has not acquired trademark or service mark rights, that the Respondent’s use and registration of the disputed domain name was not authorized by the Complainant and that, in the absence of any license or permission from the Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

As the disputed domain name directs to a standard registrar parking page which states “swissrelifecapital is coming soon”, the Panel accepts that such use does not constitute a legitimate or fair use.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

The Panel accepts that the Respondent’s proposed sale of the disputed domain name for a price of EUR 5,500 is in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name and consequently provides sufficient evidence that the disputed domain name is registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name. The Panel accepts that this is evidence of bad faith. (COINTREAU v. Chahine Khalil, WIPO Case No. D2015-1697; Mrs. Mona Opp v. zhengweiping, WIPO Case No. D2016-0054).

The Panel accepts that, at the time the Respondent registered the disputed domain name, the Respondent must have known of the Complainant and its trademarks which adds to the Respondent’s bad faith (Telstra Corporation Limited v. Ngan Lau, WIPO Case No. D2015-2218; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).

The Panel finds that the Respondent registered the disputed domain name in bad faith.

The Panel accepts that the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its mark in a corresponding domain name and that the registration affects the business of the Complainant by attracting visitors looking for information about the Complainant or its marks and creating difficulties for persons searching the Internet (Bulmers Limited, Wm. Magner Limited v. Piri Jaroubek N.A., WIPO Case No. D2009-1369).

The Panel accepts that the Respondent may be able to use the disputed domain name for fraudulent purposes which, in the insurance business where sensitive information is used, could severely affect clients and the Respondent’s reputation.

The Panel finds that the Respondent registered and uses the disputed domain name in bad faith.

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 <swissrelifecapital.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: May 20, 2017

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