WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Old Mutual Life Assurance Company, Old Mutual PLC, Old Mutual Investment Advisers, Inc., Old Mutual Life Assurance Company Zimbabwe Limited, South African Mutual Life Assurance Society, Old Mutual Life Assurance Company Kenya, and Old Mutual Swaziland (Proprietary) Limited v. Private Whois, Knock Knock WHOIS Not There, LLC / Angela Green
Case No. D2017-0987
1. The Parties
The Complainants are Old Mutual Life Assurance Company (the “First Complainant”) of Cape Town, South Africa, Old Mutual PLC (the “Second Complainant”) of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Old Mutual Investment Advisers, Inc. (the “Third Complainant”) of Boston, Massachusetts, United States of America (“United States”), Old Mutual Life Assurance Company Zimbabwe Limited (the “Fourth Complainant”) of Harare, Zimbabwe, South African Mutual Life Assurance Society (the “Fifth Complainant”) of Cape Town, South Africa, Old Mutual Life Assurance Company Kenya (the “Sixth Complainant”) of Nairobi, Kenya, and Old Mutual Swaziland (Proprietary) Limited (the “Seventh Complainant”) of Mbabane, Swaziland, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Private Whois, Knock Knock WHOIS Not There, LLC of Beaverton, Oregon, United States / Angela Green of Johannesburg, South Africa.
2. The Domain Name and Registrar
The disputed domain name <oldmutual-online.com> (the “Disputed Domain Name”) is registered with Automattic Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2017. On May 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 19, 2017, 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 Complainant on May 23, 2017, 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 amended Complaint on May 23, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on May 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2017.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 26, 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainants are a financial services group established in South Africa in 1845, now listed on the London, Johannesburg, Zimbabwe, Malawi and Namibian stock exchanges which operate a Fortune 500 recognised business with more than 18.9 million customers and assets of GBP 168.2 billion under its management. The Complainants and group companies hold more than 200 registrations comprised of or containing the trademark OLD MUTUAL in numerous countries internationally including the United States, which it uses to designate various insurance and financial services. In South Africa, a registration as a combination mark (for various insurances and financial services in class 36) has been in effect since 1980 and the words OLD MUTUAL simpliciter have been registered in class 36 since 1997.
The Complainants conduct business on the Internet using various domain names including <oldmutual.com> and <oldmutual.co.za>.
The Respondent registered the Disputed Domain Name <oldmutual-online.com> on March 24, 2017.
The Respondent uses the Disputed Domain Name for an online “advanced fee” scam using email communications pretending to be from the brand OLD MUTUAL to seek from the recipient of that email an up-front payment in order to later receive a pre-approved loan.
5. Multiple Complainants Filing Against a Single Respondent
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
This Panel is satisfied that the Complainants have a specific common grievance against the Respondent, and that the Respondent has also engaged in common conduct that has affected the Complainants in a similar fashion. This Panel is also satisfied that it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1)
6. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainants have named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Given the underlying registrant information disclosed following enquiries differs from the respondent named in the initial Complaint, this Panel is satisfied it is appropriate to add the disclosed underlying registrant to the amended Complaint as a co-respondent and finds that in light of the record the named Private Whois, Knock Knock WHOIS Not There, LLC. of Beaverton, Oregon, United States / Angela Green of Johannesburg, South Africa is the proper Respondent (jointly and severally, “Respondent”) (see WIPO Overview 3.0, section 4.4.2).
As noted having regard to the Complainants’ submissions and the location of the principal office of the Registrar, Automattic Inc., it appears that the applicable mutual jurisdiction1 is California in the United States.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
7. Parties’ Contentions
The Complainants cite the Third Complainant’s United States trademark registration no. 2051432 for the mark OLD MUTUAL and more than 200 registrations in various other countries as prima facie evidence of ownership by the group.
The Complainants submit that the mark OLD MUTUAL is well known and that their rights in that mark predate the Respondent’s registration of the Disputed Domain Name <oldmutual-online.com>. They submit that the Disputed Domain Name is confusingly similar to their trademark, because the Disputed Domain Name incorporates in its entirety the OLD MUTUAL trademark and that the similarity is not removed by the addition of the term “online”.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to respond to emails that use the Disputed Domain Name, its logo and its physical address and thereby illegitimately “uses the offending domain name to misrepresent it as the Complainants as part of a scam”. The Complainants contend that the Respondent is using the Disputed Domain Name with the purpose of trading on the Complainants’ goodwill by falsely representing that its scam emails were legitimately sent by the Complainants.
Finally, the Complainants allege that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules.
The Respondent did not reply to the Complainants’ contentions.
8. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants have the burden of proving the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have produced sufficient evidence to demonstrate that they have registered trademark rights in the mark OLD MUTUAL in the United States and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the OLD MUTUAL trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainants’ trademark OLD MUTUAL (b) followed by a space and (c) followed by the word “online” and (d) the generic Top-Level Domain (“gTLD”) “.com”, all in one continuous domain name.
It is well-established that the gTLD used as part of a domain name may be disregarded (see WIPO Overview 3.0, section 1.11.2). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “oldmutual-online”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of spaces or words such as, in this case, “online”: (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043).
The Panel finds that the Complainants have established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1.)
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online “advanced fee” scam using email communications pretending to be from the brand OLD MUTUAL to seek from the recipient of that email an up-front payment in order to later receive a pre-approved loan for commercial gain and with the purpose of misleading the consumer based on the wide recognition of the Complainants’ mark OLD MUTUAL. The Complainants further contend that the Respondent is also using the logo and physical address of the Complainants to reinforce the false impression that the emails are legitimate. In this respect, the Panel notes that the Disputed Domain Name does not resolve to a website. Naturally too, in view of the Complainants’ allegations, nor does the example of scam email provided in uncontested evidence accurately and prominently disclose the unauthorized nature of the Respondent’s relationship with the Complainants. It could therefore be inferred that the Respondent was opportunistically using the Complainants’ mark in order to gain a financial advantage by deception.
The Panel finds for the Complainants on paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainants must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark OLD MUTUAL is so well known a mark for insurances and financial services in the United States and South Africa, that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it. (See: Old Mutual Life Assurance Company (South Africa) and Mutual & Federal Insurance Company Limited v. Unknown Web Host, WIPO Case No. D2015-1146 (“well aware of the Complainants and their business”); Old Mutual Life Assurance Company (South Africa) Limited; Old Mutual PLC, Old Mutual Investment Advisers, Inc.; Old Mutual Life Assurance Company Zimbabwe Limited; South African Mutual Life Assurance Society; Old Mutual Life Assurance Company Kenya; Old Mutual Swaziland (Proprietary) Limited v. OLDMUTUAL F INANCE / Registration Private, Domains By Proxy, LLC., WIPO Case No. D2016-2607 (“the Respondent must have known of the reputation of the Complainants”)).
Further, a gap of ten years between registration of a complainant’s trademarks and respondent’s registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name more than three decades after the Complainants established trademark rights in the OLD MUTUAL mark.
The Panel accepts the Complainants’ submission that the most likely reason for the Respondent registering the Disputed Domain Name and using it to send fictitious emails, is that the Respondent was attempting to perpetrate a fraud.
Basically, the Respondent seeks to generate revenue from the Complainants’ goodwill by attempting to deceive some recipients of the emails into believing they had received a legitimate communication from a domain name associated with the Complainants’ OLD MUTUAL brand (see paragraph 4(b)(iv) of the Policy). Moreover, given the obvious risk of consumers being confused as to the origin of the emails, or affiliation of the emails with the Complainants, this Panel regards such conduct as constituting bad faith.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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, <oldmutual-online.com>, be transferred, as requested by the Complainants, to the First Complainant.
Date: July 9, 2017
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the registrar’s WhoIs at the time of the filing of the complaint with the Provider or the principal office of the registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office of the Registrar (i.e. State of California in the United States).