WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The British United Provident Association Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2018-1755
1. The Parties
The Complainant is The British United Provident Association Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <bupa3xexec.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018. On August 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2018, 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 August 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant requested suspension of the proceeding on August 11, 2018. The Center sent the Notification of Suspension to the Parties on August 14, 2018. On September 13, 2018, The Complainant requested to re-institute the proceeding against the underlying registrant disclosed by the Registrar and filed additional materials, comprising a “Witness Statement” by the Complainant’s solicitors, with annexures. Although these additional materials do not, strictly speaking, constitute an “amended complaint”, they are accepted by the Panel and will, together with the original filings, be treated as the Complaint.
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 September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on October 30, 2018. 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 a large international organization operating in the health industry. It provides health insurance services and operates hospitals and clinics in several countries throughout the world including the United Kingdom, Africa, the Americas, Asia, and Australia under its BUPA and BUPA logo trade marks. These marks are registered in many countries and regions throughout the world including the United Kingdom, the United States, and the European Union, with registrations dating back to October, 1986 in the United Kingdom (the United Kingdom trademark registration no. 1284011 for BUPA, registered on October 1, 1986) and October, 1998 in the United States (the United States trademark registration no. 2193310 for BUPA, registered on October 6, 1998). The Complainant is also the owner of a number of domain name registrations which contain the word “bupa” including <bupa.com> at which it promotes its services worldwide. According to evidence provided by the Complainant, it uses a sub-domain <bupa3.xexec.com> internally as an online platform for the management of employee benefits.
No information is available about the Respondent other than that provided in the WhoIs for the disputed domain name. In this respect, the Panel notes that attempts to deliver written notice of the Complaint and the Respondent Default to the address provided at the WhoIs were unsuccessful. The Respondent has a history of involvement in domain name disputes. According to evidence provided by the Complaint, the Respondent has been the subject of at least 10 prior successful complaints filed at WIPO under the Policy.
The disputed domain name does not currently resolve to an active website, however, at the date of the Complaint, it resolve to a website displaying pay-per-click links regarding advertisements to competitors and/or other businesses operating in areas that are identical, similar or related to those of the Complainant, and it was offered for sale at <sedo.com> at a minimum offer price of USD 500.
5. Parties’ Contentions
The Complainant’s contentions may be summarised as follows:
(i) The disputed domain name wholly incorporates the Complainant’s well known “BUPA” trade mark. The additional elements “3xexec” do not serve to dispel the deceptive similarity between the disputed domain name and the trade mark and furthermore, they create a heightened likelihood of confusion with the Complainant’s sub-domain <bupa3.xexec.com>. It differs from that sub-domain name only by the omission of the “.” following the numeral “3”.
(ii) The Respondent is not licensed or authorised to use the Complainant’s trade mark and is not associated with the Complainant.
(iii) The disputed domain name was registered only 6 days after of the decision of the Panel in The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1117 involving the present parties, in which the disputed domain name <myviewbupa.com> was a typo-squat for the Complainant’s sub-domain <myview.bupa.com>.
(iv) The Respondent is a serial cyber-squatter who has been the Respondent in at least 10 prior decisions under the Policy involving misappropriation of well known third party trade marks with 4 of those cases involving typo-squatting.
(v) The Complainant cites several further examples of domain names owned by the Respondent which incorporate the name or trade mark of well-known third parties, including, for example, Barclays Bank.
(vi) The Respondent’s purpose in registering the disputed domain name was to profit from the sale of the disputed domain name to the Complainant or a competitor and/or to derive benefit from consumers’ confusion with the Complainant including use of the disputed domain name for the purpose of “phishing”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant’s evidence shows that its “BUPA” trade mark is well known and widely recognised and is registered in many countries throughout the world. Its United Kingdom registration dates back to 1986. The trade mark comprises an invented word or acronym and is the first and dominant particular of and incorporated in its entirety in the disputed domain name. The additional elements “3xexec” do not serve to dispel the dominant impression made by the Complainant’s trade mark.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent filed application for the disputed domain name only 6 days after it had received an adverse decision under the Policy involving the Complainant’s same trade mark and with circumstances substantially similar to the present case. Plainly, therefore, the Respondent had full knowledge of the Complainant’s rights in the mark. The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark in the disputed domain name or otherwise. There is no evidence that the Respondent has been commonly known by the disputed domain name. The use which the Respondent is making of the disputed domain name by offering it for sale is not, in the light of the Respondent’s obvious knowledge of the Complainant’s rights, either legitimate, noncommercial, nor fair, nor does it constitute a bona fide offering of goods or services.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As discussed in paragraph 6B above, the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights in the trade mark “BUPA” and there is no evidence to suggest that the Respondent had any purpose in mind other than to profit from the recognition and reputation attaching the Complainant’s mark. The Respondent’s subsequent use of the disputed domain name by resolving it to a website of pay-per-click links to competing websites and offering it for sale demonstrate the Respondent’s bad faith. The Respondent’s conduct is clearly intended to profit knowingly from the mis-appropriation of the Complainant in the trade mark. Ownership of the disputed domain name by any other person would put into the hands of the purchaser an instrument of potential deception and fraud.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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 <bupa3xexec.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: November 13, 2018