WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Life AG; Swiss Life Intellectual Property Management AG v. Domain Admin, Whois Privacy Corp
Case No. D2019-0299
1. The Parties
The Complainants are Swiss Life AG of Zurich, Switzerland; Swiss Life Intellectual Property Management AG of Zurich, Switzerland (collectively the “Complainant”), represented by FMP Fuhrer Marbach & Partners, Switzerland.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <swisslife-international.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2019, 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 February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on March 22, 2019. 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 Swiss Life AG is Switzerland’s largest life insurance company. The Complainant Swiss Life Intellectual Property Management AG, is its subsidiary and is responsible for managing all intellectual property of Swiss Life AG and its subsidiaries (the “Swiss Life Group”). The company Swiss Life AG was founded in 1857 and entered the Swiss stock market in 1997. In 2017, the Swiss Life Group generated a turnover of CHF 18.565 billion and had around 8000 employees. The name Swiss Life is the Complainant’s umbrella brand and the distinctive part of the name of many of its subsidiaries, of which it has almost 100 in Switzerland alone.
The Complainant owns a substantial global portfolio of trademarks incorporating the terms “swiss life” including SWISS LIFE in plain-lettering and “SwissLife” with logo. The following marks for SWISS LIFE are registered in Switzerland.
− Switzerland Trademark Registration No. P-436709, registered on February 12, 1997, in class 36;
− Switzerland Trademark Registration No. 491528, registered on November 15, 2001, in classes 9, 16, 35, 36, 38, 41 and 42;
The Complainant also operates domain names incorporating the name “Swiss Life” including <swisslife.ch> and <swisslife.com>.
The disputed domain name was registered on December 18, 2018. It currently resolves to a website advertising investment consulting services. A note at the bottom of the page states “Swiss Life International is Authorised and Regulated by the European Economic Area (EEA) (Financial Services Register number 203213)”. The “Contact Us” page provides details of two offices in Luxembourg and London.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark SWISS LIFE in which it has rights. Its Swiss Life brand, which is protected as a trademark, company name, trade name and domain name, appears in its entirety in the disputed domain name. The additional element “international” only refers to the alleged international focus and does not add any distinctiveness. Therefore, consumers will assume there are economic, legal or other ties between the Complainant and the Respondent.
Additionally, the Complainant adds the following factors which heighten confusion. The Respondent is using the name “Swiss Life” not only as a trademark but also as a business name, which infringes the Complainant’s rights to exclusive use under Art. 956 Swiss Code of Obligations. The Complainant’s Swiss Life brand enjoys protection for among others, financial services and the disputed domain name is similarly used to advertise financial and consulting services under the brand “Swiss Life”. It also claims the company is registered according to the United Kingdom Financial Services Register Number 203213 which actually belongs to the Complainant’s subsidiary Swiss Life (Luxembourg) SA. This is likely to create the false impression that the Respondent’s website is legally or economically related to the Complainant. It unfairly exploits the Complainant’s reputation in violation of the Swiss Federal Law Against Unfair Competition and also violates the Complainant’s personality rights vested in their trade name and company name under the Swiss Civil Code.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no legal or economic relationship with the Complainant. The Respondent is misusing the Complainant’s brand to confuse and take advantage of the Complainant’s customers and to create the false impression that the Respondent is legally or economically related to the Complainant.
Registered and used in bad faith
The Complainant submits that the Respondent acquired and is using the disputed domain name in bad faith. There is no justification for the Respondent’s registration of the disputed domain name containing the Complainant’s mark, nor use of the website in the context of financial services and use of the Financial Services Register Number belonging to the Complainant’s subsidiary. Such use falsely suggests it is an official website and authorized by the Complainants. The Respondent thereby exploits the Complainant’s reputation in order to attract Internet traffic to its website for commercial gain by creating a likelihood of confusion with the Complainants and their offerings, in violation of paragraph 4(b) of the Rules.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Consolidation of the Complainants
The Complaint was filed in the name of two related entities, the parent company which is the operating arm of the Swiss Life Group and the subsidiary company which holds its intellectual property. In accordance with section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel believes the Complainants have a common grievance against the Respondent and that the Respondent’s conduct has affected them in a similar fashion. Therefore, it would be equitable and procedurally efficient to permit the consolidation.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has submitted evidence of numerous trademark registrations for SWISS LIFE and for marks incorporating the terms “swiss life” in jurisdictions around the world. Therefore, the Complainant has proven the requisite rights in the mark SWISS LIFE.
The test for whether a domain name is identical or confusingly similar to a trademark is relatively straightforward. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
In this case, the disputed domain name clearly contains the mark SWISS LIFE with the addition of the term “international”. This is merely a descriptive term which does not detract from the fact that the substantive portion of the disputed domain name is SWISS LIFE, and therefore does not prevent a finding of confusing similarity with the Complainant’s mark.
Accordingly, the Panel finds the disputed domain name is confusingly similar to the Complainant’s mark, and the first requirement of the UDRP is satisfied.
It is not necessary to consider the Complainant’s additional arguments under this element, but they may be relevant under the element of bad faith.
B. Rights or Legitimate Interests
Under the second element, the Complainant must demonstrate that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
The Panel accepts the Complainant’s contention that the Respondent has no legal or economic relationship with the Complainant. Given the use of a privacy service when registering the disputed domain name, the real name of the Respondent cannot be verified. The content of the website to which the disputed domain name resolves suggests it is called Swiss Life International, however the United Kingdom Financial Services Register Number referenced on the page in fact belongs to the Complainant’s subsidiary Swiss Life (Luxembourg) SA. Given that the Complainant disclaims any relationship with the disputed domain name or authorization of its registration, presumably it is not in fact the Complainant’s subsidiary and the name “Swiss Life International” is a name designed to create a false impression of affiliation with the Complainant. This cannot vest the Respondent with legitimate rights or interests. It also precludes any legitimate or bona fide use of the disputed domain name since it is deliberately misleading consumers.
By failing to respond, the Respondent has not presented any evidence to the contrary and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Finally, the Complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
A strong inference of bad faith can arise where the Respondent “knew or should have known” of the Complainant’s trademark rights (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). Given the Complainant is Switzerland’s largest insurance company, and the Respondent uses the registration number of its subsidiary on its website, it is fair to assume the Respondent knew of the Complainant and its rights to the mark SWISS LIFE.
The use of the name “Swiss Life International” in conjunction with the false registration number is clearly designed to create a false impression of affiliation with or authorization by the Complainant. Additionally, given that the Complainant’s services include financial services and the Respondent purportedly offers investment services, there is a clear cause for confusion with the Complainant. On closer inspection, there is evidence that that the employees listed as part of the investment team are in fact real individuals working at different companies and are not related to any company called “Swiss Life International” at all. The website is also inconsistent, with the “Contact Us” page referencing an Indian consulting company called “Beratung Consulting” and providing many dead-end links. All of these factors strongly indicate bad faith and that the Respondent is using the disputed domain name in order to attract Internet traffic to its website for commercial gain by creating a likelihood of confusion with the Complainant.
Therefore, the Panel finds the disputed domain name was 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 <swisslife-international.com> be transferred to the Complainant.
Date: April 4, 2019