WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Life AG and Swiss Life Intellectual Property Management AG v. Domain Admin, Whois Privacy Corp.
Case No. D2020-0449
1. The Parties
The Complainants are Swiss Life AG and Swiss Life Intellectual Property Management AG, Switzerland, represented by FMP Fuhrer Marbach & Partners, Switzerland.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <swisslife-assetgroup.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 25, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2020, 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 February 28, 2020 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 March 1, 2020.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2020.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 7, 2020. 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 Complainants have submitted evidence that it is the owner of a very large number of trademark registrations for SWISS LIFE in numerous countries and jurisdictions, including the following:
Swiss trademark SWISS LIFE (word) with registration number P-491528 and registration date November 15, 2001 for classes 09 ,16, 35, 36, 38, 41, and 42;
Swiss trademark SWISS LIFE (figurative) with registration number P-523590 and registration date July 8, 2004 for classes 09 and 16;
EUTM trademark SWISS LIFE (word) with registration number 003438413 and registration date October 20, 2006 for classes 09 ,16, 35, 36, 38, 41, 42, and 44; and
EUTM trademark SWISS LIFE (figurative) with registration number 003438496 and registration date March 27, 2006 for classes 09 ,16, 35, 36, 38, 41, 42, and 44.
The disputed domain name <swisslife-assetgroup.com> was registered by the Respondent on January 29, 2020.
The disputed domain name resolved, at the time of filing the complaint to a website bearing remarkable similarities to the Complainant’s site, but no longer resolves at the time of this decision.
5. Parties’ Contentions
The Complainants are Swiss Life AG and Swiss Life Intellectual Property Management AG, both Corporations (Ltd) incorporated under the laws of Switzerland and having their legal domicile in Switzerland. The Complainant 2 is a subsidiary of the well-known Swiss Life AG (Complainant 1) and responsible for managing all intellectual property owned within the group.
SWISS LIFE stands for Switzerland’s largest life insurance company and one of Europe’s leading comprehensive life and pensions and financial solutions providers, with approximately CHF 246 billion of assets under management by the end of 2017. Founded in 1857 in Zurich as the “Schweizerische Lebensversicherungs und Rentenanstalt cooperative”, the company entered the Swiss stock market in 1997 and adopted its current name in 2002. In 2017, the group generated a total turnover of CHF 18.565 billion and had around 8 000 employees.
The name “Swiss Life” also stands for an over 150-year-old company with its objectives and tradition. SWISS LIFE is not only the Complainants’ umbrella brand, rather the element “Swiss Life” is the distinctive part in the name of many of its subsidiaries (almost 100 only in Switzerland) and serves as the generally accepted and used moniker for the group of companies of the Complainants (the SWISS LIFE brand). Accordingly, the SWISS LIFE brand is the basis of a substantial trade, domain name and trade mark portfolio of the Complainants.
The Complainants have established various Internet websites accessible by domain names featuring the SWISS LIFE brand, such as <swisslife.ch> and <swisslife.com>. The Complainants’ websites contain different home pages to market the SWISS LIFE products and services. The Complainants have spent substantial time, efforts and money in advertising and promoting the SWISS LIFE trademark. It has been intensely used for the registered goods and services in all kinds of media in Switzerland and abroad, both by the Complainant 1 and by its domestic and foreign branches and/or affiliates. Because of this consistent and continuous strategy, the SWISS LIFE brand is today well-known in Switzerland and many other countries. The Complainants have developed an enormous goodwill in the trademark. As a result of the above strategy and efforts, the SWISS LIFE brand has reached the status of a well-known mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883 (Paris Convention). The Swiss Supreme Court affirmed this already in the year 2007, with decision BGE 4C.341/2005 (consideration 5). The court stated that it is “well known that the signs of the Claimants have a significant degree of fame and are accordingly perceived by the consumers as an indication of the Claimants respectively their products”. Thus, the Swiss Supreme Court affirmed the well-known status of the SWISS LIFE brand and thereby also explicitly mentions the “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks” dated October 1999. This precedent permits the Complainants to base their claims on art.16 sect.3, TRIPS. In doctrine, scholars list the SWISS LIFE brand not only as a well‑known/notorious mark but rather as a famous mark in the sense of Article 15 of the Swiss Trademark Act (DAVID/FRICK, Basler Kommentar, MschG 15 N 49; Die wirtschaftliche Rechtsprechung des Bundesgerichts im Jahr 2007, printed in: ZBJV 144/2008, S. 675 ff., 702).
The Complainants’ SWISS LIFE brand appears in its entirety in the disputed domain name <swisslife-assetgroup.com>. The additional element “asset” refers to the financial services allegedly offered by the Respondent and does, as a descriptive element, not distinguish the domain name as such. The same applies to the element “group”, which refers to the alleged group relationship with the Complainants, which does however not exist, and should, as a descriptive element, not be taken into account in the assessment of the overall impression of the disputed domain name. Thus, the Complainants’ SWISS LIFE brand, which constitutes the beginning of the disputed domain name and thereby precedes all other elements, is the dominant element of disputed domain name. Due to the negligible character of the other elements and in view of their separation by a hyphen, the Complainants’ SWISS LIFE brand is used identically in the Respondent’s disputed domain name with regards to its overall impression.
Under the disputed domain name, the Respondent allegedly offers real estate, financial and insurance services, which do however not exist but serve merely as a part of a clever attempt to defraud. Furthermore, the Respondent prominently uses the SWISS LIFE brand on its website as a trademark for the alleged financial services. Regardless of the fraudulent nature of the Respondent’s alleged offer, from a trademark perspective, the services are classified in class 36 Nice classification “Insurance; financial affairs; monetary affairs; real estate affairs”. The famous SWISS LIFE brand enjoys among others protection for financial services. Therewith, the content of the Respondent’s website is identical to services protected by the above-mentioned trademarks, especially but not limited to the famous word mark SWIS LIFE as well as the SWISS LIFE trademark registrations.
The disputed domain name is identical to the protected SWISS LIFE brand and the Respondent, in addition, prominently misuses the SWISS LIFE brand for the promotion of its alleged services. It is highly likely that consumers are confused as far as they are likely to believe that the Respondent’s domain is one of the many domains owned by the Complainants. In any case, consumers will assume that there are economic, legal or other ties between the Complainants and the owner of the disputed domain name, which will result in a legally relevant so-called indirect risk of confusion. As the disputed domain name consists of the Complainants’ main identifier, i.e., the registered SWISS LIFE brand, the Respondent’s domain is not only confusingly similar/identical with the Complainants’ trademarks but also with the Complainants’ company and tradename to which the Complainants have rights under the scope of the Policy.
On its website “www.swisslife-assetgroup.com” the Respondent refers to itself as the “Swiss Life Asset Group” and the “Swiss Life AG” and claims to be registered with the UK Financial Conduct Authority (FCA) under the Number 461566. In fact, the Respondent is not registered with the UK FCA. Rather, the Respondent misuses the FCA Number of Swiss Life (Liechtenstein) AG, a subsidiary of Complainant 1.
The Complainants are both Corporations (Ltd) registered in the commercial register of the canton of Zurich, Switzerland. Being registered in the commercial register, the Complainants’ SWISS LIFE brand is also protected as a company name. Using the sign SWISS LIFE as a domain and as a business name infringes the Complainants’ business name rights according to Art. 956 Swiss Code of Obligations.
According to the Swiss Criminal Code, the pretense of false facts to induce third parties to carry out financial transactions to their detriment constitutes a criminal offence. According to Art. 146 of the Swiss Penal Code, anyone who, with the intention of unlawfully enriching himself or herself or another person, fraudulently misleads someone by pretending or suppressing facts, or fraudulently encourages him or her to make a mistake and thus causes the mistaken person to behave in a way that damages himself or herself or another person’s property, is punishable by imprisonment for up to five years. Against this background, the Respondent’s fraudulent activities qualify at least as an attempt to defraud in the sense of Art. 146 Swiss Criminal Code.
Additionally, the Complainants are amongst others holders of the domain name <swisslife.ch> and <swisslife.com>. These domain names were registered prior to the disputed domain name <swisslife-assetgroup.com>. Although domain names do not grant an exclusionary right sui generis, their unauthorized use is to be assessed in the light of the law against unfair competition as the Respondent refers to the Complainants’ SWISS LIFE brand for promoting its alleged financial asset management service. By using the disputed domain name in communication with potential victims, the Respondent intentionally refers to the well‑known/famous SWISS LIFE brand and tries to illegally impersonate an actual existing subsidiary of the Swiss Life Group. Apart from the obvious criminal aspect of the attempts to defraud as such, the impersonation leads in addition to an unfair and illegitimate exploitation of the Complainants’ reputation under the Swiss federal law against unfair competition (namely art. 2 and 3 let. d UCA) and furthermore violates the Complainants’ personality rights vested in their tradename and company names respectively (art. 28 ff. of the Swiss Civil Code). Thus, the use of the disputed domain name <swisslife-assetgroup.com> as well as the email addresses […]@swisslife-assetgroup.com and […]@swisslife-assetgroup.com is unlawful in view of the federal act against unfair competition as well as the Swiss civil and criminal code.
The Complainant’s SWISS LIFE brand has demonstrably reached the status of a well-known mark or/and famous mark within Switzerland and abroad. The Complainant 2 does carefully monitor the worldwide use of the sign and brand since many years and takes decisive action against any third-party usurpers. Accordingly, it is impossible, that the Respondent is in any way entitled to and in the SWISS LIFE brand. Further, the Respondent cannot provide any proper justification as to why it would be entitled to register a domain name containing the Complainants’ SWISS LIFE brand and to use it in the context of alleged financial services.
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: “by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the Complainants mark as to the source, affiliation or endorsement of its website or location or of a product or service on its website or location.” There is no reason whatsoever to use the well-known and famous SWISS LIFE brand in a domain name other than to impersonate the Complainants and their subsidiaries or otherwise exploit the Complainants’ reputation attached to the sign. Also in present case, the Respondent misuses the disputed domain name to inadmissibly impersonate an actually existing subsidiary of the Complainant 1. Even if consumers may understand that the Respondent is not a direct member of the SWISS LIFE group as suggested by the Respondent, such consumers will still assume a sort of affiliation or endorsement, which in fact does not exist.
Accordingly, the Respondent obviously intends to deceive third parties on the source of origin of the alleged financial services in order to gain the third parties’ trust. Further, by misusing the SWISS LIFE sign and a Swiss Life UK FCA number, the Respondent encourages consumers to transfer financial assets in the belief that these assets are transferred to the Complainants or their subsidiaries. However, in fact, these assets will be directly transferred to the Respondent, who will misuse the assets to its own benefit. Once transferred, the consumers will never get back their assets.
Thus, the Respondent uses the disputed domain name in order to create a likelihood of confusion with the Complainants and their offerings in the broadest sense, which constitutes an infringement of trademark and company name rights and, in addition, constitutes a criminal offence under the law against unfair competition and Swiss criminal law. It is well established under the Policy, that the misuse of a trademark in a domain name and its association with illegal or improper activity, is a clear indication of registration and use in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Complainants, Swiss Life AG and Swiss Life Intellectual Property Management AG are collectively referred to as “the Complainant”, below. According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in 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 Complainant is, according to the submitted evidence, the owner of the registered trademark SWISS LIFE. The disputed domain name <swisslife-assetgroup.com> incorporates the SWISS LIFE trademark in its entirety with the addition of a hyphen and the common and descriptive terms “asset” and “group”. In the present case, the Complainant’s trademark is readily recognizable in the disputed domain name and the addition of the descriptive terms does not prevent a finding of confusing similarity under the first element test. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel concludes that the disputed domain name <swisslife-assetgroup.com> is confusingly similar to the Complainant’s trademark SWISS LIFE and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for SWISS LIFE predate the Respondent’s registration of the disputed domain name <swisslife-assetgroup.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the SWISS LIFE trademark in the disputed domain name.
From the evidence in the case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains direct references to the Complainant’s SWISS LIFE trademarks and business. The evidence indicates that the Respondent has attempted to impersonate the Complainant and a subsidiary of the Complainant by reproducing not only the Complainant’s SWISS LIFE trademarks but also the Complainant’s UK FCA number on the Respondent’s website. Furthermore, the evidence indicates that the Respondent has used the disputed domain name <swisslife-assetgroup.com> to encourage consumers to transfer financial assets to the Respondent.
Given the above, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant has submitted evidence demonstrating that the Complainant’s SWISS LIFE trademark is considered a well-known mark within the meaning of Article 6bis of the Paris Convention and that the Respondent is reproducing the SWISS LIFE trademark on the website, to which the disputed domain name <swisslife-assetgroup.com> resolves. The Complainant’s SWISS LIFE trademark registrations predate the Respondent’s registration of the disputed domain name and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademarks at the time the Respondent registered the disputed domain name.
Furthermore, the evidence in the case indicates that the Respondent is using the disputed domain name <swisslife-assetgroup.com> together with the Complainant’s SWISS LIFE trademarks and the Complainant’s UK FCA number in order to impersonate the Complainant and deceive third parties regarding the source of origin of the alleged financial services. On the website, to which the disputed domain name resolves, the Respondent encourages consumers to engage in business and to transfer financial assets. Given the Respondent’s use of the Complainant’s SWISS LIFE trademarks not only in the disputed domain name but also on the Respondent’s website, there is a risk that consumers may falsely believe that they are engaging with the Complainant.
Thus, the evidence in the case before the Panel indicates that the disputed domain name <swisslife-assetgroup.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark SWISS LIFE as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <swisslife-assetgroup.com> has been registered and 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-assetgroup.com> be transferred to the Complainant.
Date: April 21, 2020