WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1Life Insurance Limited v. Private Domain Registrations / Sonya Dryden
Case No. D2020-0469
1. The Parties
The Complainant is 1Life Insurance Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Private Domain Registrations, United States of America (the “United States”) / Sonya Dryden, United States.
2. The Domain Name and Registrar
The disputed domain name <1life.website> is registered with Global Domains International, Inc. DBA DomainCostClub.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2020. On February 27, 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 amended Complaint on March 3, 2020.
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 March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2020.
The Center appointed Clive N.A. Trotman as the sole panelist in this matter on March 31, 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 Complainant is a major South Africa insurance company, founded in 2005 and now having 760 employees. It has been described as South Africa’s leading direct life insurer. The Complainant has a prominent presence on the Internet, including on Facebook (103,000 likes), Twitter (5,500 followers), and YouTube (over 2.3 million views).
The Complainant is also known for its Corporate Social Investment (CSI) projects in South Africa, including “1Life Truth About Money”, which teaches financial literacy, the “DSTV 1Life Life Changer Awards” in 2018 and 2019, and other sponsorships.
The Complainant owns at least 15 South African trademarks comprising or incorporating the trademark 1LIFE, of which the following are representative for the purpose of the present proceeding:
1LIFE, South African trademark, registered August 29, 2014, registration number 2013/03646, class 36 (with associated trademarks registered in classes 35 and 38);
1LIFE CHANGING LIVES (design with words), South African trademark, registered August 29, 2014, registration number 2013/03649, class 36 (with associated trademarks registered in classes 35 and 38);
1LIFE (design with words), South African trademark, registered August 29, 2014, registration number 2013/03655, in class 36 (with associated trademarks registered in classes 35 and 38).
The Complainant also owns and uses the domain name <1life.co.za>, registered on July 7, 2009, and the associated website for the promotion of its services. It also has owned the domain names <1lifeinsurance.co.za> since May 9, 2016, and <1‐life‐insurance.co.za> since May 29, 2017.
Nothing is known about the Respondent except for the contact details provided at the time of registration of the disputed domain name, which was registered on January 22, 2020. The disputed domain name has resolved to a website in the nature of a holding page that advertises the services of a domain name seller.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks comprising or incorporating 1LIFE listed in section 4 above, including common law rights. The Complainant says the disputed domain name wholly incorporates its trademark and is identical or confusingly similar. The addition of the generic Top-Level Domain (“gTLD”) “.website” does not reduce the confusing similarity.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that it was registered 15 years later than the first use in commerce of the Complainant’s trademark. The Respondent’s use of the disputed domain name has not been connected with any bona fide offering of goods or services. Its use has included a website that the Complainant alleges to be in the nature of advertisements for an online pyramid scheme that offers commission for referrals. The Respondent is not commonly known by the disputed domain name, which is not in any legitimate non‐commercial or fair use.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a website that generates revenue for the Respondent by exploiting the Complainant’s trademark in order to attract visitors and direct them to an alleged pyramid scheme. By using the disputed domain name, the Respondent has attempted to attract Internet users for commercial gain by confusion with the Complainant’s trademark.
The Complainant submits that the registration of a domain name identical or confusingly similar to a widely‐known trademark by an unconnected party can create a presumption of bad faith.
The Complainant also says it believes the disputed domain name was registered in order to block the Complainant from doing so and to disrupt the Complainant’s business.
The Complainant sent a cease and desist letter by email to the Respondent on January 23, 2020. There has been no reply.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel has perused the copies of trademark registrations produced in evidence and is satisfied that the Complainant has rights in the trademark 1LIFE, standing alone or in combination as registered, as required under paragraph 4(a)(i) of the Policy.
The disputed domain name is <1life.website>, of which the gTLD “.website” need not be taken into consideration in the determination of confusing similarity. The disputed domain name comprises the Complainant’s trademark 1LIFE in its entirety. Accordingly the disputed domain name is found to be effectively identical to the Complainant’s trademark and the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant says prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the evidence, the Complainant filed its trademark applications on February 12, 2013, and first received trademark registration on August 29, 2014, some 5 years earlier than the registration of the disputed domain name on January 22, 2020.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent has not responded and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
Specifically, a screen capture made on March 4, 2020, showed the disputed domain name to resolve to a website promoting the business of Global Domains International, Inc. The website offered a number of services centred on the sale of domain names, including those in the “.ws” domain (being the country code Top-Level Domain for Western Samoa) and internationalized domain names that may use a non-English character set. The website also advertised the concept that certain of its services could be more widely promoted by customers in return for commissions. The Panel finds that the disputed domain name, by exhibiting the Complainant’s trademark and then redirecting visitors to the services of Global Domains International, Inc., is not thereby, or in any other way, being used in connection with a bona fide offering of goods or services within the concept of paragraph 4(c)(i) of the Policy.
There is no evidence the Respondent is commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy, or is making a legitimate noncommercial or fair use of it under paragraph 4(c)(iii) of the Policy.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The nature of the website to which the disputed domain name resolves or redirects visitors has been outlined above under section 6B, in analysis of whether the Respondent may have rights or legitimate interests. The Respondent has offered no explanation as to why the disputed domain name, featuring solely the Complainant’s trademark, should redirect visitors to a website trading in Internet services. Notably the disputed domain name redirects to a website with the URL “www.website.ws/sonya4ebc” and headed “Sponsored by Sonya Dryden”, being the name of the Respondent, with a photograph, leaving no reason to doubt that the redirection is intentional and not accidental, transient, or the result of an automated advertisement placement service. The Respondent would appear to be one who is promoting the services of Global Domains International, Inc., in the expectation of receiving commissions, and is using the Complainant’s trademark, incorporated into the disputed domain name, as a means of attempting to attract clients. On the evidence and on the balance of probabilities, it may reasonably be concluded that visitors to the disputed domain name have been redirected to an advertising feature for Global Domains International, Inc., by confusion with the Complainant for the Respondent’s intended commercial gain, within the contemplation of paragraph 4(b)(iv) of the Policy. The Panel also finds, on the balance of probabilities, that the disputed domain name was registered in bad faith for the purpose for which it has been used.
On January 23, 2020, the Complainant sent to the Respondent a detailed cease and desist letter by email, setting out the Complainant’s background and its registered trademark rights. The Respondent did not reply or take any opportunity to explain their position. The failure to reply is found to be a factor compounding the Respondent’s registration and use of the disputed domain name in bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
The Panel notes that the term “1life” might be attractive to traders in a number of industries; however that may be, the Respondent has not advanced any arguments as to why a domain name was chosen that corresponds exactly to the Complainant’s mark. See LeadsMarket.com LLC v. Privacy Protect, LLC (PrivacyProtect.org) / Oscar Dominguez, WIPO Case No. D2019-1363, “[t]hus, without the benefit of a response, the Panel is unable to ascertain any grounds to rebut the Complainant’s claims.”
Accordingly the Panel finds the Respondent to have registered and used the disputed domain name in bad faith, and finds for the Complainant in the terms 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 <1life.website> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: April 7, 2020