WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Life AG, Swiss Life Intellectual Property Management AG v. Bilal Brent
Case No. D2020-0476
1. The Parties
Complainants are Swiss Life AG, Switzerland, and Swiss Life Intellectual Property Management AG, Switzerland (collectively, the “Complainant”), represented by FMP Fuhrer Marbach & Partners, Switzerland.
Respondent is Bilal Brent, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <swisslifeag.com> (the “Disputed Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 3, 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 Complainant on March 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 5, 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2020.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 15, 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 Complaint states that Swiss Life Intellectual Property Management AG is “a subsidiary of the well-known Swiss Life AG […] and responsible for managing all intellectual property” of Swiss Life AG. Accordingly, both of these entities are referred to herein interchangeably, individually, or joint (as the context may indicate) as “Complainant”.
Complainant states that it is “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”. Complainant further states that it was “[f]ounded in 1857 in Zurich as the ‘Schweizerische Lebensversicherungs und Rentenanstalt cooperative’” that it “entered the Swiss stock market in 1997 and adopted its current name in 2002” and that “[i]n 2017, the group generated a total turnover of CHF 18.565 billion and had around 8000 employees”.
Complainant states that it is the owner of the trademark SWISSLIFE, which is protected by numerous registrations worldwide, which Complainant listed in an 87-page schedule, including Swiss Reg. Nos. 491528 (registered November 15, 2001) and P-436709 (registered February 12, 1997); and European Union Reg. No. 003438413 (registered October 20, 2006). These trademarks are referred to herein as the “SWISSLIFE Trademark”.
Complainant states, and provides evidence to support, that it uses the domain names <swisslife.com> (created May 10, 1996) and <swisslife.ch> (created January 1, 1996) to market its products and services.
The Disputed Domain Name was created on February 6, 2020. Complainant states, and provides evidence to support, that the Disputed Domain Name is being used by Respondent to “send fraudulent emails with regards to alleged financial services, which do however not exist but serve merely as a part of a clever attempt to defraud”.
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the SWISSLIFE Trademark because the SWISSLIFE Trademark “appears in its entirety in the disputed domain name ‘swisslifeag.com’” and “[t]he additional element ‘AG’ merely refers to the legal status of Complainant… and is an abbreviation for the German word ‘Aktiengesellschaft’ (public limited company)”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “ it is impossible, that the Respondent is in any way entitled to and in the SWISS LIFE-brand”; and “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”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent misuses the domain name in dispute to inadmissibly impersonate an actually existing subsidiary of the Complainant”; and “by misusing the SWISS LIFE [Trademark], the Respondent encourages consumers to transfer financial assets in the belief that these assets are transferred to the Complainants or their subsidiaries”.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Preliminary Issues: Multiple Complainants
As noted above, the Complaint was filed by both Swiss Life AG and Swiss Life Intellectual Property Management AG. As set forth in section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “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.” Further, numerous previous panels have permitted multiple complainants where, as here, one of the complainants holds and/or manages the intellectual property of the other complainant. See, e.g., The Coryn Group II, LLC and AMResorts, L.P. v. Albert Rodriguez, WIPO Case No. D2019-2623. Accordingly, the Panel finds it proper to allow both of the complainants to appear in this proceeding.
B. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the SWISSLIFE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SWISSLIFE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “swisslifeag”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1.
The Disputed Domain Name contains the SWISSLIFE Trademark in its entirety, adding only the letters “ag” at the end. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. See also section 1.9 of WIPO Overview 3.0 (“[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”). The addition of the letters “ag” in the Disputed Domain Name “does not prevent a finding of confusing similarity”. Lanxess Deutschland GmbH v. James Mathews, WIPO Case No. D2018-0676 (finding <lanxess-ag.com> cunningly similar to LANXESS).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
C. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “it is impossible, that the Respondent is in any way entitled to and in the SWISS LIFE-brand”; and “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”.
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
As stated above, Respondent is using the Disputed Domain Name to impersonate Complainant by, among other things, sending emails that appear to be from Complainant and operating a website that appears to be, or to be associated with, Complainant. This clearly creates a “likelihood of confusion” leading to bad faith under paragraph 4(b)(iv) of the Policy. Further, “fraudulently impersonating” a complainant has often been found to constitute bad faith. See, e.g., The Dow Chemical Company v. dowaychemical email@example.com +86.7508126859, WIPO Case No. D2008-1078. And, sending emails that appear to be from Complainant under the facts of this case is a type of “phishing” that is “manifestly considered evidence of bad faith”. WIPO Overview 3.0, section 3.1.4.
Accordingly, the Panel finds that Complainant has proven the third element 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 <swisslifeag.com> be transferred to Complainant.
Douglas M. Isenberg
Date: April 17, 2020