WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rothesay Life Plc v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-1520

1. The Parties

The Complainant is Rothesay Life Plc, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <rothsaypension.com>, and <rothsaypolicy.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2021, 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 May 26, 2021.

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 May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2021.

The Center appointed Kaya Köklü as the sole panelist in this matter on July 12, 2021. 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 an insurance and pension service company with its registered seat in London, United Kingdom (“UK”). It belongs to the largest pensions insurance specialists in the UK since more than a decade.

The Complainant is, among others, the owner the UK Trademark Registration No. 3496878 for ROTHESAY (registered on September 4, 2020), and the European Union Trademark Registration No. 008332058 for ROTHESAY PENSIONS MANAGEMENT (registered on December 11, 2009), (Annex 5 to the Complaint).

The Complainant also owns and operates a large number of domain names, which incorporate the ROTHESAY trademark, such as <rothesaypension.com> and <rothesaypolicy.com> (Annex 9 to the Complaint).

The disputed domain name <rothsaypolicy.com> was registered on December 11, 2020 and the disputed domain name <rothsaypension.com> on December 14, 2020.

The screenshots, as provided by the Complainant in the case file, show that each of the disputed domain names resolves to a pay-per-click website with links to related insurance and pension websites (Annex 19 to the Complaint).

According to screenshots of a domain name broker service, the disputed domain names are offered for sale to a starting bid of USD 899,00 (Annex 20 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its ROTHESAY trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is rather argued that the disputed domain names falsely suggest that there is some official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s ROTHESAY trademark, when registering and using the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark ROTHESAY by virtue of various trademark registrations in numerous jurisdictions (Annex 5 to the Complaint).

The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s registered ROTHESAY trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, misspellings and or the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, both disputed domain names contain a misspelling of the Complainant’s ROTHESAY trademark by omitting the letter “e”, which still makes the Complainant’s ROTHESAY trademark recognizable within the disputed domain names. Furthermore, the mere addition of the descriptive terms “pension” respectively “policy” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s ROTHESAY trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy with regard to both disputed domain names.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.

While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s ROTHESAY trademark in a confusingly similar way within the disputed domain names.

In the absence of a response, there is no indication in the current record that the Respondent is commonly known by the disputed domain names. The Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain names.

In addition, the Panel notes that also the nature of the disputed domain names carries the risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s ROTHESAY trademark, apparently for illegitimate commercial gain.

At the date of registration of the disputed domain names, the Respondent was apparently well aware of the Complainant’s ROTHESAY trademark. In view of the Panel, the nature of the disputed domain names indicates that the Respondent has deliberately chosen the Complainant’s trademark as the distinctive part of the disputed domain names to target and mislead Internet users who are searching for pensions insurance services provided by the Complainant. Consequently, the Panel is convinced that the Respondent has registered the disputed domain names in bad faith.

Additionally, the Panel finds that the Respondent is using the disputed domain names in bad faith. In this regard, the Panel is of the opinion that the Respondent’s attempt to attract Internet traffic by related pay-per-click links at its own websites is an indication for bad faith use under paragraph 4(b)(iv) of the Policy. The Panel further believes that the Respondent’s offers to sell the disputed domain names for a starting bid of USD 899 are further indication for its bad faith intentions. Also, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain names in bad faith. The Panel is convinced that, if the Respondent had legitimate purposes in registering and using the disputed domain names, it would have probably responded.

In view of the Panel, all this indicates the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the goodwill of the Complainant’s ROTHESAY trademark.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <rothsaypension.com> and <rothsaypolicy.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: July 22, 2021