WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Re Ltd v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2021-1549
1. The Parties
Complainant is Swiss Re Ltd, Switzerland, represented by TIMES Attorneys, Switzerland.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <srvw-swissre.com> (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 23, 2021.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 5, 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
Complainant was founded in Zurich, Switzerland, in 1863. It is a global wholesale provider of reinsurance, insurance, and financial services, serving clients through a network of over 60 offices globally.
Complainant owns various trademark registrations for its SWISS RE Mark (or “the Mark”) including Swiss Trademark Registration No. 717011 (registered January 6, 2018) and International Trademark Registration No. 1067014 (registered November 26, 2010).
The Domain Name <srvw-swissre.com> was registered on March 12, 2021.
Before May 7, 2021, the Domain Name resolved to various websites, all of which seem to have a fraudulent purpose (e.g., (a) offering fake statements of tennis player Roger Federer and others soliciting investments from the public in an “Auto-Trading-Program” called Bitcoin Code; and (b) imploring the public to click on certain links in order to fix an alleged hack of their IPhone with threats if they didn’t do so).
Before initiating these proceedings, Complainant sent a first cease and desist letter dated March 19, 2021 to Respondent and to the Registrar, but neither of them responded. Only after sending another such letter to Respondent and the Registrar on May 5, 2021 in which Complainant mentioned the fraud scheme with which the Domain Name was being used, did Respondent answer and claim that it asked the Domain Name owner to suspend the use of the Domain Name on the associated website. Since May 7, 2021, that has been the case – the website states: “The website is not accessible”.
5. Parties’ Contentions
The Domain Name incorporates in its entirety Complainant's SWISS RE Mark (the distinctive element) adding “srvw”. “Sr” stands for Swiss Re and “vw” has no obvious meaning. Thus, the additional text does not distinguish the Domain Name from the Mark.
Complainant does not know the (hidden) identity of Respondent's customer. However, the only person who could register or use the Domain Name with legitimate interests is Complainant or any group or company belonging to Complainant. Respondent's customer and Respondent are holding the Domain Name without legitimate interest and Complainant has never authorized them to use the Domain Name.
The website associated with the domain name has active MX records, which means that the Domain Name can still be used for sending emails and fraudulent uses (e.g., phishing). Prior UDRP panels have held that the use of a domain name for purposes other than to host a website (e.g., phishing, identity theft, or malware distribution) may constitute bad faith. Against this background it is obvious that the Domain Name was registered and is being used in bad faith. The Registrant’s sole intent in registering the Domain Name seems to have been to use the Mark and Complainant’s good reputation for generating traffic/visitors to various websites which have fraudulent purpose and/or to send deceptive emails to obtain sensitive or confidential personal information from Complainant's customers or to solicit payment of fraudulent invoices by Complainant's customers. Furthermore, Registrant is offering the Domain Name for sale and requests a minimum purchase price of USD 899 which is in excess of any out-of-pocket costs Respondent may have had in registering the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the SWISS RE Mark by virtue of the trademark registrations mentioned above.
The Panel also finds that the Domain Name <srvw-swissre.com> is confusingly similar to Complainant's SWISS RE Mark. The Domain Name incorporates the Mark in its entirety and merely adds the nondistinctive “srvw”. When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Furthermore, adding the generic Top-Level-Domain (“gTLD”) “.com” is of no legal significance from the standpoint of comparing the Domain Name to the Mark because the use of a gTLD is required of domain name registrants. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Respondent has no rights or legitimate interests in the SWISS RE Mark. Complainant maintains that it did not authorize Respondent to use the SWISS RE Mark for any purpose and the only person who could register or use the Domain Name with legitimate interests is Complainant or any group or company belonging to Complainant
Complainant maintains (as described above) that Respondent has been using the Domain Name for fraudulent purposes and points out that the website associated with the domain name has active MX records, which means that the Domain Name can (still) be used for sending fraudulent emails (e.g., phishing).
Furthermore, the composition of the Domain Name, comprising the distinctive Mark and nondistinctive text carries a risk of implied affiliation with Complainant and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See section 2.5.1. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent registered and has been using a Domain Name that is confusingly similar to the SWISS RE Mark. When Respondent registered the Domain Name in 2021, Complainant had been using the Mark for many years worldwide. Given Complainant’s widespread and long-standing use of the SWISS RE Mark worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that: (1) Respondent has not shown that he has any rights or legitimate interests in the Domain Name; and (2) Respondent registered a Domain Name that is exactly the same as Complainant’s registered Mark adding “srvw” which does not distinguish the Domain Name from the Mark. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
There is no plausible reason for Respondent’s selection of a confusingly similar Domain Name in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”). Furthermore, the evidence in the record provided by Complainant shows that Respondent was using the Mark in various fraudulent schemes that Respondent benefitted from or could have benefitted from financially. And despite the fact that the Domain Name has been suspended, the existence of the MX records indicate that the Domain Name could be used in the future for fraudulent email communications. Given these circumstances and the facts that Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use, including failing to respond to Complainant’s letter requesting a transfer of the Domain Names, and that Respondent has concealed its identity, the Panel is left to conclude that Respondent’s use of the Mark is in bad faith.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the the Domain Name, <srvw-swissre.com> be transferred to Complainant.
Harrie R. Samaras
Date: July 19, 2021