WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swiss Life AG, Swiss Life Intellectual Property Management AG v. Alex Gorsky, swiss life usa

Case No. D2021-3258

1. The Parties

The Complainants are Swiss Life AG, Swiss Life Intellectual Property Management AG, Switzerland, (hereinafter referred both together as the “Complainant”) represented by FMP Fuhrer Marbach & Partners, Switzerland.

The Respondent is Alex Gorsky, swiss life usa, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <swisslifeusa.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2021, 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 October 5, 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 amendment to the Complaint on October 8, 2021.

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 October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on November 10, 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 in this proceeding is Swiss Life AG and Swiss Life Intellectual Property Management AG, both corporations incorporated under the laws of Switzerland and having their legal domicile in Zürich, Switzerland. The latter is a subsidiary of the former corporation and responsible for managing all intellectual property owned within the Swiss Life group.

The Complainant Swiss Life Intellectual Property Management AG holds various trademark registrations protecting the SWISS LIFE brand; including the following:

Swiss Trademark Registration No. P-491528 SWISS LIFE, registered on November 15, 2021, in classes 09, 16, 35, 36, 38, 41, 42;

Swiss Trademark Registration SWISS LIFE No. 2P-436709, registered on February 12, 1997 in class 36;

European Community Trademark Registration No. 003438413 SWISS LIFE, registered on October 20, 2006, in classes 09, 16, 35, 36, 38, 41, 42 and 44;

French Trademark Registration No.99823895 SWISS LIFE, registered on November 18, 1999, in class 36;

British Trademark Registration No.1504597 SWISS LIFE, registered on May 27, 1994, in class 36;

Indian Trademark Registration No.1730726 SWISS LIFE, registered on September 11, 2008, in class 36;

Spanish Trademark Registration No.M1622040 SWISS LIFE, registered on July 5, 1993, in class 36 and

United States Trademark Registration No. 3041924 SWISS LIFE (fig.), registered on January 10, 2006 in classes 35 and 36.

The Complainants have established various websites accessible by domain names featuring the SWISS LIFE brand, such as <swisslife.ch>, <swisslife.de>, <swisslife.fr>, <swisslife.be>, <swisslife.at>, <swisslife.sk>, <swisslife.club>, <swisslife.shop> (among others). On the websites associated with these domain names the Complainants and subsidiaries offer and market their insurance products and services.

The disputed domain name <swisslifeusa.com> was registered on August 23, 2021 and resolves to a parking page of the Registrar. According to the evidence provided by the Complainant, the disputed domain name has been used as an email address to send a fraudulent message.

5. Parties’ Contentions

A. Complainant

The Complainant claims that 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 254 billion of assets under management by the end of 2019. Founded in 1857 in Zurich as the “Schweizerische Lebensversicherungs und Rentenanstalt cooperative”, the company adopted its current name in 2002. In 2019, the group generated a total turnover of more than CHF 23 billion and had around 9300 employees (FTE) and 14’000 consultants in order to serve its more than 4 million customers. According to ADV Ratings 2019 the SWISS LIFE group figures among the 15 largest European insurance companies according to their assets and is the fourth largest insurance company by market value. In Forbes’ list of the World’s Best Regarded Companies 2019 the SWISS LIFE group even ranks 125th, ahead of other famous companies such as the Volkswagen Group (#144), Swatch Group (#164) or Pfizer (#171). Annex 6a.

The Complainant claims that the disputed domain name is confusingly similar with the trademark SWISS LIFE in which the Complainant has rights; and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

The Respondent has not been authorized to use the SWISS LIFE trademark in any manner whatsoever, including as a domain name.

More specifically, the Complainant claims that the disputed domain name or rather the corresponding email address is misused for fraudulent purposes impersonating the Complainant’s Human Resources department with the delivery of an alleged employment offer. Thereby, the Respondent uses various documents in the name and with the logo of Swiss Life. The victims were supposed to fill out the forms in question and thus be lured into revealing personal details. Among the documents used are forms that are typically used in the USA for employment contracts. In these forms, a person has to provide detailed information and personal data. This leads to the suspicion that this is primarily a case of identity theft or the acquisition of personal, sensitive data for some fraudulent purpose. Victims may also be tricked into financial transactions later on.

Evidence – Fraudulent message from an email address using the disputed domain name, “[...]@swisslifeusa.com” dated September 10, 2021 Annex 12a – Email attachment “USCIS FormI-9” Annex 12b – Email attachment “W4 Form” Annex 12c – Email attachment “Areli job offer” Annex 12d – Email attachment “swiss life- Code of Business Conduct” Annex 12e [13.]

Despite the official appearance of these documents, the Complainant argues that the authors of these emails and documents have no connection whatsoever with Swiss Life group and/or the Complainant.

Moreover, the Complainant claims that consumers are confused as they expect that the disputed domain name is one of the many domain names owned by the Complainant.

Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the SWISS LIFE trademark.

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel considers that the disputed domain name is confusingly similar with the Complainant’s SWISS LIFE trademark.

The disputed domain name contains the trademark SWISS LIFE in its entirety, with the addition of the letters “usa” which stand for “United States of America”, and do not to avoid a finding of confusing similarity between the disputed domain name and the trademark SWISS LIFE.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” gTLD included in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar with the SWISS LIFE trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well-established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. The mere fact that the name “swiss life usa” was provided as registrant organization at the registration of the disputed domain name is not sufficient in itself to give rise to rights or legitimate interest in the disputed domain name. On the contrary, noting also the use of the disputed domain name, the Panel finds that such name was provided at the time of the registration with the probable intention of creating an appearance of association or the impersonation of the Complainant.

Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.

Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is an official site of the Complainant.

As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a risk of implied affiliation.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark SWISS LIFE mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name on August 23, 2021.

The Complainant has submitted evidence to support that the trademark SWISS LIFE mentioned in paragraph 4 above is widely known and was registered and used many years before the Respondent registered the disputed domain name. Furthermore, in the light of the evidence submitted by the Complainant, the Panel agrees that the trademark SWISS LIFE is undoubtedly a well-known mark.

The Respondent when registering the disputed domain name has targeted the Complainant’s famous trademark SWISS LIFE with the intention to confuse Internet users and capitalize on the fame of the Complainant´s name and trademark probably for its own monetary benefit.

The Respondent uses the disputed domain name as an email address to send fraudulent emails to confuse Internet users to make them think that the person sending such emails is connected to the Swiss Life group.

The Complainant has proved that the disputed domain name has been used as an email address to send various documents in the name and with the logo of Swiss Life to victims who were supposed to fill out the forms in question and thus be lured into revealing personal information and data. In other words, this involves an identity theft and a phishing activity to procure the acquisition of personal, sensitive data for some fraudulent purpose. Thereby, victims could easily be tricked into financial transactions later on.

Section 3.1.4 of WIPO Overview 3.0 provides that use of a domain name for phishing is manifestly considered bad faith.

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).

The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s famous and widely used SWISS LIFE trademark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 name, <swisslifeusa.com>, be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist
Date: November 24, 2021