WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swiss Life AG, Swiss Life Intellectual Property Management AG v. xiansheng chen

Case No. D2021-3856

1. The Parties

The Complainants are Swiss Life AG and Swiss Life Intellectual Property Management AG, Switzerland, represented by FMP Fuhrer Marbach & Partners, Switzerland.

The Respondent is xiansheng chen, Singapore.

2. The Domain Name and Registrar

The disputed domain name <swiss-life-select.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 November 23, 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 November 23, 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 December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 4, 2022. 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 Complainants are connected companies within the Swiss Life group of companies. Particularly, Swiss Life AG (the “First Complainant”) is the parent company to Swiss Life Intellectual Property Management AG (the “Second Complainant”), which latter company is responsible for managing all intellectual property rights of the First Complainant. The Complainants are part of a group of companies commercializing insurance and life insurance products. According to the Complainants, the First Complainant is Switzerland’s largest life insurance company and one of Europe’s leading comprehensive life and pensions providers, with approximately CHF 254 billion of assets under its management by the end of 2019. The Complainants have significant operations with a total turnover of more than CHF 23 billion in 2019, and with approximately 9,300 employees and 14,000 consultants providing services to its more than 4 million customers. According to “ADV Ratings 2019”, in 2019, the SWISS LIFE group was the fourth largest insurance company in Europe by market value.

The Complainants provide evidence that the Second Complainant owns a trademark portfolio for SWISS LIFE (word and logo marks), including European Union Trade Mark number 003438413, registered on October 20, 2006, and for SWISS LIFE SELECT (word and logo marks), including European Union Trade Mark number 1171272, registered on May 27, 2013. The Complainants also own a portfolio of official domain names, including <swisslife.com> (created May 10, 1996) and <swisslife.ch> (created January 1, 1996), which are used to market their insurance products and services.

The disputed domain name was registered on November 13, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainants. The Complainants submit evidence that the disputed domain name directed to a commercial website for a company active in the industrial automation industry, named 民乐县包装公司 (Minle County Packaging Company), which seems to have offered measuring, packaging, and palletizing services through this website. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainants essentially contend that the disputed domain name is confusingly similar to their trademarks for SWISS LIFE and SWISS LIFE SELECT, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainants claim that their SWISS LIFE and SWISS LIFE SELECT trademarks are distinctive and well known (and submit in this regard a number of prior UDRP decisions in which they acted as the complainants and obtained the transfer of the domain name in question, as well as an excerpt from a judgment from the Swiss Supreme Court of 2007 (BGE 4C.341/2005) in which the Swiss Supreme Court held that the SWISS LIFE mark is a famous trademark), and submit company information, marketing materials, and materials about sector rankings of the Complainants. The Complainants particularly contend that the Respondent commits, through its behavior in this administrative proceeding, trademark infringement, company name infringement, unfair competition, and a criminal offence. The Complainants claim that the use of their trademark in the disputed domain name is to impersonate the Complainants and their subsidiaries or otherwise to exploit the Complainants’ reputation attached to the Complainants’ trademarks. The Complainants contend that there are no justifications for the use of their trademark in the disputed domain name, and contend that the Respondent’s use of the disputed domain name does not confer any rights or legitimate interests in respect of the disputed domain name. Finally, the Complainants also contend that the current case is not the only case of cybersquatting whereby a domain name incorporating a third party brand is misappropriated to link it to the same website of 民乐县包装公司 (Minle County Packaging Company), and that the Respondent may therefore have engaged in a pattern of bad faith cybersquatting.

The Complainants request that the disputed domain name be transferred to the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Consolidation of Complainants

The Complainants in this administrative proceeding request consolidation in regard to the Complainants. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.1: “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.”

The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the Second Complainant is the owner of a series of registered trademarks for SWISS LIFE and SWISS LIFE SELECT and the First Complainant is the parent company to the Second Complainant. As such, the Panel concludes that all Complainants are the target of common conduct by the Respondent and both have common grievances regarding the use of the SWISS LIFE and SWISS LIFE SELECT trademarks in the disputed domain name by the Respondent. The Panel accepts that permitting the consolidation would be fair and equitable to all Parties involved and would safeguard procedural efficiency. The Panel therefore grants the request for consolidation of the Complainants.

6.2. Discussion and Findings on the merits

The Policy requires the Complainants to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the 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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainants have shown that they have valid rights in, inter alia, the mark SWISS LIFE SELECT, based on their intensive use and longstanding registration of the same as trademarks.

As to whether the disputed domain name is identical or confusingly similar to the Complainants’ marks, the Panel considers that the disputed domain name consists of only one element, namely the Complainants’ SWISS LIFE SELECT trademark. The Panel notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1. Finally, the Panel finds that the hyphens in the disputed domain name may be disregarded as these are considered merely a punctuation mark (see also Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui) WIPO Case No. D2021-1685).

Accordingly, the Panel finds that the disputed domain name is identical to the Complainants’ registered trademark SWISS LIFE SELECT, and that the Complainants have satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainants make out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainants, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainants’ trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Upon review of the facts and evidence provided by the Complainants, the Panel notes that the disputed domain name directed to a commercial website for a Chinese company active in the industrial automation industry, named 民乐县包装公司 (Minle County Packaging Company), which appeared to offer measuring, packaging, and palletizing services through this website, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainants. The Panel finds that these elements show that the Respondent’s intention was not to be a bona fide provider of goods or services under the disputed domain name, nor making legitimate noncommercial or fair use of the Complainants’ trademarks and that the Respondent can therefore not be considered to have rights or legitimate interests in the disputed domain name.

Moreover, on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), supra.).

Finally, the Panel notes that the nature of the disputed domain name, being identical to the Complainant’s trademark for SWISS LIFE SELECT, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainants have satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainants’ well-known trademark for SWISS LIFE SELECT, to mislead and divert consumers to the disputed domain name. The Panel considers the disputed domain name to be so closely linked and so obviously connected to the Complainants and their trademark (since it is identical to the SWISS LIFE SELECT trademark) that the Respondent’s registration of the disputed domain name points toward the Respondent’s bad faith. Moreover, given the distinctiveness and fame of the Complainant’s trademarks for SWISS LIFE SELECT and SWISS LIFE, the Panel finds that the registration of the disputed domain name clearly targeted such trademarks, and that the Respondent therefore knew, or at least should have known, of the existence of the Complainant’s trademarks. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainants provide evidence that the disputed domain name directed to a commercial website for a company active in the industrial automation industry, named 民乐县包装公司 (Minle County Packaging Company), which appears to offer measuring, packaging, and palletizing services through this website, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainants. The Panel accepts that these elements show the bad faith intention on the part of the Respondent to obtain unlawful commercial gains from using the Complainants’ famous SWISS LIFE SELECT trademark in the disputed domain name.

Moreover, on the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the following elements: the fact that the disputed domain name is identical to the Complainants’ trademark for SWISS LIFE SELECT, the high degree of distinctiveness and fame of the Complainants’ trademark, and the unlikelihood of any good faith use to which the disputed domain name might be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith. The Panel therefore finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith.

The Panel therefore finds that the Complainants have satisfied the requirements of the third element under 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 <swiss-life-select.com> be transferred to the Complainants.

Deanna Wong Wai Man
Sole Panelist
Date: February 17, 2022