WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Life AG and Swiss Life Intellectual Property Management AG v. Anonymize, Inc.
Case No. DCO2021-0080
1. The Parties
The Complainants are Swiss Life AG, Switzerland and Swiss Life Intellectual Property Management AG, Switzerland (referred as “the Complainant”), represented by FMP Fuhrer Marbach & Partners, Switzerland.
The Respondent is Anonymize, Inc., United States of America, (“United States”).
2. The Domain Name and Registrar
The disputed domain name <swisslife-select.co> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 4, 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 4, 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 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on November 15, 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 a major life insurance company (Annex 6a – 6d to the Complaint). It holds numerous trademark registrations for SWISS LIFE and SWISS LIFE SELECT around the world, registered from 1991 onwards, e.g.
- Spain Trademark registration SWISS LIFE No. 1622040, registered on March 6, 1991;
- Swiss Trademark registration SWISS LIFE No. P-436709, registered on February 12, 1997;
- European Union Trademark registration SWISS LIFE No. 3438413, registered on October 20, 2006;
- European Union Trademark registration SWISS LIFE SELECT No. 1171272, registered on May 27, 2013;
- Swiss Trademark registrations SWISS LIFE SELECT No. 640870 and 643195, registered on March 13, 2013 and May 6, 2013 respectively;
- International Trademark registrations SWISS LIFE SELECT No. 1171272 and 1146104, registered on May 27, 2013 and December 4, 2012 respectively (Annex 10a to the Complaint).
In addition, the Complainant owns several domain names containing the mark SWISS LIFE or SWISS LIFE SELECT, inter alia, the domain names <swisslife.com>, <swisslife.ch>, <swisslife.de> or <swisslife.select> for addressing its websites.
The disputed domain name <swisslife-select.co> was registered on July 27, 2021 (Annex 3 to the Complaint).
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its SWISS LIFE or SWISS LIFE SELECT trademarks.
The disputed domain name is not being actively used.
5. Parties’ Contentions
The Complainant is one of Switzerland’s largest life insurance companies 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 Complainant 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 (Full-Time-Equivalent) and 14,000 consultants in order to serve its more than 4 million customers.
The Complainant’s umbrella brand SWISS LIFE is also part in the name of many of its Swiss and international subsidiaries (almost 100 only in Switzerland) and serves as the generally accepted and used moniker/sign for the Complainant’s group of companies (“SWISS LIFE-brand”). Accordingly, the SWISS LIFE-brand is not only a well known but also a famous mark and as such the basis of the Complainant’s substantial trade-, domain name and trade mark portfolio.
The Complainant established various websites accessible by domain names featuring the SWISS LIFE-brand, e.g. <swisslife.ch>, <swisslife.com>, <swisslife.insurances>, or <swisslife.select>, <swisslife.club> (among numerous others).
In addition to the umbrella brand “SWISS LIFE”, the Complainant uses the sub brand SWISS LIFE SELECT for some of its main products and services. The SWISS LIFE SELECT-brand is also prominently marketed and intensely used in Switzerland and in various other countries in Europe.
The Complainant holds several trademark registrations regarding the mark SWISS LIFE and SWISS LIFE SELECT around the world.
Finally the Complainant’s SWISS LIFE-brand is also protected as a company name since its company name contains the mark SWISS LIFE; the company name of the Complainant is registered in the commercial register of the canton of Zurich, Switzerland.
The disputed domain name <swisslife-select.co> is identical with the Complainant’s senior SWISS LIFE-subbrand SWISS LIFE SELECT. Furthermore, the element SELECT is a generic term and does therefore not substantially add to the distinctiveness of the overall impression of the disputed domain name, which is characterized by the first element SWISS LIFE. Thus, the disputed domain name <swisslife-select.co> is also highly similar to the Complainant’s famous main brand SWISS LIFE.
The Respondent has no rights or legitimate interests in respect of the disputed domain name - the Complainant did not give any permission to the Respondent or any third party to use their SWISS LIFE-brand or its sub brand for the registration and/or use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Because of the fame of the Complainant’s trademarks and company name the Respondent must clearly have had the Complainant and its rights in the SWISS LIFE-brand in mind when it registered the disputed domain name.
Although the disputed domain name is not actively used the lack of active use of the disputed domain name does not prevent a finding of bad faith especially where the disputed domain name is identical or confusingly similar with a well-known trademark of the complainant, no response is submitted or concealment of identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademarks SWISS LIFE and SWISS LIFE SELECT.
The disputed domain name is highly confusingly similar to the Complainant’s registered trademarks SWISS LIFE SELECT and SWISS LIFE since it entirely contains these trademarks and only adds a hyphen regarding the trademark SWISS LIFE SELECT and the descriptive word “select” regarding the trademark SWISS LIFE.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of a hyphen or other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that generic Top-Level-Domains are generally disregarded when evaluating the identity and confusing similarity of a disputed domain name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While 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 (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s mark in its entirety or together with the descriptive term “select”, cannot be considered fair as these falsely suggest an affiliation with the Complainant that does not exist (see section 2.5 of the WIPO Overview 3.0).
Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
(i) The Complainant is the owner of the well known and famous registered trademarks SWISS LIFE and SWISS LIFE SELCT, and has registered and used such trademarks in many jurisdictions around the world, long before the registration of the disputed domain name. Moreover, the Complainant registered and is using the domain names <swisslife.com> and <swisslife.select> among others to address its websites.
It is inconceivable for this Panel that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark and company name SWISS LIFE entirely together with terms which are merely descriptive. In fact, the use of the term “select” in connection with the mark SWISS LIFE rather strengthen the impression that the disputed domain name is in some way connected to the Complainant or the Complainant’s services, and at least the Respondent may be seen to free ride on the reputation of the Complainant and its name and trademark SWISS LIFE and SWISS LIFE SELECT.
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
(ii) Although there is no evidence that the disputed domain name is being actively used, previous UDRP panels have found that bad faith use under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent – inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
This Panel also concludes that the present passive holding of the disputed domain name, constitutes a bad faith use, putting emphasis on the following:
- the Complainant’s trademarks are famous with strong reputation and are well-known globally;
- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the disputed domain name incorporates the Complainant’s trademark in its entirety, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site);
- the Respondent appears to have employed a privacy service to avoid being notified of a UDRP proceeding filed against it; and
- there is no conceivable plausible reason for good faith use with regard to the disputed domain name.
Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) 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 <swisslife-select.co> be transferred to the Complainant.
Date: November 29, 2021