WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reassure Midco Limited v. John Foy
Case No. DIE2021-0005
1. The Parties
The Complainant is Reassure Midco Limited, United Kingdom (“UK”), represented by Keltie LLP, United Kingdom.
The Registrant is John Foy, Ireland.
2. The Domain Name and Registrar
The disputed domain name <reassure.ie> is registered with IE Domain Registry Limited (“IEDR”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021, via email. On November 1, 2021, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On November 2, 2021, IEDR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Registrant and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2021, providing the registrant and contact information disclosed by IEDR, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 14, 2021.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on December 16, 2021. In accordance with the Rules, paragraph 5.1, the due date for Response was January 13, 2022. The Center received three email communications from the Registrant on December 16 and December 18, 2021, and January 5, 2022, and a formal response on January 12, 2022.
The Center appointed Adam Taylor as the sole panelist in this matter on January 27, 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
Since 2011, the Complainant’s group has supplied financial services, including pensions, life insurance and investments under the name “ReAssure”. The group was one of the largest life insurance groups in the UK in 2017. It currently has some GBP 41 billion of assets and over 2.2 million policies on its books.
The Complainant owns a number of figurative trade marks including European Union (“EU”) Trade Mark No. 010347524 consisting of the stylised word “ReAssure” plus device, filed on October 18, 2011, registered on March 6, 2012, in class 36.
The disputed domain name was registered on May 2, 2021.
As of October 26, 2021, the disputed domain name resolved to a registrar parking page with the following pay-per-click (“PPC”) links: “PENSION SCHEME”, “PENSIONS”, “AVIVA PENSION”, “PROTECTIVE LIFE INSURANCE”, and “TENA”.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant’s group mainly operates in the UK and Ireland. It includes one company in Ireland and many in the UK whose corporate names begin with the term “Reassure”. The group also owns an insurance business in Ireland known as “Ark Life”.
The Complainant owns many domain names containing the word “reassure” including <reassure.co.uk>.
Google searches show that the Complainant’s “Reassure” brand is well-known in the UK and EU.
The disputed domain name is identical to the Complainant’s registered and unregistered trade marks.
The Registrant lacks rights in law or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Registrant to use the Complainant’s marks.
The Registrant has not made use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or operation of a business.
To the best of the Complainant’s knowledge, the Registrant is not commonly known by the disputed domain name. Nor does the Registrant own any trade mark rights corresponding to the disputed domain name.
Mere registration of a domain name without use can constitute unfair use for the purposes of passing off and trade mark infringement.
Use of the disputed domain name to generate PPC links for commercial gain cannot constitute a bona fide offering because such links relate to the Complainant’s competitors or otherwise capitalise on the reputation of the Complainant’s mark.
The Complainant’s trade mark is not generic, non-distinctive, or descriptive.
The Registrant is not making a legitimate noncommercial or fair use of the disputed domain name as the PPPC website is clearly being used for commercial gain.
The disputed domain name was registered or used in bad faith.
The Complainant’s registered and unregistered rights predate registration of the disputed domain name by at least 10 years.
It is inconceivable that the Registrant was unaware of the Complainant’s pre-existing trade marks and domain names at the time of registration of the disputed domain name, particularly given the instantaneous and global reach of the Internet and the fame of the Complainant’s mark. At the very least, the Registrant ought to have been aware of them.
There is no evidence of an alternative legitimate explanation for registration of the disputed domain name.
The disputed domain name takes unfair advantage of or is detrimental to the reputation of the Complainant’s marks, and it also disrupts the Complainant’s business and dilutes its rights, whether or not the Registrant has used or intends to use the disputed domain name.
The disputed domain name was registered primarily for sale to the Complainant or a competitor, to block the Complainant or, by means of the PPC site, to profit by creating a likelihood of confusion with the Complainant’s mark.
Use of a privacy service is further evidence of bad faith.
The disputed domain name constitutes a passive holding in bad faith, as the disputed domain name comprises a widely known trade mark and there is no response or explanation as to how it could be used in good faith.
The Registrant has engaged in a pattern of bad faith domain name registrations, namely <kingstevenson.com> (son of an American rapper and an American model), <robertandangelakardashian.com> (American celebrities) and <georgehookforpresident.com> (Irish broadcaster and journalist). These domain names support the Complainant’s claim that the Registrant registered the disputed domain name in bad faith.
The Complainant has received a favourable decision a in case under the Uniform Dispute Resolution Policy (“UDRP”), Reassure Midco Limited v. New Ventures Services, Corp, New Ventures Services, Corp, WIPO Case No. D2020-3213 concerning <reassurefinancial.com>, which involved similar facts to those in this case.
The following is a summary of the Registrant’s contentions.
The Registrant has been involved in the digital marketing and branding industry for over 14 years, and has the upmost respect for trade marks, branding, and domain names. This is the first time that any such accusation has been made against the Registrant.
The Registrant registered the disputed domain name legitimately and in good faith in connection with his role handling the branding for a new home monitoring product that is due to be launched in Ireland. At the same time, the Registrant registered three other domain names based on descriptive terms and generated words, including <guarantee.ie>. Beforehand, the Registrant had searched each name, including “reassure”, in the Irish trade mark database under classes 38 and 45; the Complainant’s mark did not appear because its trade marks are not registered in these categories.
After a branding presentation by the Registrant that included “reassure”-branded imagery, the parties involved in the project decided to further develop the brand term “reassure” along with another of the proposed names, “Senify”. Thereafter the Registrant created more “reassure”-branded designs for the intended product including for a website and packaging.
According to research by the parties to the project, the only business with a similar name in Ireland was “Resure”, which also failed to appear in a trade mark search in the relevant classes.
The term “reassure” is a generic and non-distinctive word, which the Complainant cannot monopolise. The Complainant possesses only figurative trade marks and could not trade mark the word alone. In any case, the Complainant’s trade marks are registered in different classes to those applicable to the Registrant’s business and any trade mark filing by the Registrant within Ireland, or the EU generally, would not conflict with the Complainant. Also, the figurative elements of the Complainant’s mark are different to those used by the Registrant.
The market for the Registrant’s product is very different to that of the Complainant.
The Registrant has not registered or used the disputed domain name in bad faith.
The Registrant has never contacted the Complainant to offer to sell the disputed domain name and has no intention of selling the disputed domain name, because it was registered for use in connection with an ongoing project.
The disputed domain name has not been registered or used to block the Complainant or to dilute the reputation of its mark.
The Registrant has not advertised or used the disputed domain name to attract Internet users and intends to resolve it to a holding/landing page until the product is ready for launch.
The Registrant is using same landing page that its registrar provides for all pre-launch .ie domain names, and indeed other registrars provide similar pages. The Registrant does not control the PPC links, which are dynamic. Furthermore, the Registrant has not publicly advertised the disputed domain name. Nor is the disputed domain name indexed in Google, which it would be if the landing page was intended to attract traffic and benefit from association with the Complainant.
In addition to references to the Complainant, Google searches for the term “reassure” include dictionary definitions of the term as well as other companies using the name “reassure”.
The redaction of the Registrant’s details from the WhoIs information is not due to bad faith but, rather, to GDPR requirements over which the Complainant has no control.
As regards the three domain names referenced by the Complainant from amongst a list of 80 Registrant domain names – all of these were registered by the Registrant on behalf of clients. The client who owned <kingstevenson.com> and <robertandangelakardashian.com> allowed them to lapse in 2018. The disputed domain name <georgehookforpresident.com> was bought on behalf of a client with a relationship with George Hook. Accordingly, these three domain names are not a pattern of bad faith on the part of the Registrant and have no relevance to the disputed domain name.
6. Discussion and Findings
Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith.
A. Identical or Misleadingly Similar
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant owns a figurative EU trade mark consisting of the stylised word “ReAssure” plus device. This has effect within the Republic of Ireland and therefore constitutes a protected identifier.
The disputed domain name is misleadingly similar to the Complainant’s trade mark. Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
The country code Top-Level Domain “.ie”, is also excluded from this comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy.
B. Rights in Law or Legitimate Interests
It is unnecessary to consider this element in view of the Panel’s finding under the third element below.
C. Registered or Used in Bad Faith
The first issue for the Panel to consider is the likelihood that the Registrant chose the disputed domain name by reference to the Complainant’s trade mark.
While the Complaint asserts that there is no evidence of an alternative legitimate explanation for registration of the disputed domain name, the Response does indeed put forward a plausible good faith rationale, namely that the disputed domain name reflected one of four potential brand names that had been selected for a new home monitoring product, unrelated to the Complainant’s industry. More importantly, the Registrant has provided the following supporting evidence:
1. An invoice showing that, on May 2, 2021, the Registrant registered three other domain names along with the disputed domain name: <guarantee.ie>, <motem.ie> and <senify.ie>.
2. An email dated May 5, 2021, in which the Registrant referred to his presentation that day and said that he would “begin working on the two chosen brand names (Senify and reassure) and showcase how they will look … on Friday”.
3. A response email of the same date asking the Registrant to “work with the senify and reassure name into the first design” and adding: “(The Irish company I was thinking of was Resure…)”.
These documents indicate that the Registrant did indeed register the disputed domain name for the purpose he claims. The Panel considers that the Registrant’s contemporaneous registration of <guarantee.ie>, a dictionary term with a meaning not dissimilar to “reassure”, is particularly significant in that it reinforces the Registrant’s assertion that he selected the latter based on its generic meaning and not by reference to the Complainant’s mark.
The mention of a possible conflict with an Irish company called “Resure” provides yet further support for the Registrant’s position that he did not select the disputed domain name with a view to illicitly targeting the Complainant.
The Registrant has also supplied some “reassure”-branded website and packaging designs, although these are less helpful as they are undated.
While the Complainant claims that “the trade mark REASSURE is not generic, non-distinctive or descriptive”, it plainly reflects a dictionary word, and indeed the Google searches produced by the Complainant include some dictionary definitions of the term, e.g., to “say or do something to remove the doubts or fears of (someone)”.
The Registrant says that, before registering the disputed domain name, he drew a blank for searches against the term “reassure” in the Irish trade marks registry because the Complainant’s marks were registered in different classes to those which apply to the Registrant’s proposed product. Although the Registrant does say whether or not he had otherwise become aware of the Complainant, the Panel does not consider that knowledge of the Complainant is a significant factor in the circumstances of this case – where the disputed domain name reflects a dictionary term and the Registrant has provided credible evidence that he registered it for use in connection with an industry unrelated to the Complainant. The Panel would add that, while the Complainant undoubtedly enjoys a substantial reputation in the UK, it has not provided any clear evidence as to the extent of its trading activity, if any, under the name “Reassure” in the Republic of Ireland.
The Panel does not consider that the redaction of the Registrant’s details on the WhoIs for the disputed domain name assists the Complainant. Concealment of registrant information for privacy-related reasons is common nowadays. Most likely the redaction was due to the GDPR, as Registrant suggests but, in any case, the Panel has not been provided with evidence showing that the Registrant set out to obstruct or distance himself from a potential case under the Policy.
Nor does the Panel place any weight on the alleged pattern of bad faith domain name registrations invoked by the Complainant. The Registrant has satisfactorily explained that the three domain names impugned were registered on behalf of a client, that two of them had been allowed to expire in 2018, and that the third had a legitimate basis.
For the above reasons, the Panel does not consider that the Complainant has established that the Registrant registered the disputed domain name in bad faith.
Under the Policy, it is sufficient for a complainant to prove that a respondent has either registered or used a domain name in bad faith.
As to the latter, the Complainant invokes use of the disputed domain name for a registrar PPC page with links to the Complainant’s competitors as evidence that the Registrant has used the disputed domain name in bad faith.
Certainly, section 3.5 of WIPO Overview 3.0 points out that respondents cannot disclaim responsibility for “automatically” generated PPC links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. However, in the Panel’s view, in the circumstances of this case, where the Registrant has provided compelling evidence of a good faith motive for registration of the disputed domain name and where he plainly considered the registrar PPC page as merely a holding page pending launch of his proposed product unrelated to the Complainant’s industry, the Panel does not consider that the registrar’s PPC page should be treated as a bad faith use of the disputed domain name on the part of the Registrant.
Finally, the Panel considers that the following decision invoked by the Complainant is materially dissimilar to the present case in a number of respects: Reassure Midco Limited v. New Ventures Services, Corp, New Ventures Services, Corp, WIPO Case No. D2020-3213. First, it concerned a domain name, <reassurefinancial.com>, which was plainly referable to the Complainant’s industry. Second, unlike here, that was a case where the respondent did not put forward a potential legitimate explanation for selection of the domain name.
For the above reasons, the Panel concludes that the Complainant has failed to establish the third element of paragraph 1.1 of the IEDR Policy.
For the foregoing reasons, the Complaint is denied.
Dated: February 16, 2022
1 Although WIPO Overview 3.0 is directed to the UDRP, given the similarity between the UDRP and the Policy, it is appropriate to have regard to these principles except to the extent that the Policy diverges from the UDRP.