If Skadeförsäkring Holding AB v Barrie Saw

WIPO Case No. D2023-3032

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

If Skadeförsäkring Holding AB v. Barrie Saw

Case No. D2023-3032

1. The Parties

The Complainant is If Skadeförsäkring Holding AB, Sweden, represented by BrandIT GmbH, Switzerland.

The Respondent is Barrie Shaw, Tuvalu.

2. The Domain Name and Registrar

The disputed domain name <ifskadeforsakringab.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2023. On
July 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 14, 2023, 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 (Privacy service provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on July
17, 2023, 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 amended Complaint on

July 21, 2023.

The Center verified that the Complaint together with the amended 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 July 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2023. The Respondent sent an informal email communication to the Center on July 24, 2023. The Center informed the Parties of its commencement of Panel appointment process on August 18, 2023.

The Center appointed Marilena Comanescu as the sole panelist in this matter on September 1, 2023. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant, If Skadeförsäkring Holding AB, is the parent company of the If Group, a non-life insurance
company active in the Nordic and Baltic regions, with branches in numerous countries, such as Sweden,

Norway, Germany, Finland, France, Denmark, Estonia, and Latvia.

The Complainant has thousands of employees and a customer base of nearly 4 million customers in the
Nordic and Baltic countries.

The Complainant owns numerous trademark registrations for IF in various jurisdictions, such as the following;

- the European Union Trademark registration number 001584911, for the word IF, filed on March 30,
2000, and registered on February 5, 2003, covering services in Nice class 36; and

- European Union Trademark registration number 008569221, for the word IF, filed on September 23,
2009, and registered on March 30, 2010, covering services in Nice classes 35, 36, 42 and 45.

The Complainant has a strong presence online via its official website available at the domain name
<if-insurance.com> and on social media platforms.

The disputed domain name, <ifskadeforsakringab.com>, was registered on June 20, 2023, and at the time of filing the Complaint, it did not resolve to an active website.

According to Annex 8 to the Complaint, until July 14, 2023, the disputed domain name was used in connection with a website in Swedish, titled “Insurance within all niches in Sweden”, and the website was offering to Internet users insurance services, such as life and pension insurance plans, under the name of “If Skadeförsäkring AB”. As well, the Internet users were invited to contact the Respondent via the email address “[email protected]”, and to complete online forms revealing personal information, such as name, surname, contact information. On the website under the disputed domain name it was listed the address of a third party insurance company; in addition and in contradiction with the above, the “contact us” section of the website, as well as footer on each webpage, listed the former address of the Complainant in Sweden as contact information on the website under the disputed domain name.

The Swedish word “skadeforsakring” translated to “damage insurance” in English.

On July 11, 2023, the Complainant sent a web content takedown notification to the Hosting Provider; no response was received. However, on July 14, 2023, the content on the website under the disputed domain name was removed.

The Respondent sent an informal email communication to the Center on July 24, 2023 stating that it already deleted the disputed domain name.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

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Notably, the Complainant contends that the disputed domain name is confusingly similar to its trademark IF which is formed of the mark with the additional Swedish terms “skadeforsakring” (translates to “damage insurance”) and “ab”, which is the shorten form of the company status “aktiebolag”; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith for a website used for fraudulent activities, namely to divert Internet users to a website allegedly advertising insurance services in the name of the Complainant, and to exploit the IF trademark, and company name in order to obtain commercial gain for itself on the Internet.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, other than the communication in which he stated that he deleted the disputed domain name.

6. Discussion and Findings

In view of the absence of a fromal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

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

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

While the addition of other terms here, “skadeforsakring” and “ab”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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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. WIPO Overview 3.0, section 2.1.

prima facie prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Having reviewed the record, the Panel finds the Complainant has established a case that the rebutted the Complainant’s

The disputed domain name used to resolve to a website advertising services similar to those provided by the Complainant, presenting the Respondent under the name of “If Skadeförsäkring AB” which is very similar with the Complainant’s name, and using the email address “[email protected]” to contact Internet users, potential customers of the Complainant. UDRP panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademark particularly because it incorporates the Complainant’s IF trademark registered since 2000, together with terms directly related to the Complainant’s business (“skadeforsakring” / “damage insurance” and “ab”, the shorten form of the Complainant’s company status, “aktiebolag”). Furthermore, the use of the disputed domain name in relation to similar services corroborates this judgement.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

According to the evidence provided in the Annex 8 to Complaint, and unrefuted by the Respondent, prior to the present proceeding, the disputed domain name was used in connection with a website titled “Insurance within all niches in Sweden”, displaying a name very similar to the Complainant’s company name and

promoting insurance services.

Given that the disputed domain name incorporates the Complainant’s trademark together with additional
Swedish terms related to the Complainant business and location, the website operated under the disputed

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domain name displayed the Complainant’s IF mark and company name, “If Skadeförsäkring AB”, past its trademark.

contact address of the Complainant and has no disclaimer, the Panel finds that the Respondent intended to
attract Internet users accessing the website corresponding to the disputed domain name who may be
confused and believe that the website is held, controlled by, or somehow affiliated or related to the

Furthermore, UDRP panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. The Complainant showed that the Respondent created an email address related to the disputed domain name, i.e. “[email protected]”, and thus entails that the Respondent can send fraudulent emails such as messages containing spam, or phishing attempts. Furthermore, through online forms listed on the website under the disputed domain name, the Respondent was requesting confidential information from the Internet users that were diverted to this website, confused that they are on the Complainant’s website.

At the time of filing the Complaint, the disputed domain name resolved to an inactive page.

UDRP panels 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. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

The Panel notes the distinctiveness and reputation of the Complainant’s trademark in its field; the composition of the disputed domain name; the Respondent’s failure to provide a formal response in this procedure; the Respondent’s use of a privacy service and provision of inaccurate contact details in the WhoIs, and finds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Furthermore, the informal email communication of the Respondent sent on July 24, 2023, is, in the eyes of this Panel, an acknowledgement of registration and use in bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

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, <ifskadeforsakringab.com>, be transferred to the Complainant.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: September 8 2023