iptiQ Group Holding Ltd, iptiQ Life S.A. v Melissa Boehm

WIPO Case No. DEU2024-0023

ARBITRATION

AND

MEDIATION CENTER

PANEL DECISION

iptiQ Group Holding Ltd, iptiQ Life S.A. v. Melissa Boehm

Case No. DEU2024-0023

1. The Parties

The Complainant are iptiQ Group Holding Ltd, Switzerland, (the “first Complainant”), and iptiQ Life S.A.,

Luxembourg, (the “second Complainant”), represented by TIMES Attorneys, Switzerland.

The Respondent is Melissa Boehm, Spain.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <iptiq.eu> is the European Registry for Internet Domains

(“EURid” or the “Registry”). The Registrar of the disputed domain name is Registrar.eu.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2024.

On July 19, 2024, the Center transmitted by email to the Registry a request for registrar verification in

connection with the disputed domain name. On July 19, 2024, the Registry transmitted by email to the

Center its verification response confirming that the Respondent is listed as the registrant and providing the

contact details.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute

Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for

.eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on July 23, 2024. In accordance with the ADR Rules,

Paragraph B(3), the due date for Response was August 12, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on August 13, 2024.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 14, 2024. 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 ADR Rules,

Paragraph B(5).

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4. Factual Background

The Complainants operate in the field of digital insurance offering various types of insurance products and

delivering multi-channel customer experiences through their advanced end-to-end digital insurance platform.

The Complainants are part of the Swiss Re Group, which is a global and leading wholesale provider of

reinsurance, insurance, and financial services. The second Complainant is an affiliate of the first

Complainant. The first and second Complainant are subsequently referred to as the “Complainant”, unless

otherwise needed.

The Complainant is the owner of various trademark registrations for the word mark IPTIQ, in various

jurisdictions, including the following:

- IPTIQ, Benelux registration No. 1413357, registered on June 10, 2020, for goods and services in classes 9,

16, 35, 36, 41, and 42;

- IPTIQ, International registration No. 1558943, registered on July 28, 2020, for goods and services in

classes 9, 16, 35, 36, 41, and 42, designating, among others, also the European Union.

The disputed domain name was registered on March 31, 2024 in the name of an individual allegedly located

in Spain.

At the time of the filing of the Complaint, the disputed domain name resolved to a parking page at

“ where the disputed domain name was offered for sale at the price of USD 8,500.

On April 25, 2024, the Complainant sent a cease and desist letter to the Respondent, informing of the

Complainant’s prior trademark rights and asking for the immediate transfer of the disputed domain name.

On the same day, the Respondent replied agreeing on the transfer for the amount of USD 9,320. On May 3,

2024, the Complainant answered to the Respondent’s offer advising that the Complainant does not purchase

domain names that infringe its trademark rights and offered to pay USD 200 as compensation for the

expenses and fees incurred for the registration of the disputed domain name. On May 22, 2024, the

Respondent confirmed its intention to sell the disputed domain name at the reduced price of USD 8,500.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is identical to its mark IPTIQ as it incorporates

this mark entirely without the addition of other elements.

The Complainant further maintains that the Respondent lacks rights or legitimate interests in the disputed

domain name. The Complainant does not know the Respondent or have a relationship with her. The

correspondence between the Complainant and the Respondent reported under the section “Factual

Background” above, clearly shows the Respondent’s intention to profit from the sale of the disputed domain

name, which indicates the Respondent’s lack of rights or legitimate interests on the disputed domain name.

Lastly, the Complainant maintains that the Respondent registered the disputed domain name in bad faith.

The Respondent offered for sale the disputed domain name for USD 8,500. Panels have found that the

passive use of a domain name cannot prevent a finding of bad faith under the doctrine of passive holding.

In the case at issue, the Complainant’s mark is highly distinctive, and the Complainant is well known. The

disputed domain name clearly refers to the Complainant. Moreover, the Respondent offered for sale the

disputed domain name at an excessive price. The Respondent probably provided false contact details with

the registration of the disputed domain name and there is no plausible explanation on how anyone other than

the Complainant could register the disputed domain name in good faith. It is obvious that the intention of the

Respondent is to benefit from the Complainant’s reputation and to deceive customers or to sell the disputed

domain name to the Complainant.

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B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue

A. Language of the proceeding

In accordance with Paragraph A(3)(a) of the ADR Rules, the language of the ADR Proceeding shall be the

language of the Registration Agreement for the disputed domain name. The language of the Registration

Agreement for the disputed domain name is Spanish. However, on May 31, 2024, the Complainant

requested to change of language from Spanish to English. On July 7, 2024, the panel issued a decision

allowing the change of language (see iptiQ Group Holding Ltd v. Meilssa Boehm, WIPO Case

No. DEUL2024-0002).

B. Consolidation of the Complainants

The Complaint has been filed by two Complainants, which are related one another as the second

Complainant is an affiliate of the first Complainant. The ADR Rules do not expressly contemplate the

possibility of an ADR complaint filed jointly by multiple complainants, but also do not prohibit such possibility

(see, among others, Take-Two Interactive Software, Inc. and Take-Two Interactive GmbH v. Auyhgf

Awgega, WIPO Case No. DEU2020-0006).

The Panel notes that the second Complainant is an affiliate of the first Complainant. Thus, the two

Complainants belong to the same group. The Panel finds that it would certainly be equitable and

procedurally efficient to permit consolidation.

Therefore, the Panel allows the consolidation of the Complainants in the present proceeding.

6.2. Procedural Issue

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or

established by national law of a Member State and/or European Union law

The Complainant has established earlier rights in the trademark IPTIQ registered in the European Union

(“EU”). The disputed domain name reproduces this mark entirely without the addition of other elements,

besides the “.eu” country code Top-Level Domain, which is a mere technical requirement. Accordingly, the

Panel finds that the disputed domain name is identical to the Complainant’s mark.

Therefore, the Complainant has satisfied the first requirement set forth in Paragraph B(11)(d)(1)(i) of the

ADR Rules.

B. Rights or Legitimate Interests

Paragraph B(11)(e) indicates, without limitations, a series of circumstances that, if found by the Panel to be

proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances, are the following:

(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to

the domain name in connection with the offering of goods or services or has made demonstrable preparation

to do so;

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(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the

domain name, even in the absence of a right recognized or established by national and/or European Union

law;

(3) the Respondent is making a legitimate and non-commercial or fair use of the domain name, without intent

to mislead consumers or harm the reputation of a name in which a right is recognized or established by

national law and/or European Union law.

In the Panel’s view, the Respondent does not appear to have been commonly known by the disputed domain

name and the Respondent did not provide evidence to that effect.

Furthermore, in the Panel’s view, the Respondent is not making a legitimate or noncommercial or fair use of

the disputed domain name without intent to mislead consumers or harm the Complainant’s mark. The

disputed domain name is identical to the Complainant’s mark and, as such, carries a high risk of implied

affiliation. Section 2.5.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third

Edition (“WIPO Overview 3.0”).[1] Consumers who come across the disputed domain name would be easily

[1] Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel will

misled as to its provenance, thinking that it originates from the Complainant and not from an unrelated third

party, and may believe that the disputed domain name leads to a Complainant's website for insurance

products targeting the EU. Furthermore, there is no evidence in the case file that prior to any notice of the

dispute, the Respondent has used the disputed domain name in connection with a bona fide offering of

goods or services or has made demonstrable preparation to do so. The only documented use of the

disputed domain name is that of being offered for sale at the price of USD 8,500. The offer for sale of a

misleading disputed domain name in breach of the Complainant’s earlier rights cannot amount to a bona fide

offering of goods or services and cannot confer to the Respondent rights or legitimate interests in the

disputed domain name.

Accordingly, and in the absence of any contrary evidence from the Respondent, the Panel finds that the

Complainant has successfully established an unrebutted prima facie case that the Respondent lacks rights

or legitimate interests in the disputed domain name, in compliance with Paragraph B(11)(d)(1)(ii) of the ADR

Rules.

C. Registered or Used in Bad Faith

Under the ADR Rules it is not necessary to prove the Respondent’s bad faith in the registration or use of the

disputed domain name when the Respondent’s lack of rights or legitimate interests in the disputed domain

name has been established. However, for the sake of completeness, the Panel wishes to comment also in

relation to the possible registration or use in bad faith of the disputed domain name.

The Panel notes that the Complainant’s IPTIQ trademark is distinctive as it consists of the combination of

five letters forming an invented word, which has no reference to the Complainant’s activity. In light of this,

the Panel finds it unlikely that the Respondent accidentally chose the exact same combination of letters for

the disputed domain name. On the contrary, it is much more likely that the Respondent was well aware of

the existence of the Complainant’s mark when it registered the disputed domain name and targeted the

IPTIQ mark in the hope of obtaining an economic advantage. This is confirmed by the facts that disputed

domain name resolves to a website where it is offered for sale at USD 8,500, and that prior to the filing of the

Complaint, the Complainant sent a cease and desist letter to the Respondent mentioning its earlier rights on

the IPTIQ mark and asking for the voluntary transfer of the disputed domain name registered in breach of

such rights. At this point, the Respondent asked for a substantial price for the transfer of the disputed

domain name and refused to accept the out-of-pocket expenses directly related to the disputed domain

name that the Complainant offered to pay. The Panel also notes that the Respondent did not file any

Response in reply to the Complaint in order to provide arguments and evidence in support of the registration

and offer for sale of the disputed domain name in good faith.

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In light of the above, the Panel finds that the Respondent has registered or used the disputed domain name

in bad faith.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the

disputed domain name, <iptiq.eu> be transferred to the second Complainant.[2]

[2] (i) The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless

/Angelica Lodigiani/

Angelica Lodigiani

Sole Panelist

Date: August 27, 2024

refer to the WIPO Overview 3.0, if relevant to this proceeding.

the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.

(ii)The second Complainant is an entity established in Luxembourg. This satisfies the general eligibility criteria for registration set out in

Article 3 of Regulation (EU) 2019/517.