Phoenix Group Management Services Limited v Alberto Tosco

WIPO Case No. D2024-4557

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Phoenix Group Management Services Limited v. Alberto Tosco

Case No. D2024-4557

1. The Parties

The Complainant is Phoenix Group Management Services Limited, United Kingdom, represented by Freeths

LLP, United Kingdom.

The Respondent is Alberto Tosco, United States of America.

2. The Domain Name and Registrar

The disputed domain name <standardlifeintl.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2024. On November 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2024, 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 (Registration Private) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2024, 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 8, 2024.

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 November 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2024.

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The Center appointed Andrew F. Christie as the sole panelist in this matter on December 9, 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

Rules, paragraph 7.

4. Factual Background

The Complainant is a large United Kingdom savings and retirement business servicing 12 million customers
under its pensions, savings and life insurance brands, including the STANDARD LIFE brand. The

Complainant’s main website is at “

The Complainant is the proprietor of numerous trade mark registrations consisting of or including
STANDARD LIFE, including Canadian Trade Mark No. TMA328136 (registered on May 29, 1987), and
United Kingdom Trade Mark No. 1276788 (registered on May 26, 1989), both for the word trade mark
STANDARD LIFE.

The disputed domain name was registered on October 24, 2024. The Complainant provided a copy of an email dated October 24, 2024, sent to an independent financial advisor from an email address using the disputed domain name. The email, which purports to be from an employee of Standard Life, claims that Standard Life is “facing some banking challenges” and provides some “intermediary payment solutions” in an apparent attempt to elicit payment from the recipient. As at the date of this decision, the disputed domain name does not resolve to an active location.

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.

The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which it has rights on the following grounds, among others. The disputed domain name includes the words “standard life”, which are identical to the Complainant’s STANDARD LIFE trade mark, in conjunction with “intl”, a common abbreviation for the word “international”. The included string does not distinguish the disputed domain name from the Complainant’s trade mark.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name on the following grounds. The Complainant’s rights in its trade mark predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use its STANDARD LIFE trade mark. The Respondent is not associated or connected with the Complainant whatsoever.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith on the following grounds. It is inevitable that Internet users will be confused into believing that the disputed domain name has some form of association with the Complainant. The registration of the disputed domain name therefore takes unfair advantage of the Complainant's rights. On this basis alone, the Complainant considers the registration of the disputed domain name to be in bad faith. In addition, the Complainant has been made aware that an email address using the disputed domain name has been used in a fraudulent manner. Therefore, it is clear that the disputed domain name has been registered and is being used in bad faith to interfere with the Complainant’s legitimate business.

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B. Respondent

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

6. Discussion and Findings

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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. mark STANDARD LIFE.

The entirety of the Complainant’s word trade mark is reproduced within the disputed domain name, followed disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7

by the string “intl”. Although the addition of other terms may bear on assessment of the second and third
elements, the Panel finds the addition of this string does not prevent a finding of confusing similarity between
the disputed domain name and the Complainant’s trade mark for the purposes of the Policy. WIPO

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.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.

The Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Also, the evidence establishes that the Respondent has used the disputed domain name in an attempt to impersonate the Complainant, apparently in pursuit of a fraud. Panels have held that the use of a domain name for illegal activity (here, impersonation) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s 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.

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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: (i) the Respondent registered the disputed domain name more than two decades after the Complainant first registered its STANDARD LIFE trade mark; (ii) the disputed domain name incorporates the Complainant’s trade mark in its entirety, and merely adds the string “intl”,

which is a common abbreviation for the descriptive word “international”; and (iii) the Respondent has used
the disputed domain name in an email address in an attempt to impersonate the Complainant. It is clear the
Respondent registered the disputed domain name with knowledge of the Complainant’s trade mark.

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.

Panels have held that the use of a domain name for illegal activity (here, impersonation) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of 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 <standardlifeintl.com> be transferred to the Complainant.

/Andrew F. Christie/
Andrew F. Christie
Sole Panelist
Date: December 23, 2024