Swiss Life AG, Swiss Life Intellectual Property Management AG v Kris
WIPO Case No. D2023-0499
•07-04-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Swiss Life AG, Swiss Life Intellectual Property Management AG v. Kris
Loggins
Case No. D2023-0499
1. The Parties
The Complainants are Swiss Life AG and Swiss Life Intellectual Property Management AG, Switzerland, represented by Domgate, France.
The Respondent is Kris Loggins, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <swisslife-us.com> (the “Disputed Domain Name”) is registered with
NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2023.
On February 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On February 2, 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 Complainants on
February 8, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on
February 15, 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 February 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2023.
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The Center appointed Mariya Koval as the sole panelist in this matter on March 24, 2023. 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, Swiss Life AG, founded in 1857, is a Swiss largest life insurance company and a leading provider of life, pensions and financial solutions in Europe, as well as being very well-known over the world. For over 160 years it has been helping private and corporate clients prepare their financial future. In 1866, the Complainant undertook its first expansion beyond Switzerland by opening a branch in Germany and an agency in Istanbul, Türkiye. Currently the Complainant operates in Switzerland, Germany, and France, and have competency centers in Luxembourg, Liechtenstein, and Singapore, employing a workforce of around
9500 people and having a distribution network of some 15,000 advisors.
The Complainant, Swiss Life Intellectual Property AG is a subsidiary of the Complainant, Swiss Life AG (collectively hereinafter referred to as, “the Complainant”), and has spent substantial time, efforts and money in advertising and promoting its SWISS LIFE trademark (the “SWISS LIFE Trademark”), having developed an enormous goodwill in the Trademark. According to the decision of the Swiss Supreme Court the SWISS LIFE Trademark has been acknowledged as well-known in Switzerland within the meaning of the Article 6bis of the Paris Convention for the Protection of Industrial Property.
The Complainant owns many SWISS LIFE Trademark registrations in numerous countries throughout the world, among which are:
| - | International Registration No. 605038, registered on July 29, 1993, in respect of services in class 36; |
| - | French Trademark Registration No. 99823895, registered on November 18, 1999, in respect of services in class 36; |
| - | European Union Trademark Registration No. 003438413, registered on October 20, 2006, in respect of goods and services in classes 09,16, 35, 36, 38, 41, and 42; |
| - | International Registration No. 829188, registered on April 30, 2004, in respect of services in classes 35 and 36. |
The Complainant has a significant online presence, it operates a considerable domain names portfolio containing the SWISS LIFE Trademark alone or with generic terms. It operates in particular such domain names as <swisslife.com>, <swisslife.fr>, <swisslife.ch> and many others, which are used to promote the Complainants’ business and related services in the life insurance industry.
The Disputed Domain Name was registered on August 16, 2022. At the date of this decision, the website under the Disputed Domain Name is inactive. However, according to the evidence submitted with the Complaint (Annex 13 to the Complaint), the Disputed Domain Name previously resolved to a parked page with different pay-per-click (“PPC”) links to the Complainant’s website as well as to the Complainant’s competitors websites.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that it has developed an enormous goodwill in its SWISS LIFE Trademark, having
214 Trademarks registrations worldwide.
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The Complainant further asserts that the Disputed Domain Name is confusingly similar to its SWISS LIFE addition of two letters “us”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants’ representative sent an email with several reminders to the named Respondent (Privacy service provided by Withheld for Privacy ehf) and the Registrar of the Disputed Domain Name pointing out the fact that the Disputed Domain Name was registered without his authorization, with link to competitors. The Registrar confirmed reception of the email, created a ticket and indicated that he will review and process following his policies. The registrant never replied to any of these emails up to date.
Also, the nature of the website under the Disputed Domain Name was important in this case: there was a parking page with PPC links. Therefore, the Disputed Domain Name which was registered and is used solely in order to make money.
The Complainant further asserts that the Respondent has registered and is using the Disputed Domain and of the SWISS LIFE Trademark when he registered the Disputed Domain Name in 2022. The choice of the Disputed Domain Name by the Respondent is relevant: he chose the well-known SWISS LIFE Trademark and attached commercial links to the official website as well as to the competitors’ websites.
Moreover, the disclosure of the Respondent’s identity reveals that he has also registered the domain name <swisslife-usa.com> transferred to the Complainant in a previous UDRP Decision, see e.g. Swiss Life AG, Swiss Life Intellectual Property Management AG v. Kris Loggins, WIPO Case No. D2022-3106. It has to be
highlighted that the Respondent has registered at least two domain names involving the well-known SWISS
LIFE Trademark.
The Respondent clearly registered the Disputed Domain Name for the purpose of making business benefits from the confusion or money by attracting Internet users to commercial links and probably with the intent to sell the Disputed Domain Name to the Complainant or a third party. Consequently, it is obvious that the
Respondent has registered and is using the Disputed Domain Name in bad faith and is engaged in a pattern of conduct.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order for the complainant to succeed it must satisfy the panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has properly asserted its rights in the SWISS LIFE Trademark due to the long use and number of registrations globally.
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The Disputed Domain Name completely reproduces the Complainant’s SWISS LIFE Trademark in combination with the term “us”, hyphen, and the generic Top-Level domain (“gTLD”) “.com”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In this case, the addition of the term “us”, which is a standard abbreviation for the United States or a pronoun, to the SWISS LIFE Trademark does not prevent a finding of confusing similarity.
According to the WIPO Overview 3.0, section 1.11, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Pursuant to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
Furthermore, the use of hyphens in the Disputed Domain Name is irrelevant in a finding of confusing
similarity, see e.g. Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd., WIPO Case
No. D2010-2107 (“In the present case, the Panel finds that… adding a hyphen between the two words
“maharaja” and “express” in the disputed domain name are insignificant modifications that do not reduce the
confusing similarity between the disputed domain name and the Complainant’s mark”).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s
SWISS LIFE Trademark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element.
The Complainant has used its SWISS LIFE Trademark for more than 20 years, which is long before the
Respondent registered the Disputed Domain Name in 2022.
The Respondent has not been authorized by the Complainant to register the Disputed domain Name. The Panel also finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name.
Also, there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods and services or making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, according to the evidence presented by the Complainant (Annex 13 to the Complaint), the Disputed Domain Name previously resolved to a parked page with different PPC links to the Complainant’s website as well as to the Complainant’s competitors websites. At the date of this decision, the website under the Disputed Domain Name is inactive. In accordance with the WIPO Overview 3.0, section 2.9, applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
Moreover, in accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement
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by the trademark owner. The addition of the term “us”, which is the two-letter country code for the United
States where the Internet users might think the Complainant also conduct its business, to the Complainant’s
SWISS LIFE Trademark in the Disputed Domain Name, is further evidence, that the Respondent was very
well aware of the Complainant’s SWISS LIFE Trademark and business at the time of registration of the
Disputed Domain Name and has done so for the only purpose of creating an impression that the Disputed
Domain Name is connected with the Complainant’s SWISS LIFE Trademark.
The Respondent did not file any response to the Complaint and did not participate in this proceeding, respectively, the Respondent did not present any evidence for supporting any rights or legitimate interests in the Disputed Domain Name.
In view of the foregoing, the Panel finds that the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s SWISS LIFE Trademark is well-known.
According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an
unaffiliated entity can by itself create a presumption of bad faith. The Panel is of the opinion that it is clear
that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to
the Complainant’s well-known SWISS LIFE Trademark, intended to disrupt the Complainant’s business and
confuse Internet users seeking for or expecting the Complainant. In view of the absence of any evidence to
the contrary and that the Respondent did not file any response to claim otherwise, the Panel concludes that
the Respondent has registered and is using the Disputed Domain Name in bad faith.
Furthermore, in the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at
the time of the registration of the Disputed Domain Name is undisputable in view of: (i) the Disputed Domain
Name previously resolved to the parking page with PPC links that all referred to the insurance business in
which the Complainant is also engaged; (ii) the Respondent has also registered the domain name
<swisslife-usa.com>, incorporating the SWISS LIFE Trademark, which has been transferred to the
Complainant in previous UDRP Decision, see e.g. Swiss Life AG, Swiss Life Intellectual Property
Management AG v. Kris Loggins, WIPO Case No. D2022-3106.
In accordance with the WIPO Overview 3.0, section 3.4, UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution (in some such cases, the respondent may host a
copycat version of the complainant’s website). Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective
customers. Based on the evidence provided with the Complaint, the Panel finds that the website related to cannot be in any way considered as a good faith.
the Disputed Domain Name was previously being used in bad faith. Namely, the Disputed Domain Name
previously resolved to websites containing PPC links that redirected to different websites, including the
Also, at the date of this Decision, the Disputed Domain Name does not resolve to an active website and does not otherwise appear to have been used in connection with an active website or for any other purpose since its registration in 2010, that also support a bad faith in this case. According to the section 3.3 of the WIPO Overview 3.0, while 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
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distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a formal
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. In this case all of the
other above conditions are met.
In accordance with section 3.6 of the WIPO Overview 3.0 there are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. The Panel considers that, taking into account all circumstances of this case, the Respondent’s use of privacy service constitutes further evidence of bad faith registration and use of the Disputed Domain Name.
In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.
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 <swisslife-us.com> be transferred to the Complainant.
/Mariya Koval/ Mariya Koval Sole Panelist Date: April 7, 2023
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