Swiss Re Ltd v Carolina Rodrigues, Fundacion Comercio Electronico

WIPO Case No. D2024-3900

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swiss Re Ltd v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2024-3900

1. The Parties

The Complainant is Swiss Re Ltd, Switzerland, represented by TIMES Attorneys, Switzerland.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <corporatesolutionsswissre.com> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on
September 24, 2024. On September 25, 2024, the Center transmitted by email to the Registrar a request for
Registrar verification in connection with the disputed domain name. On September 25, 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 (Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on September
27, 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 October 1, 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 “WIPO 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 October 2, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 22, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 24, 2024.

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The Center appointed Anton Polikarpov as the sole panelist in this matter on October 30, 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, headquartered in Zurich, Switzerland, is one of the largest reinsurance companies globally. Founded in 1863, it plays a major role in providing reinsurance, insurance, and other risk management solutions worldwide under the range of commercially successful brands, in particular SWISS RE CORPORATE SOLUTIONS.

To ensure the distinctiveness and reputation of its brand in the market, the Complainant has registered a series of trademarks in various jurisdictions, including key marks like SWISS RE, namely:

-	Swiss Trademark No. 2P-411846 for , registered on August 16, 1994, covering
services in Class: 36;
-	Swiss trademark No. 717011 for SWISS RE, registered on June 1, 2018, covering goods and services in Classes: 09, 16, 35, 36, 41 and 42;
-	International trademark No. 1164262 for SWISS RE CORPORATE SOLUTIONS, registered on May 02, 2013, covering services in Class: 36;
-	International trademark No. 1223592 for , registered on June 12, 2014, covering
goods and services in Classes: 09, 16, 35, 36, 41 and 42;
-	International trademark No. 1314155 for , registered on June 06, 2016, covering
goods and services in Classes: 09, 35, 36 and 42;

Additionally, the Complainant owns several domain names incorporating the trademarks, in particular
<swissre.com> (registered on November 10, 1995), <corporatesolutions.swissre.com> and others.

The disputed domain name (registered on December 12, 2023) reproduces the Complainant’s trademarks as well as the Complainant’s company name “Swiss Re Ltd” and the company name of its affiliate “Swiss Re Corporate Solutions Holding Company Ltd” and currently is used to redirect to other pages of third parties that offer various goods and services not related to the Complainant’s business.

Being informed about the above-described use of the disputed domain name, the Complainant undertook multiple efforts to contact the registrant of the disputed domain name. In particular, on December 18, 2023 and January 03, 2024, the Complainant’s representative dispatched several letters through the proper form and to the email address provided on the website associated with the disputed domain name. These letters demanded the deactivation of the disputed domain name. Despite these demands, no response from the Respondent was received.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

- the disputed domain name is identical or confusingly similar to the trademarks in which the
Complainant has established rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- the disputed domain name was registered and is being used in bad faith.

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Accordingly, the Complainant requests that the disputed domain name be transferred in favor of the

Complainant.

B. Respondent

The Respondent has not replied to the Complainant’s contentions.

6. Discussion and Findings

The Panel will now evaluate this case in light of the Complaint, the Respondent’s lack of response, the Policy, the Rules, and any relevant principles of law deemed applicable, as outlined in accordance with paragraph 15(a) of the Rules.

Under the paragraph 4(a) of the Policy, the Complainant must prove each of the following: (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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove that each of the aforesaid three elements is present in order to succeed in relation to the disputed domain name.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name…”

In the present case, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a response addressing the contentions of the Complainant and the evidence submitted by it.

As a result, the Panel may resolve this administrative proceeding based on the Complainant’s unchallenged factual allegations, in accordance with paragraphs 5(f) and 14 of the Rules.

A. Identical or Confusingly Similar

Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

As evidenced in the case file, the Complainant has duly shown the rights in respect of SWISS RE and

SWISS RE CORPORATE SOLUTIONS marks.

The Complainant’s trademarks are recognizable within the disputed domain name.

The presence of the Top-Level Domain (“TLD”) “.com” is irrelevant for the purpose of determining confusing
similarity, as it is a standard requirement of domain names registered under this TLD (see the WIPO
Overview 3.0, section 1.11.1).

These facts, along with a straightforward comparison, allow for finding that the disputed domain name is confusingly similar to the trademarks held by the Complainant. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy, which is well accepted to be a standing requirement, has been met.

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B. Rights or Legitimate Interests

The Complainant claims that the Respondent is holding the disputed domain name without legitimate interests, referring to two significant points: (i) the Complainant is not aware of any person or entity whatsoever outside its organization who could hold any license or who could raise any other justification for registration or use of the disputed domain name; (ii) the disputed domain name does not resolve to a website. It redirects to various seemingly random websites of third parties who do not seem to be involved in this scheme.

As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

A list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name is provided by paragraph 4(c) of the Policy. However, the Respondent failed to describe any reason that would demonstrate rights or legitimate interests in the disputed domain name.

The nature of the disputed domain name, which incorporates Complainant’s trademarks and is confusingly similar to the name of the Complainant’s subsidiary’s, carries a risk of implied affiliation.

The manner of exploitation of the disputed domain name and the fact the Respondent has no license or other consent to use the previously registered trademarks of the Complainant support that no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

In these circumstances, the Panel concludes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. 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 names such as those enumerated in the Policy or otherwise. Hence the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

In this case, the disputed domain name was registered long after the SWISS RE and SWISS RE company with a recognized reputation worldwide.

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 (see the WIPO Overview 3.0, section 3.1.4).

Further proof of the Respondent’s bad faith is the lack of its own rights to or legitimate interests in the disputed domain name, as detailed above in Section 6.B.

As such, based on the available record, and on a balance of probabilities, the Panel is prone to believe that the Respondent was aware of the Complainant’s trademarks, and probably the trade name of its affiliate, at the moment of registration of the disputed domain name. That is the Respondent intentionally registered the

disputed domain name to take advantage of the Complainant’s successful brands and most likely the
goodwill.

The above is supported by the fact that the Respondent was repeatedly involved in UDRP cases and found liable for cybersquatting.

Therefore, the Panel finds that the disputed domain name has been registered in bad faith.

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The records of this case also show that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to other online locations to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademarks, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.

The Panel supports the Сomplainant’s arguments that the nearly identical domain name of the Complainant,
i.e. <corporatesolutions.swissre.com>, resolves to the official website of the Complainant’s business unit.
So, the registration of the disputed domain name cannot be a coincidence.

The Panel accepts that mail exchanges (“MX records”) which are configured in connection with the disputed domain name will amount to a further inference of bad faith. This case contains no evidence of illegal behavior, but the configuration of MX records presents the potential for an email phishing scheme impersonating the Complainant. The use of a domain name that is identical or confusingly similar to a trademark in emails that do not originate with the trademark owner presents a risk to the reputation of a trademark and its owner (see IPSOS v. Ipsos Market, ipsosmarketsurvey, WIPO Case No. D2023-2856).

The bad faith registration and use of the disputed domain names are also affirmed by the fact that the
Respondent did not respond to the Complainant’s cease and desist letters, nor has it denied the assertions
of bad faith made by the Complainant in this proceeding (see Compagnie Générale des Etablissements
Michelin v. Regan Finch, Georgiana Blankenship, WIPO Case No. D2023-4672).

Based on its evaluation of all evidence presented, the Panel finds that the Complainant succeeds under paragraph 4(a)(iii) 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, <corporatesolutionsswissre.com>, be transferred to the Complainant.

/Anton Polikarpov/
Anton Polikarpov
Sole Panelist
Date: November 13, 2024