Swiss Re Ltd v Criss Moses

WIPO Case No. D2023-1847

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swiss Re Ltd v. Criss Moses

Case No. D2023-1847

1. The Parties

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

The Respondent is Criss Moses, South Africa.

2. The Domain Name and Registrar

The disputed domain name <corporatesolutionsswissre.org> is registered with NameSilo, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2023. On April 26, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 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 (PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 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 amendment to the Complaint on April 27, 2023.

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 April 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2023. On June 5, 2023, the Respondent sent an informal communication to the Center informing that “The domain in question has been taken down a long time ago and is no longer active once we noticed the similarity with the said domain”.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 5, 2023. The Panel finds

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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 leader in the field of insurance and owns many trademark registrations for SWISS RE such as:

(1)	Swiss trademark registration No. 717011, registered on July 26, 20210;
(2)	International trademark registration No. 1067014, registered on November 26, 2010;

The Complainant also owns trademark registrations for SWISS RE registered together with the words

“corporate solutions” such as:

(1)	Swiss trademark registration No. 682041, registered on December 9, 2015;
(2)	International trademark registration No. 1314155, registered on June 6, 2016;

The disputed domain name was registered by the Respondent on March 31, 2023, and resolves to a website displaying the Complainant’s SWISS RE CORPORATE SOLUTIONS trademark and seems to offer insurance services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is almost identical or is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns the trademark SWISS RE and has registered it worldwide. The Complainant’s trademark SWISS RE is sometimes registered together with the words “corporate solutions”. The Complainant’s trademark has acquired distinctiveness. The disputed domain name contains all four elements, which constitute the trademark of the Complainant but simply arranged in a different order. The disputed domain name also incorporates Complainant’s company name and that of its affiliate. The generic Top-Level Domain (“gTLD”) “.org” should be disregarded.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. No one is licensed to use the Complainant’s trademark. The disputed domain name resolves to a webpage that infringes the Complainant’s copyrights and claims a non-existing connection with the Respondent. The Complainant was not able to contact the Respondent as its contact details were not made available.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks are well-known. The disputed domain name was registered with the intent to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. This is clear from the website to which the disputed domain name resolves as it shows the Complainant’s trademarks and it copies the appearance of the Complainant’s website. There is a contact form on the website, which may be used for phishing purposes. Also, some of the content of the Complainant’s website are reproduced.

B. Respondent

The Respondent sent an informal communication on June 5, 2023, stating that “The domain in question has been taken down a long time ago and is no longer active once we noticed the similarity with the said domain”.

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6. Preliminary Issue: Taking Down the Disputed Domain Name

In its email of June 5, 2023, the Respondent states that the disputed domain name has been taken down by him. This is the scenario envisaged under paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The parties to this proceeding have not

been able to settle the dispute using the “standard settlement process”. Instead, the Respondent contends
that he has “taken down” the disputed domain name. In such instances, a panel may still proceed with an
assessment of the three elements of paragraph 4(a) of the Policy. Considering all the circumstances of the
present case, e.g. the brevity of the Respondent’s answer, which renders it rather ambiguous, the absence
of the Complainant’s consent to simply record a decision of transfer, the Panel will proceed to review the

facts of the case and subsequently decide on the merits.

7. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for SWISS RE and for SWISS RE CORPORATE
SOLUTIONS. The Panel is satisfied that the Complainant has established its ownership of the trademark
SWISS RE.

The disputed domain name incorporates the Complainant’s trademark SWISS RE in its entirety. It is established that the incorporation of a well-known trademark is sufficient to establish confusing similarity. The use of the words “corporate solutions” does not eliminate confusing similarity. Furthermore, the Complainant has registered its trademark SWISS RE CORPORATE SOLUTIONS, being identical to the disputed domain name. The gTLD “.org” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests. The Respondent has not attempted to show that it has any rights or legitimate interests in the disputed domain name. In fact, in its email, the Respondent has made it known that the disputed domain name is taken down.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademark as SWISS RE is a well-known trademark. But more importantly because the disputed domain name resolves to a website which shows the Complainant’s trademark and logo and replicates some of the content of the Complainant’s website and claims to sell insurance. The similarity of the website of the Respondent to that of the Complainant, or between the disputed domain name and the Complainant’s trademark, is somehow even acknowledged by the Respondent himself.

Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely within the meaning of paragraph 4(b)(iv) of the Policy. The use of a privacy shield service is under the

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circumstances a further indication of bad faith. Given the above, the Panel believes that the Respondent has

registered the disputed domain name in order to trade off the reputation of the Complainant’s trademark.

Accordingly, the Panel finds that the Complainant has satisfied 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.org> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: June 14, 2023