Swiss Re Ltd v Kung Lee

WIPO Case No. D2024-1102

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swiss Re Ltd v. Kung Lee

Case No. D2024-1102

1. The Parties

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

The Respondent is Kung Lee, United States of America (the “US”).

2. The Domain Name and Registrar

The disputed domain name <swisrre.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 March 13, 2024. On March 13, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 13, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (PrivacyGuardian.org LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 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 March 18, 2024.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on March 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on April 11, 2024.

The Center appointed Taras Kyslyy as the sole panelist in this matter on April 24, 2024. The Panel f inds 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.

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4. Factual Background

The Complainant is a global wholesale provider of reinsurance, insurance and financial services. Founded in Zurich, Switzerland, in 1863, the Complainant serves clients through a network of over 60 of f ices globally. The Complainant’s group was in recent years the second largest and is currently the largest reinsurer in the world.

The Complainant owns a number of registrations for its SWISS RE trademark, including, for instance, International registration No. 1067014, registered on November 26, 2010, and the US trademark registration No. 4400508, registered on September 10, 2013.

The disputed domain name was registered on July 24, 2023 and hosted a pay-per-click parking page. At the time of the decision in the present case the disputed domain name does not resolve to any active website. The disputed domain name has an active MX record.

On March 7, 2024, the Complainant sent a cease and desist letter to the Respondent, however no response followed.

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.

Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name is a classic typo squatting domain name. Thus, it almost completely incorporates the Complainant’s trademark SWISS RE and only reduces one “s” and adds an additional “r”. The disputed domain name does not add or modify any distinctive element whatsoever to make it distinguishable from the Complainant’s names and trademarks. Furthermore, the addition of the generic Top-Level Domain “.com” does not add any distinctiveness to the disputed domain name. The disputed domain name was not meant to be distinguishable f rom the Complainant’s trademark, on the contrary, it was created and registered to create confusion with the Complainant’s domain name

<swissre.com>.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant does not know the Respondent and did not grant him/her any license or other right to use any of its trademarks, neither in a domain name nor otherwise. The Respondent did not respond to the Complainant’s cease and desist letter, which shows that the Respondent customer does not have any rights or legitimate interests in respect of the disputed domain name. The Respondent used the disputed domain name to create fake email addresses of the Complainant, i.e., “@swisrre.com” addresses and include them into a communication between the Complainant and the Complainant’s customer. The names used in these email addresses are correct names of the Complainant’s employees but the domain name was <swisrre.com> instead of <swissre.com>. Sending such emails cannot have any other purpose than phishing. No further details on the asserted communication or copies of the emails were provided by the Complainant though.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant is well-known and the disputed domain name clearly and beyond any doubt refers to the Complainant. The disputed domain name is a typo of the Complainant’s well-known trademark. The Respondent conceals its identity. The Respondent did not react to the cease and desist letter. There is no plausible explanation whatsoever how anyone else than the Complainant or its subsidiary could register a domain name <swisrre.com> in good faith. The intention of the Respondent is to benef it f rom the

Complainant’s reputation and to deceive customers about a connection with the Complainant, or to sell the

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disputed domain name to a person with such intentions. The disputed domain name was used to create fake email addresses of the Complainant, i.e., “@swisrre.com” addresses and include them into a communication between the Complainant and the Complainant’s customer.

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 f irst 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 trademark 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 trademark (service mark) for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel considers the disputed domain name consisting of intentional misspelling of the Complainant’s trademark (dropping “s” and adding extra “r”). The Panel f inds the mark remains recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9.

The Panel f inds the f irst 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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds 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.

The available evidence does not confirm that the Respondent is commonly known by the disputed domain name, which could demonstrate his/her rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the
Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could

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be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No.
D2014-1875).

The use of a domain name to host a parked page comprising pay-per-click links does not represent a bona f ide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel f inds this applies to the present case. WIPO Overview 3.0, section 2.9.

The Panel f inds 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.

The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a signif icant reputation and level of goodwill in its trademark both in the Switzerland and internationally. Thus, the Panel f inds that the disputed domain name confusingly similar to the

Complainant’s trademark was registered in bad faith. WIPO Overview 3.0, section 3.1.4.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. Using the disputed domain name to host a pay-per-click parking page the Respondent created a likelihood of confusion with the Complainant’s trademark and potentially obtained revenue f rom this practice. Under such circumstances the Panel finds that the disputed domain name was being used in bad faith. WIPO Overview 3.0, section 3.3.

Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a f inding of bad faith. WIPO Overview 3.0, section 3.3.

The Panel f inds 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 <swisrre.com> be transferred to the Complainant.

/Taras Kyslyy/ Taras Kyslyy Sole Panelist Date: April 25, 2024