Swiss Re Ltd v Oliver Montesinos Fuentes

WIPO Case No. D2024-5263

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swiss Re Ltd v. Oliver Montesinos Fuentes

Case No. D2024-5263

1. The Parties

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

The Respondent is Oliver Montesinos Fuentes, Mexico.

2. The Domain Name and Registrar

The disputed domain name <swíssre.com> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2024. On December 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 (Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 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 December 31, 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 January 3, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 23, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on January 28, 2025.

The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on February 4, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 leading global provider of reinsurance, insurance, and financial services. Established in 1863 in Zurich, Switzerland, the Complainant has expanded its operations worldwide, serving clients through a network of over 60 offices across different regions. Over the past years, the Complainant has held a prominent position in the reinsurance market, being one of the largest reinsurers globally and currently recognized as one of the largest reinsurers in the world.

Notably, the Swiss Federal Institute of Intellectual Property has registered the word mark SWISS RE as a
trademark with acquired distinctiveness. Furthermore, previous panels have consistently found that SWISS
RE qualifies as a well-known trademark (See Schweizerische Reckversicherungs-Gesellschaft v. Texas
International Property Associates, WIPO Case No. D2007-1455).

The Complainant owns the trademark SWISS RE in many jurisdictions including, international registrations Reg. No. 1067014 for classes 9, 16, 35, 36, 41 and 42, registered on November 26, 2010; Reg. No. 624637 for class 36, registered on August 16, 1994; and Reg. No. 1223592, for classes 9, 16, 35, 36, 41 and 42, registered on June 12, 2014.

Likewise, the Complainant asserts to have online presence in Internet through, among others, its primary website “ registered since 1995.

As evidenced in Annex 10, the Complainant tried to resolve this dispute outside of this administrative proceeding by sending a cease-and-desist letter to the Respondent on November 4, 2024, but did not receive a reply.

Lastly, the disputed domain name <swíssre.com> was registered on October 17, 2024, and it resolves to an inactive website.

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 states that the disputed domain name <swíssre.com> is confusingly similar to its trademark

SWISS RE on which the Complainant has prior rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
disputed domain name <swíssre.com> and the Respondent is not related in any way to the Complainant.
The Complainant has not established any activity and/or business with the Respondent.

More specifically, the Complainant alleged that the Respondent is passively holding the disputed domain name.

Finally, the Complainant requests the Panel appointed in this administrative proceeding to order that the disputed domain name <swíssre.com> be transferred to the Complainant.

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B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interest 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

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 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 or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the SWISS RE mark is 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 1.7. The typosquatting practice of adding the accentuation mark in the letter “í” does not prevent this Panel to conclude that the disputed domain name is confusingly similar to the Complainant’s trademark under WIPO Overview 3.0, section 1.9.

Moreover, the “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement
and is generally disregarded under the first element of the confusing similarity test, as set forth in section

1.11.1 of WIPO Overview 3.0.

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.

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The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the SWISS RE trademark nor is there any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain name.

Additionally, as further discussed in section C, the Respondent is passively holding the disputed domain name by directing users to an inactive website and, therefore, this Panel considers that the Respondent is not making any legitimate noncommercial or fair use of disputed domain name.

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 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 such connection, the Complainant has submitted evidence to support that the trademark SWISS RE is widely known and was registered and used many years before the Respondent registered the disputed domain name. When registering the disputed domain name, the Respondent has targeted the Complainant’s trademarks to generate confusion among Internet users and benefit from the Complainant´s reputation.

The disputed domain name resolves to an inactive page. Panels have found that the non-use of a domain name would not prevent the finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the

Complainant’s trademark, and the composition of the disputed domain name, and considers that, in this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Even more, the Respondent has ignored the cease-and-desist letter from the Complainant, which aimed at resolving this matter amicably outside of this administrative proceeding.

The Panel therefore 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 <swíssre.com> be transferred to the Complainant.

/Gustavo Patricio Giay/
Gustavo Patricio Giay
Sole Panelist
Date: February 18, 2025