Tempcover Ltd v Khuram Akram

WIPO Case No. D2024-4994

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tempcover Ltd v. Khuram Akram

Case No. D2024-4994

1. The Parties

The Complainant is Tempcover Ltd, United Kingdom (“UK”), represented by Venner Shipley LLP, UK.

The Respondent is Khuram Akram, UK.

2. The Domain Name and Registrar

The disputed domain name <tempcovernow.com> is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2024. On December 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 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 amended Complaint on December 9, 2024.

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 paragraph 5, the due date for Response was January 2, 2025. The Respondent sent email communications to the Center on December 5, 2024, and December 11, 2024. Pursuant to paragraph 6 of the Rules, on January 3, 2025, the Center informed the Parties that it would proceed with the panel appointment process.

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The Center appointed Dawn Osborne as the sole panelist in this matter on January 9, 2025. 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, originally launched in 2006 as Temporary Cover Ltd, offers drivers flexible vehicle insurance for short periods of time. In 2010, “Temporary Cover” was rebranded to TEMPCOVER.COM, and the Complainant has operated under the trade mark TEMPCOVER since then. By 2013, the Complainant had sold over 1 million policies in the UK and in 2016 it celebrated its 10th birthday by selling its 2 millionth policy.

The Complainant owns the following trade mark registrations in the UK:

UK trade mark registration no 2515637 for TEMPCOVER.COM registered for insurance services since
December 4, 2009; and

UK trade mark registration no 3399923 for TEMPCOVER (device mark) registered for insurance services since August 16, 2019.

The disputed domain name registered July 23, 2022, points to a site that offers competing short term vehicle insurance services using the mark TEMPCOVER including as part of its masthead. In several places, the Respondent’s site prompts users to insert private personal information. The Respondent attempted to add legitimacy to its site by falsely mentioning the name and address of a third party regulated financial entity in the UK, namely Fast Track Cover Limited, on its site. A second entity, namely Montgomery Kent Insurance Brokers Limited, was also falsely identified as being associated with the disputed domain name on the Respondent’s site. The Financial Conduct Authority (“FCA”) in the UK has identified the entity behind the disputed domain name as a “clone firm” which should not be dealt with.

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 Complainant is the owner of the TEMPCOVER.COM and TEMPCOVER (device) marks registered in the UK as set out above.

The disputed domain name registered in 2022 is confusingly similar to the Complainant’s marks fully incorporating them and adding the descriptive term “now”.

The Respondent is not authorised by the Complainant or commonly known by the disputed domain name and does not have any rights or legitimate interests in the disputed domain name. The disputed domain name points to a site that offers competing services to cause confusion and impersonate the Complainant. The Respondent’s site also takes private personal information from users. This is not a bona fide offering of goods or services or a noncommercial legitimate or fair use. It is registration and use in bad faith confusing Internet users and disrupting the Complainant’s business. The statements of the FCA that the Respondent is a “clone firm” and the attempts by the Respondent to associate itself falsely with other third party insurance and financial companies also demonstrates a lack of legitimate interests and bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent sent an email communication asking how to proceed to close the case.

6. Discussion and Findings

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 entirety of the Complainant’s TEMPCOVER.COM mark and the dominant part of its TEMPCOVER
(device) mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is
confusingly similar to the Complainant’s marks for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms here, “now” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

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 Respondent is not authorised by the Complainant or commonly known by the disputed domain name.
Despite the use of “tempcovernow” on the Respondent’s site there is no evidence corroborating that the
Respondent is commonly known by the disputed domain name and the WhoIs details for the disputed

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domain name do not correspond to that name. The Respondent’s offering of competing services to the

Complainant using signs similar to the Complainant’s marks is confusing.

Additionally, Panels have held that the use of a domain name for illegal activity here, claimed phishing and
impersonation/passing off can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

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 the present case, the Panel notes that the Respondent has offered competing services using similar signs to the Complainant’s mark causing confusion for commercial gain and disrupting the Complainant’s business. The Panel also notes the evidence that the Respondent has falsely sought to associate itself with other third party insurance and financial companies and that the Respondent has been marked as a “clone firm” by the FCA in the UK.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity here, claimed phishing and impersonation/passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel 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 <tempcovernow.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: January 15, 2025