Tempcover Ltd v mujahid ahmed
WIPO Case No. D2024-4539
•23-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Tempcover Ltd v. mujahid ahmed
Case No. D2024-4539
1. The Parties
The Complainant is Tempcover Ltd, United Kingdom (“UK”), represented by AA Thornton IP LLP, UK.
The Respondent is mujahid ahmed, UK.
2. The Domain Name and Registrar
The disputed domain name <secure-tempcover.online> is registered with eNom, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2024. On November 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 November 7, 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 November 8, 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 November 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2024. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on December 9, 2024.
page 2
The Center appointed Ian Blackshaw as the sole panelist in this matter on December 13, 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 is part of the RVU Group of companies, which owns some of the best-known brands in the UK and Europe, including USwitch and Confused.com, and its services are used by millions of people every year to make confident home, insurance and financial services decisions.
One of such brands is Tempcover and the Complainant owns the following trademark registrations for its
TEMPCOVER trademarks (the “Complainant’s Marks”):
- UK Trademark Registration No. UK00003399923 for the mark TEMPCOVER, registered on August 16,
2019, in class 36;
- UK Trademark Registration No. UK00002515637 for the mark TEMPCOVER.COM, registered on
December 4, 2009, in class 36.
Copies of the Complainant’s Registered Marks have been provided to the Panel.
The Complainant’s Marks have been used extensively across the UK for nearly two decades in relation to the offer of short term insurance and as a result of this widespread use, the Complainant’s Marks have acquired a significant reputation amongst the UK public.
The Complainant operates pages on various social media platforms where the Complainant’s Marks feature prominently. The Complainant’s public following on social media demonstrates the exposure of the Complainant’s Marks to consumers in the UK. Screenshots of the various social media pages operated by the Complainant have been provided to the Panel.
The Complainant offers short-term car insurance from its website which can be found at the domain name
<tempcover.com>. A copy of the homepage showing the Complainant’s services being offered for sale has
also been provided to the Panel.
The disputed domain name was registered on August 23, 2024.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights.
The Complainant makes the following assertions.
The disputed domain name consists of the Complainant’s identical trademark TEMPCOVER with the word
“secure”, which is descriptive of a secure online environment. Internet users will understand the disputed
domain name as indicating a place where they can go to purchase securely the Complaint’s services.
It is established in previous UDRP decisions that the addition of descriptive or generic indications to a third party trademark does not avoid the disputed domain name being confusingly similar to the third party trademark. This was found in, amongst others, Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy valeropetroleum.org, WIPO Case No. D2017-0075 and The American
page 3
Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314 theamericanautomobileassociation.xyz and aaaclub.xyz, WIPO Case No. D2016-1671.
It has also been established in previous UDRP decisions that the top level domain is irrelevant to the determination of confusing similarity under the UDRP since the top level domain is a requirement of a domain registration. However, this does not mean that it cannot be found that the choice of top level domain can reinforce the confusing similarity. See Canal + France v. Franck Letourneau, WIPO Case
No. DTV2010-0012. In the present case, the use of the top level domain “online” will be understood by
consumers are merely indicating that the disputed domain name is the online location of the
Complainant’s business.
Therefore, the disputed domain name is confusingly similar to the Complainant’s Marks and paragraph 4(a)(i) of the Policy is satisfied.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
As of October 31, 2024, the disputed domain name resolved to a website (the “Disputed Website”) which displayed the Complaint’s identical TEMPCOVER logo mark at the top of the page and displayed the promotional statement “We are the UK’s largest temporary and short-term insurance provider”. This is a statement which refers to the Complaint’s position in the UK short-term insurance market and is intended to lead consumers into believing that the Disputed Website is the website of the Complainant.
The Disputed Website prompted users to enter personal information, including the Surname of the policy holder, the date of birth of the policy holder and the start date of the policy. A copy of the Disputed Website, as it appeared on October 31, 2024, has been provided to the Panel.
It is noted that, as of the date of submission of this Complaint, the content has been removed and replaced with a note that the website has been suspended. However, the disputed domain name remains in the control of the Respondent and there is nothing to prevent the Respondent putting the Disputed Website back online if it can address the reasons why it has been suspended (which are not given).
The use of the Complainant’s Marks, as seen on the Disputed Website, is not authorized by the Complainant. The use of the Disputed Website, including the use of the Complaint’s logo and statements, which describe the Complainant’s position in the UK short-term insurance market, are all clear evidence that the Respondent knew of the Complainant and the Complainant’s Website when the Respondent applied to register the disputed domain name.
Also, there is no evidence that the Respondent has ever used or made preparations to use the disputed domain name or the name TEMPCOVER in connection with a legitimate business, or that it has otherwise been known by the disputed domain name. Rather, the Respondent is trying to impersonate the Complainant by using the disputed domain name to resolve to a website which uses the Complainant’s Marks and includes promotional statements which will lead consumers into believing that the website is that of the Complainant.
It is also clear that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the reputation that exists in the Complainant’s Marks.
On the basis of the above, the Complainant submits that, on the balance of probabilities, the Respondent does not have a legitimate interest or right in the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
The domain name was registered and is being used in bad faith.
page 4
The activity outlined above, namely the use of the disputed domain name to resolve to the Disputed Website which incorporates the Complainant’s Marks and leads consumers to believe it is the Complaint’s Website, is clearly done intentionally to impersonate the Complainant and to deceive consumers into thinking that the
| Complainant’s Marks on the Disputed Website allegedly to offer services identical to those for which the | disputed domain name is operated by or connected to the Complainant. The use of signs identical to the of Internet users. | |||
| This activity is not a good faith use of the disputed domain name and is very likely to divert actual or prospective customers of the Complainant’s business away. In the event, any loss or harm is suffered by members of the public, through fraudulent activity carried out using the disputed domain name, this is liable to tarnish the reputation that exists in the Complainant’s Marks. This will be disruptive to the business of the Complainant. | ||||
| Furthermore, there is a real risk that the Respondent could associate the disputed domain name with an email address and use that email address to contact members of the public. Any email address associated with the disputed domain name could be used as an instrument of fraud or as part of a phishing campaign. The potential risk of the use of the disputed domain name as part of a phishing campaign is increased by the Disputed Website which asks users to insert personal information relating to their Policy, which can be used to obtain personal information that can be used to give phishing emails an air of authenticity by including genuine information relating to the consumers Policy. In these circumstances, the use of the Complainant’s Marks on the Disputed Website gives the disputed domain name a further air of authenticity and entices consumers to trust the content of emails received from an email address associated with the disputed domain name. | ||||
| Respondent was unaware of the Complainant’s business when registering the disputed domain name. The | ||||
| Given the Complainant’s significant reputation in the Complainant’s Marks, it is inconceivable that the suspended, the passive holding of the disputed domain name amounts to bad faith. It is inconceivable that the Registrant could have any good faith reason to use the disputed domain name, which consists of the Complainant’s Marks with descriptive terms. | ||||
| By using the disputed domain name, the Respondent has, therefore, intentionally attempted to attract, for commercial gain, Internet users to the Disputed Website by creating a likelihood of confusion with the Complainants Marks as to the source, affiliation, endorsement or control of the Disputed Website. | ||||
| The disputed domain name has, therefore, been registered and is being used in bad faith, under paragraph 4(1)(iii) of the Policy. | ||||
| B. Respondent | ||||
| The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. | ||||
| 6. Discussion and Findings | ||||
| To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely: | ||||
| (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and | ||||
|
page 5
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in
the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the
Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064;
and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140.
In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers
and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known and widely used
TEMPCOVER registered trademark and this makes the disputed domain name confusingly similar to the
Complainant’s well-known and widely used TEMPCOVER registered trademark.
The addition of the word “secure” and the “hyphen” to the disputed domain name does not prevent a finding of confusing similarity. See Gannett Co, Inc. v. Henry Chan, WIPO Case No. D2004-0117.
Furthermore, the addition of the gTLD “.online” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s well-known and widely used TEMPCOVER registered trademark; this being a standard registration requirement of domain names. See Blue Sky Softwa re Corp.
v. Digital Sierra Inc., WIPO Case No. D2000-0165.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the has demonstrated, to the satisfaction of the Panel, prior rights in and prior commercial use.
The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
page 6
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the
disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide
offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would reasonably have been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely used TEMPCOVER registered trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely used TEMPCOVER registered trademark, with the additional term “secure” and the most likely intentional selection of the “.online” gTLD, which the Panel also considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known and widely used TEMPCOVER registered trademark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s prior commercial use, without any rights or justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
The second element of the Policy, therefore, has been met.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which
constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
See Nova Banka v. Iris, WIPO Case No. D2003-0366.
page 7
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [its] website or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely used TEMPCOVER registered trademark, is trading unfairly on the Complainant’s valuable goodwill established in such
trademark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the
Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in
fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on
the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case
No. D2004-0649.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, the Respondent appears to have been – or, at
least, should have been – fully aware of the notoriety of the Complainant and its business activity, as well as
its well-known and widely used TEMPCOVER registered trademark and its prior commercial use.
Furthermore, the Panel agrees with the above assertion made by the Complainant that the contents of the Disputed Website, as outlined above by the Complainant, engender a potential risk of the fraudulent activity of phishing, which constitutes bad faith on the part of the Respondent within the context of paragraph 4(b)(iv) of the Policy.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its assertions, as set out above, and also based on the previous UDRP cases cited above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <secure-tempcover.online> be transferred to the Complainant.
/Ian Blackshaw/
Ian Blackshaw
Sole Panelist
Date: December 23, 2024
0
0
0