Tempcover Ltd v Nino Ali

WIPO Case No. D2024-5235

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tempcover Ltd v. Nino Ali

Case No. D2024-5235

1. The Parties

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

The Respondent is Nino Ali, UK.

2. The Domain Name and Registrar

The disputed domain name <tempcoverpolicies.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19,
2024. On December 20, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 21, 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 (Domain Admin Privacy Protect, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 24,
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

January 2, 2025.

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
Complaint, and the proceedings commenced on January 6, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 26, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 27, 2025.

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The Center appointed Catherine Slater as the sole panelist in this matter on February 7, 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 is a company registered in England & Wales. It offers drivers flexible vehicle insurance for
short periods of time. In 2006, it launched as TEMPORARY COVER and in 2012 re-branded to
TEMPCOVER.COM, trading from that point onwards under the trademark TEMPCOVER. By 2013, the

Complainant had sold over 1 million policies in the UK and by 2016 it had sold 2 million policies.

The Complainant owns the following trademark registrations:

-UK Trademark 2515637 for TEMPCOVER.COM registered on December 4, 2009; and
-UK Trademark 3399923 for TEMPCOVER (device mark) registered on August 16, 2019.

The latter registration comprises the word TEMPCOVER in stylized lower-case where the crossbar of the letter “t” is created by a graphical representation of a car viewed from above with two trailing tyre marks which give the impression of movement of the car. The registration is for a series of two in which one representation is greyscale and the other is colour (purple and green). This registration is hereinafter referred to as the “Complainant’s Trademark”.

The Complainant operates its business at “ (the “Complainant’s Website”).

The disputed domain name was registered on May 20, 2024.

At the time of filing this Complaint, the disputed domain name pointed to a website (the “Respondent’s

Website”) that imitated the Complainant’s Website by:

-substantially copying the header and footer of the Complainant’s Website including the use of the
Complainant’s Trademark;
-copying a large graphic representation of a blue car, bushes and a lamp post as well as the prominent
placement of that image on the left hand side of the website;
-copying a large graphic representation of a green pickup truck, bushes and urban background as well as the
prominent placement of that image on the right hand side of the website.

Between the aforementioned images, the Respondent’s Website contains the invitation to “Download Your Documents” and underneath are two buttons labelled “Download Policy” and “Download Certificate”. While this content itself does not mimic that on the Complainant’s Website, the placement of it does such that the overall layout of the websites is the same.

At the date of this Decision, the disputed domain name does not resolve to any 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.

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Notably, the Complainant contends that the disputed domain name is confusingly similar to the which is a word commonly used in the insurance industry to refer to the contract between the insurer and the customer (the policyholder).

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the use of the Complainant’s Trademark is not authorized by the Complainant, 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. Further, the Respondent is attempting to impersonate the Complainant which will lead consumers to believe that the Respondent’s Website is that of the Complainant which use can never confer rights or legitimate interests on the Respondent.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith because the Respondent’s Website impersonates the Complainant’s Website with the aim to deceive consumers into thinking that the disputed domain name is operated by or connected to the Complainant,

there is a risk that the Respondent could associate the disputed domain name with an e-mail address which
could be used as part of a phishing campaign or to distribute malware. The Complainant further contends
that by reason of the Complainant’s significant reputation in the Complainant’s Trademark it is inconceivable
that the Respondent was unaware of the Complainant’s business when registering the disputed domain
name, which awareness is evidenced by the copying of the Complainant’s Website. Finally, the Complainant
contends that the Respondent has intentionally attempted to attract, for commercial gain, internet users to
the Respondent’s Website by creating a likelihood of confusion with the Complainant’s Trademark as to the

source, affiliation, endorsement or control of the disputed domain name.

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 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 Complainant’s Trademark 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 Complainant’s Trademark is a device mark and as such includes design elements that are incapable of representation in the disputed domain name. The Panel finds that those design elements are not dominant within the mark (and do not overtake the textual element) and has disregarded them for the purpose of

assessing confusing similarity. WIPO Overview 3.0, section 1.10.

Although the addition of other terms here, “policies”, 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 mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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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 Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

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.

It is inconceivable that, at the time of registration of the disputed domain name, the Respondent was unaware of the Complainant and/or the Complainant’s Trademark. The knowledge of the Respondent is demonstrated by the fact that after registration, the Respondent pointed the disputed domain name to a website that impersonated the Complainant’s Website. In short, the Respondent targeted the Complainant by registering the disputed domain name for the purpose of impersonating the Complainant which, as discussed below, amounts to “bad faith use”.

The Panel therefore finds that the disputed domain name was registered in bad faith.

Paragraph 4(b)(iv) of the Policy sets out an example circumstance that amounts to use in bad faith as follows:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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.”

The Respondent used the disputed domain name to point to the Respondent’s Website which falsely gave circumstance set out in paragraph 4(b)(iv) of the Policy.

Internet users the impression that it was a website of the Complainant. The panel infers that such use must
be for commercial gain. In so doing, the Respondent used the disputed domain name to intentionally
attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with
the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of its website. The

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The Panel therefore finds that the disputed domain name was used in bad faith.

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 <tempcoverpolicies.com> be transferred to the Complainant.

/Catherine Slater/
Catherine Slater
Sole Panelist
Date: February 20, 2025