Swiss Re Ltd v. Feng Wang
Claim Number: FA1112001418374
Complainant is Swiss Re Ltd (“Complainant”), represented by Daniel Greenberg, United Kingdom. Respondent is Feng Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swissre.co>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2011; the National Arbitration Forum received payment on December 5, 2011.
On December 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <swissre.co> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swissre.co. Also on December 6, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <swissre.co> domain name is identical to Complainant’s SWISS RE mark.
2. Respondent does not have any rights or legitimate interests in the <swissre.co> domain name.
3. Respondent registered and used the <swissre.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Swiss RE Ltd., is a large global member of the financial services industry, providing reinsurance in over 25 countries. Complainant owns multiple trademark registrations for the SWISS RE mark with trademark authorities all over the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,015,77 registered November 19, 1996) and the Colombia Industrial Property Office, known as Superintendencia de Industria y Comercio (“SIC”) (Reg. No. 197,013 registered January 31, 1997). Complainant uses the mark as its corporation name and to label and brand its reinsurance products.
Respondent, Feng Wang, registered the disputed domain name on September 30, 2011. The disputed domain name resolves to a website offering links to Complainant’s competitors in the reinsurance field.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established its rights in the SWISS RE mark by registering it with trademark authorities across the globe. Complainant submitted trademark registrations from both the USPTO (Reg. No. 2,015,77 registered November 19, 1996) and SIC (Reg. No. 197,013 registered January 31, 1997) for its SWISS RE mark, verifying that the mark is duly registered and that it is the owner of record. Therefore, the Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i) by registering it with governmental trademark authorities. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also contends that Respondent’s disputed domain name is identical to its SWISS RE mark. The disputed domain name includes the entire mark, while adding the country-code top-level domain (“ccTLD”) “.co” and removing the spaces between terms. The Panel finds that neither of the changes made effectuate any kind of substantive differentiation from the distinctive feature, Complainant’s mark. Therefore, the Panel also finds that Respondent’s <swissre.co> domain name is identical to Complainant’s SWISS RE mark under Policy ¶ 4(a)(i). See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has made a prima facie case against Respondent, indicating that Respondent does not have rights or legitimate interests in the disputed domain name. Because of this finding, Respondent now bears the burden of proving that it does in fact have rights or legitimate interests in the <swissre.co> domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent has failed to file a response in this matter which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will make no such assumptions before examining the entire record in accordance with the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Feng Wang.” Because there is no other evidence on record directly addressing this issue, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and the lack of other evidence on record to support a contrary finding. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the reinsurance industry. Complainant provides a screenshot of the website to verify this use. Respondent presumably collects click-through fees for each Internet user diverted to one of the linked sites. Previous panels have determined that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant argues that Respondent’s disputed domain name disrupts its business by offering links to its competitors. Respondent’s disputed domain name resolves to a website offering links to third-party websites. Complainant contends that many of these linked sites compete with it in the reinsurance and insurance industry. Internet users may arrive at the website and then click-through to one of linked sites. Once there, Internet users may engage the services of Complainant’s competitor rather than Complainant. The Panel finds that this use clearly disrupts Complainant’s business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also argues that Respondent registered and is using the disputed domain name for its own commercial gain constituting bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the reinsurance industry. Respondent presumably collects a small fee each time an Internet user is diverted to one of the linked sites. The Panel finds that Respondent registered and is using the disputed domain name for a commercial purpose and is attempting to gain from the confusion created by the identical domain name. Therefore, Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swissre.co> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 19, 2012
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