Schweizerische Rückversicherungs-Gesellschaft v. Texas International Property Associates - NA NA
Case No. D2007-1455
1. The Parties
The Complainant is Schweizerische Rückversicherungs-Gesellschaft, Zurich, Switzerland, represented by Meyer Lustenberger, Switzerland.
The Respondent is Texas International Property Associates Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <swisssre.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 4, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Domain Name at issue. On October 4, 2007, Compana LLC transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2007. The Response was filed with the Center on October 30, 2007.
On October 31, 2007 the Center sent an email communication to the Parties inquiring whether they wished to consider attempting to negotiate a settlement of the matter since the Respondent in its response had seemingly expressed interest in transferring the Domain Name to the Complainant.
On November 8, 2007 the Complainant made a request to the Center for the suspension of the proceedings for a period of 10 (ten) days to facilitate the transfer of the Domain Name. The Center on the same date confirmed that the administrative proceeding had been suspended until November 18, 2007.
On November 19, 2007 the Center sent an email communication reminding the Parties that the Center was scheduled to terminate the proceedings after the expiry of the suspension period, unless a signed request from the Complainant was received to reinstitute the proceedings.
On November 20, 2007 the Complainant made a request for the reinstitution of the proceedings citing the Respondent’s failure to transfer the Domain Name during the suspension period. Accordingly the administrative proceeding was reinstituted on November 20, 2007.
The Center appointed Teruo Doi as the sole panelist in this matter on November 29, 2007. 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 facts stated in the Complaint are as follows:
(1) The Complainant is the holder of the rights in the trademarks SWISS RE and SWISS RE GROUP. The Complainant is also the holder of several trademark registrations including the followings:
- SWISS RE: IR 624 637; CH P-411 846; US 2 016 777;
- SWISS RE (fig.): IR 623.333; CH P-411 129; US 2 134 733;
- SWISS RE GROUP: IR 624 633; CH P-411 842; US 2 014 747;
- SWISS RE GROUP (fig.): IR 623 327; CH P-411 123.
All the trademarks listed above are claiming protection for insurance services, financial services, and real estate services, (Complaint, Annex 5: Extracts of trademark databases of WIPO, USPTO and Swiss Federal Institute of Intellectual Property)
The Complainant is also the holder of the domain name <swissre.com>, (Complaint, Annex 6: Printout of “www.networksolutions.com”)
(2) The Respondent is the registrant of the Domain Name at issue, <swisssre.com>.
5. Parties’ Contentions
A. Complainant
On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name at issue, <swisssre.com>, be transferred to the Complainant in accordance with Paragraph 4 (a) of the Policy, on the following grounds:
(1) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:The Complainant holds the rights in the trademarks SWISS RE and SWISS RE GROUP and is the holder of trademark registrations for such trademarks for insurance, financial and real estate services. The Complainant sufficiently establishes its rights in the trademark SWISS RE and the domain name <swissre.com>.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name:The Respondent has not been commonly known by the domain name; on the contrary, the Complainant is very well-known under the trademark
SWISS RE and the domain name <swissre.com> of which the disputed Domain Name <swisssre.com> is a mere misspelling. The Respondent has no connection to the reinsurance industry in Switzerland and therefore no interest in a domain name implementing “Swiss” and “Re”. The Respondent is making no legitimate non-commercial or fair use of the Domain Name, but is rather offering counterfeited goods on the web page and providing links to various web pages and by doing so misleading and diverting consumers and tarnishing the Complainant’s trademarks and reputation.
(3) The Domain Name at issue was registered and is being used in bad faith:The Domain Name at issue is capable of creating a likelihood of confusion as to source, sponsorship, and affiliation with the Complainant’s trademark
SWISS RE. The Respondent is commercially benefiting from the hyperlinks displayed on the websites that resolve from the disputed Domain Name and as such evidences bad faith registration and use. The Respondent is providing a parking site under the Domain Name <swisssre.com> on which links to other sites are organized and indexed. These links usually operate on a ‘pay-per-click’ basis with registrants and parking services sharing revenue generated by web traffic. Thus, the Respondent is seeking commercial gain out of the Domain Name registration by using the good reputation of the Complainant. The Respondent’s registration of the disputed Domain Name is the typo squatted version of the Complainant’s trademark and Domain Name. The Respondent has faced several similar claims and seems to have quite a history as cyber squatter and typo squatter (Complaint, Annex 7: Printouts of decision involving the Respondent).
B. Respondent
The Respondent states, in its Response, consent to transfer the disputed Domain Name and contends as follows:
(1) Had the Complainant contacted the Respondent prior to the institution of this proceeding, the Respondent would have transferred the Domain Name to the Complainant and the Complainant could have saved itself USD 1,500. As such, the Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4 (a) of the Policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
(2) In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (January 5, 2006), the Panel noted that, where the Respondent has made an offer to transfer, there were numerous ways the Panel could proceed:
(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see, Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195);
(ii) to find that consent to transfer means that the three elements of Paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi carbons AB, WIPO Case No. D2000-1398); and
(iii) to proceed to consider whether on the evidence the three elements of Paragraph 4 (a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFRv. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745).
The Respondent further submits that the Panel, conscious of Rules, paragraph 10 (c)’s caution for “due expedition” decided that the best and most expeditious course was that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order [sic]for transfer without consideration of the Paragraph 4 (a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to Paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course”. (citing from Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207 WIPO May 3, 2000).
(3) For the foregoing reasons, the Respondent requests that the Panel order the immediate transfer of the disputed Domain Name.
6. Discussion and Findings
Paragraph (4) of the Policy requires the Complainant to prove that each of the following elements is present:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no right or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel notes that the Respondent filed a Response stating, without trying to rebut the Complainant’s assertions, its willingness to transfer the Domain Name to the Complainant if the Panel orders to do so, but it states further that this is not an admission of the three elements listed in Paragraph (4) of the Policy, rather it is an offer of “unilateral consent to transfer”. Thus, the Panel finds that there is nothing in the Response to affect the Complainant’s claims and believes that the most appropriate course in this case is to proceed to a consideration to the three elements of the Policy.
A. Identical or Confusingly Similar
Although the Domain Name in dispute <swisssre.com> is not exactly identical to the Complainant’s trademarks SWISS RE and SWISS RE GROUP, it does entirely incorporate the SWISS RE mark, the only difference being the insertion of the letter “s” between “swiss” and “re” to create a single word “swisssre” which is nearly identical to the Complainant’s trademarks SWISS RE and SWISS RE GROUP. It is well established that the Complainant is the holder of trademark rights in SWISS RE and SWISS RE GROUP registered for insurance, financial and real estate services in Switzerland and other countries, (Complaint, Annex 5) The Complainant also holds the domain name <swissre.com>, (Complaint, Annex 6).
The Panel finds for the Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
While the Complainant is well-known under the trademark SWISS RE and its domain name <swissre.com>, the Respondent is not commonly known by the disputed Domain Name <swisssre.com> which is a mere misspelling by inserting another “s” between “swiss” and “re”. The Respondent has no apparent connection to the reinsurance industry in Switzerland and, therefore, it has no interest in a domain name consisting of the words “Swiss” and “Re”. There is no proof to show that the Respondent is making any legitimate non-commercial or fair use of the disputed Domain Name. The Panel finds for the Complainant under the second element.
C. Registered and Used in Bad Faith
The Respondent in its Response does not rebut the Complainant’s assertion of bad faith on the part of the Respondent in the registration and use of the disputed Domain Name. At the end of paragraph [11] of the Complaint, it is indicated that the Respondent has faced several similar claims and seems to have quite a history as cyber squatter and typo squatter. (Complaint, Annex 7) The Complaint is accompanied by hard copies of WIPO administrative panel decisions ordering the same Respondent to transfer the disputed domain name to the respective complainant: American Funds Distributors Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0994; Tullett Prebon Group Limited v. Texas International Property Associates,
WIPO Case No. D2007-0828; The Southern Company v. Texas International Property Associates,
WIPO Case No. D2007-0773; American Automobile Association, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0592; Fifth Third Bancorp v. Texas International Property Associates,
WIPO Case No. D2007-0537; Vitalife, Inc. dba Tabak’s Health Products v. Texas International Property Associates,
WIPO Case No. D2007-0507; Rockstar Games v. Texas International Property Associates,
WIPO Case No. D2007-0501; SurePayroll, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0464; Sports Holdings Inc. v. “Texas International Property Associates”/ “Sports Holdings Inc.”,
WIPO Case No. D2007-0430; The Benevolink Corporation v. Texas International Property Associates,
WIPO Case No. D2007-0404; Fry’s Electronics Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0343; Associated Bank Corp. v. Texas International Property Associates,
WIPO Case No. D2007-0334; Barry D. Sears, Ph.D. v. Texas International Property Associates,
WIPO Case No. D2007-0284; Amgen Inc. v Texas International Property Associates,
WIPO Case No. D2007-0155.
The nearly identical (and clearly confusingly similar) disputed Domain Name resolves to ‘pay-per-click’ landing page from which revenue is presumably derived; the intention is evidently to free-ride on the fame of the
SWISS RE mark (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,
WIPO Case No. D2007-1141). The Panel in the circumstances has little hesitation in concluding that the disputed Domain Name was on balance registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <swisssre.com> be transferred to the Complainant.
Teruo Doi Sole Panelist
Dated: December 13, 2007
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