The Complainants are Old Mutual Life Assurance Company (South Africa) of Cape Town, South Africa and Mutual & Federal Insurance Company Limited of Johannesburg, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Unknown Web Host of Cameroon.
The disputed domain name <federallmutual.com> ("the Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 5, 2015. 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.
The Complainants are members of the Old Mutual Group of companies, an international investment, savings, insurance and banking group, based in South Africa. The Complainants own trade mark registrations in South Africa for, inter alia, MUTUAL & FEDERAL, MUTUAL & FEDERAL PROTECTING WHAT'S IMPORTANT TO YOU. SINCE 1831 & device and OLD MUTUAL for, inter alia, financial services.
The Domain Name was registered in 2015 and linked to a web site which mimics a web site of the Second Complainant and appears to be involved in fraudulent activity.
The Complainants' submissions can be summarized as follows:
The Complainants are members of the Old Mutual Group of companies, an international investment, savings, insurance and banking group, established in 1845 in South Africa with more than 16 Million Customers and GBP 3.8 billion assets under management.
The Complainants own trade mark registrations in South Africa for, inter alia, MUTUAL & FEDERAL, MUTUAL & FEDERAL PROTECTING WHAT'S IMPORTANT TO YOU. SINCE 1831 & device and OLD MUTUAL for, inter alia, financial services.
The Domain Name was registered on June 4, 2015. It incorporates the whole of the Complainants' MUTUAL & FEDERAL trade mark albeit in reverse order and with an extra letter "l" added. The reverse order and the addition of the additional "l" does not serve to distinguish the Domain Name from the Complainants' MUTUAL & FEDERAL mark.
The Domain Name was linked to an active fraudulent web site which is misrepresenting itself as a web site of the Second Complainant. The Domain Name leads to a landing page with the heading "Mutual Africa Protecting what's important to you, since 1831" mimicking the Complainant's trade mark for MUTUAL & FEDERAL PROTECTING WHAT'S IMPORTANT TO YOU. SINCE 1831 & device. The Respondent has substantially reproduced the Complainants' web site and misrepresented itself as the Second Complainant. Most of the time on the web site at the Domain Name, the Respondent has changed the name from "Mutual & Federal" to "Mutual Africa", but the copying is so flagrant that in some instances it has omitted to change the name which still reads as "Mutual & Federal, including in a reference to the directors of the Complainants that are falsely represented as directors of "Mutual Africa". The site seeks to take contact details from customers. The Respondent does not appear to be able to, in fact, offer any of the services offered on its web site. Visitors will expect the same quality of service they would get from the Complainants and if they do not get a response will attribute this to the Complainants. A document called "advance payment guarantee" was received by one of the Complainants' existing clients after it visited the web site at the Domain name. In that document, the Complainants' MUTUAL & FEDERAL letterhead is used but "Mutual Africa" is referred to as the guarantor. It is clear this document would be used to defraud visitors to the web site linked to the Domain Name. All of this is intentional showing the Respondent's fraudulent purpose to divert the Complainants' clients or potential clients to the Domain Name for commercial gain.
The Respondent is not commonly known by the Domain Name. It is not making legitimate noncommercial or fair use of the Domain Name. The Respondent will be unable to demonstrate legitimate rights or interests in the Domain Name or given the fraudulent purposes, use of the Domain Name in connection with the bona fide offering of goods or services. The Respondent has no business interest in the Domain Name and has not obtained permission from the Complainants to use their Mark.
The Respondent intentionally attempted to attract for, commercial gain, Internet Users to the Respondent's web site by creating a likelihood of confusion with the Complainants' mark as to the source, affiliation or endorsement of the Respondent's web site. Internet users are likely to assume that the web site linked to the Domain Name is linked to the Complainant when it is not. The Domain Name is being used to fraudulently obtain contact details. The copying of the Complainants' web site shows the Respondent's actions cannot be in good faith. The "advance payment guarantee" document is a clear example of the extent of the fraud committed by the Respondent. The registration and use of the Domain Name has been done in utmost bad faith and in the furtherance of dishonest activity.
The Respondent did not reply to the Complainants' contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights 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 Complainants have South African trade mark registrations for, inter alia, MUTUAL & FEDERAL, MUTUAL & FEDERAL PROTECTING WHAT'S IMPORTANT TO YOU. SINCE 1831 & device and OLD MUTUAL. The Domain Name is confusingly similar to the Complainants MUTUAL & FEDERAL trade mark, consisting of a reversal of that mark and an extra "l", The addition of an extra "l" is not likely to be noticed and the reversal of the words 'mutual' and 'federal' is likely to cause confusion through imperfect recollection . As such, the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainants have rights for the purpose of the Policy.
The Respondent has not filed a Response. It has no consent from the Complainants, has not used the Domain Name for a bona fide offering of goods or services (given its confusing use of the Domain Name, as discussed below) and is not commonly known by the Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel's discussion below, the Panel finds that the second element of the Policy has been established.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] web site or location."
The Respondent has not provided any explanation why it would be entitled to register a domain name confusingly similar to the Complainants' trade mark. Further, in the opinion of the Panel the use made of the Domain Name is deceptive to collect contact details of customers for likely fraudulent purposes. As such, the Panel finds that the Domain Name has been used in a way likely to confuse Internet users into believing the Domain Name is registered to or connected to the Complainants. The copying of the Second Complainant's web site and exact use of its MUTUAL & FEDERAL trade mark (including in a slogan and header) on the website attached to the Domain Name and in fraudulent documents sent to the Complainants' customers proves that the Respondent is well aware of the Complainants and their business. In the absence of a Response from the Respondent, considering the reputation of the Complainants and the deceptive nature of the web site attached to the Domain Name, the Panel is satisfied that the Complainants have shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet users, for commercial gain, by creating a likelihood of confusion that its web site and its services are connected to the Complainants. As such, the Panel finds that the Domain Name has been registered and is being used in bad faith satisfying the third limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <federallmutual.com>, be transferred to the Second Complainant.
Date: August 19, 2015
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