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Swiss Reinsurance Company v. Mr. Henry Tsung [2005] GENDND 34 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swiss Reinsurance Company v. Mr. Henry Tsung

Case No. D2004-0969

1. The Parties

The Complainant is Swiss Reinsurance Company, of Zurich, Switzerland, represented by Meyer Lustenberger, of Switzerland.

The Respondent is Mr. Henry Tsung, of Taipei, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <swisre.com> (the “Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2004. On November 16, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On November 18, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. On November 19, 2004, the Center notified the Complainant that the Complaint was administratively deficient because the Center was in receipt of only three (3) copies of the Complaint without annexes and the original with annexes. The Complainant sent the requested additional copies of annexes to the Center. Afterwards, the Center verified that the Complaint, together with the additional required copies of annexes, now 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 November 26, 2004. In its notification, the Center stated a wrong due date for the Response December 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was actually December 16, 2004. Nonetheless, the Respondent did not submit any response whatsoever. Accordingly, the Center notified the Respondent of his default on January 3, 2005.

The Center appointed Zbyněk Loebl as the Sole Panelist in this matter on January 11, 2005. 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 Panel finds that the Center has duly notified Respondent of the Complaint, pursuant to the Rules, paragraph 2(a), and that the Notification of the Respondent’s Default was also properly executed.

There were no extensions granted or orders issued.

4. Factual Background

The Complainant is Swiss Reinsurance Company, which has been in the reinsurance business since 1863. The Complainant, commonly known as Swiss Re, is one of the world’s largest reinsurers and the world’s largest life and health insurance provider. The Complainant has approximately 8,000 employees worldwide.

The Complainant owns trademarks that both consist only of “SWISS RE” and that incorporate “SWISS RE” Evidence was duly provided supporting this fact, and it is proven that the trademarks have been registered for international class 36, insurance, reinsurance, financial and monetary services, e.g., in the European Union, Japan, Taiwan Province of china, and Switzerland.

The Domain Name registered by the Respondent, differs only in a single letter from the trademark “SWISS RE” owned by the Complainant. The Domain Name uses one “s” instead of two at the end of the first word, i.e., “SWIS”, , which is a simple misspelling of the first part of the Complainant’s trademark “SWISS RE”.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

∙ The Domain Name is confusingly similar to the trademarks incorporating the words SWISS RE and the trademarks consisting only of the words “SWISS RE”. The simple misspelling of the trademark “SWISS RE” cannot result in the Domain Name to which the Respondent has rights and in which it has legitimate interests. Furthermore, the Respondent has registered and used the Domain Name in bad faith.

∙ The trademarks incorporating the words “SWISS RE” and the trademarks consisting only of the words “SWISS RE” are registered in many countries for insurance and financial services. Moreover, the Respondent is known to have registered a number of domain names which are slightly misspelled versions of famous trademarks.

∙ The Respondent registered the Domain Name on February 2, 2004, well after the priority dates established on all the Complainant’s trademarks using “SWISS RE”. The Respondent must have been aware of the Complainant’s trademarks and the reputation associated thereto.

∙ The Complainant sent a demand letter on July 6, 2004, to the Respondent requesting him to voluntarily transfer the ownership of the Domain Name to the Complainant. As of the date of the Complaint, the Complainant did not receive an answer to his request.

∙ The Respondent is an individual named Henry Tsung, not commonly known as “SWISS RE”.

∙ The Respondent is not using the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. In fact, it only drives traffic to his website that redirects traffic to other websites, and the layout of the website under the Domain Name has been designed to look like a legitimate company website. This confuses the visitors to his website all the more since it is not clear as to his association with the Complainant, in regard to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, its location, or of any products or services.

∙ The Respondent is not making any legitimate non-commercial or fair use of the Domain Name. As documented by the Complainant, the Respondent was diverting Internet users for commercial gain derived from the operation of “Sponsored Links” which appeared on his website under the link “Jobs”. It can be assumed that by way of such sponsored links, the Respondent misleads people looking for a job with the Complainant into executing a search for which Respondent gets paid.

∙ The Administrative Panels appointed by the WIPO Arbitration and Mediation Center have already decided against the Respondent in the cases Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 and First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103. Both cases involved very similar factual grounds. In addition, there have been other cases which were decided against the Respondent before the National Arbitration Forum.

B. Respondent

B1. The Respondent has not submitted a response, and therefore he is in default.

B2. Effects of Respondent’s Default

The Respondent was required to respond to the Complaint as filed by the Complainant, according to the Rules, paragraph 5(b)(i). Under the Rules, in particular paragraph 14(a), the Panel “shall proceed to a decision on the complaint”, and under paragraph 14(b), the Panel “shall draw such inferences therefrom as it considers appropriate”.

In this case, the Panel finds that as a result of the Respondent failing to respond to the Complaint of which he was notified, he has thereby failed to rebut any of the factual assertions made by the Complainant and supported by the evidence submitted. However, the Panel has decided not to draw any inferences from the default other than those that have been established or can be inferred from the facts presented by the Complainant.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following points:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) That the Respondent has no legitimate interests in respect to the Domain Name; and

(iii) That the Domain Name has been registered and used in bad faith.

I. Identical or Confusingly Similar Domain Name

The Domain Name is confusingly similar to the Complainants trademarks incorporating “SWISS RE” and the trademarks consisting only of “SWISS RE”.

The registration of confusingly similar domain names by parties unaffiliated with the trademark owner is known as “typosquatting”; see cases Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 and AT&T Corp. v. Global Net 2000, Inc. WIPO Case No. D2000-1447, which deal with the issue of establishing domain names that are confusingly similar to a registered trademark through common misspellings.

The Panel finds that the Domain Name fits the description of a domain name which is confusing similar to a legitimate trademark. This matter is set forth in the Policy, and the burden of proof has been met.

II. Respondent’s Rights or Legitimate Interests in the Domain Name

The Panel has carefully considered the allegation of the Complainant as to the lack of the Respondent’s rights or legitimate interests in the Domain Name. The Panel has not identified anything done by the Respondent that triggered a legitimate interest as required by paragraph 4(c) of the Policy.

In the present proceedings, there are no contentions on record, neither made by the Respondent nor ones on which the Panel could rely, to conclude that the Respondent might have a trademark or other intellectual property rights, or general legitimate interests in the Domain Name.

On the contrary, from the Complainant’s evidence it can be seen that the Domain Name is only being used to “mislead consumers” for commercial gain. While there is no evidence that the Respondent is making any legitimate non-commercial or fair use of the Domain Name, there is evidence that the Respondent misleadingly diverts Internet users for intended commercial gain.

The Complainant has argued that the Respondent has no legitimate interest in the Domain Name, and that he is merely using it in a deliberate attempt to exploit Internet users by means of their typographical mistakes made when searching for the Complainant’s website.

The situation above could only be interpreted as a disrupting and misleading practice resulting from the intent of the Respondent to “drive traffic to its search services”, and which is not “a legitimate use of a domain name”. Please see the cases Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; Alta Vista Company v. O.F.E.Z. et al., WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan, WIPO Case No. D2001-1220; and CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071; which support this conclusion.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect to the Domain Name, according to paragraph 4(a)(ii) of the Policy.

III. Domain Name Registered and Used in Bad Faith

Accordingly, the Panel finds that the disputed Domain Name has been registered and used in bad faith. The Respondent has registered the Domain Name well after the priority dates of all the Complainant’s trademarks incorporating or consisting only of “SWISS RE”. It is unlikely that the Respondent devised “SWISRE”, a misspelling of “SWISS RE”, without bad faith because it is difficult to believe that the Respondent was unaware of the Complainant’s trademarks and his reputation. Moreover, “SWISRE” is not a generic word found in any dictionary.

The Respondent has intentionally attempted to attract for commercial gain Internet users to his website through misleading people, within the meaning described in paragraph 4(b)(iv) of the Policy.

In addition, the present case indicates a pattern of behavior of the Respondent registering domain names comprising trademarks for which he has no rights, and which are efforts to exploit the registration for commercial gain.

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, <swisre.com> be transferred to the Complainant.

Zbyněk Loebl
Sole Panelist

Dated: January 25, 2005