Complainants are Old Mutual Life Assurance Company (South Africa) Limited of Cape Town, South Africa / Old Mutual PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Old Mutual Investment Advisers, Inc. of Boston, Massachusetts, United States of America (“United States”) / Old Mutual Life Assurance Company Zimbabwe Limited of Harare, Zimbabwe / South African Mutual Life Assurance Society of Cape Town, South Africa / Old Mutual Life Assurance Company Kenya Corner of Nairobi, Kenya / Old Mutual Swaziland (Proprietary) Limited of Mbabane, Swaziland, represented by Spoor & Fisher Attorneys, South Africa.
Respondent is Private Whois, Knock Knock WHOIS Not There, LLC of Beaverton, Oregon, United States / Daria Werbowy of New York, New York, United States.
The disputed domain name <oldmutual-application.com> is registered with Automattic Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2017, 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 and contact information in the Complaint. The Center sent an email communication to Complainants on July 31, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amended Complaint. Complainants filed an amended Complaint on August 1, 2017.
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 Respondent of the amended Complaint, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 25, 2017.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 1, 2017. 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.
Complainants are a part of the Old Mutual group companies, which are engaged in the segment of international investment, savings, insurance and banking group. It was established in 1845 in South Africa and has more than 18.9 million customers. Complainants are currently listed on a number of stock exchanges as Old Mutual, such as London, Zimbabwe and Malawi. Trademarks containing the expression “Old Mutual” are used in connection with a wide range of Complainants’ products and services.
Complainants are holders of numerous registrations worldwide for trademark OLD MUTUAL and multiple trademarks containing this expression in international class 36, such as the United Kingdom Intellectual Property Office registration number 1976/03077, OLD MUTUAL FINANCIAL ADVISORY SERVICE OU MUTUAL FINANSIELE ADVIESDIENS, filed on June 21, 1976 and registered in January 24, 1980 and number 1995/05032, OLD MUTUAL, filed in April 21, 1995 and registered in November 11, 1997.
The disputed domain name was registered on June 5, 2017. The disputed domain name redirects to what appears to be a WordPress.com webpage that states, “oldmutual-application.wordpress.com doesn’t exist”.
Complainants allege to be the holder of numerous trademarks for OLD MUTUAL worldwide. Complainants argue that the disputed domain name <oldmututal-application.com> incorporates the essential and dominant feature of Complainants’ registered trademarks, that being the element “Old Mutual”, which establishes a confusing similarity with it, differing only in the addition of the term “application”. This term, on its turn, does not distinguish the disputed domain name from Complainants’ trademarks, but designates the activities carried out by Complainants, which exacerbates the possibility of confusion between the disputed domain name and Complainants’ trademarks.
Complainants allege that the disputed domain name was being used as part of an “Advance Fee Scam” in which emails are being sent to numerous consumers offering them loans from Old Mutual Finance. Complainants sustain that the disputed domain name <oldmutual-application.com> provides Respondent with an email address that looks like it belongs to Complainants, which it does not.
Moreover, Complainants claim that the domain name is neither being used by Respondent in relation to an active website, nor to designate any of its activities. In addition, Complainants state that Respondent is not commonly known by the disputed domain name and does not offer goods or services under the name “Old Mutual Application”. In this sense, Complainants sustain that Respondent would have no reason to register the disputed domain name other than intentionally misleading Complainants’ customers or potential customers and diluting Complainants’ trademarks.
Besides that, Complainants highlight that when the disputed domain name was registered, on June 5, 2017, Complainants were already owners of the trademark OLD MUTUAL in many countries around the world.
Furthermore, Complainants argue that they have discharged the onus of showing that Respondent has no rights or legitimate interests in the disputed domain name and, as such, the onus rests with Respondent to demonstrate any possible rights or legitimate interests it might have in the disputed domain name.
Lastly, Complainants argue that Respondent has registered and is using the disputed domain name in bad faith falling under the prevision of Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3). That is, Complainants allege that Respondent has registered the disputed domain name as an attempt to attract for commercial gain, Internet users to Respondent’s website, by creating confusion between Complainants’ trademarks and the source of Respondent’s website or of the products and services offered on such website.
Thus, Complainants claim that Respondent’s conduct aims at fraudulently attracting for illegitimate commercial gain customers and potential customers, as these would assume that there is some kind of connection between Complainants and Respondent.
In view of the above, Complainants request the domain name <oldmutual-application.com> to be transferred to Complainant, Old Mutual Life Assurance Company (South Africa) Limited.
Respondent did not reply to Complainants’ contentions.
To succeed, Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainants.
The Panel notes that Complainants are all part of the same group “Old Mutual group companies”, and thus finds that they all have a specific common grievance against Respondent and it is equitable and procedurally efficient to permit the consolidation in this case (see section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Complainants have duly proven the first element under paragraph 4(a) of the Policy is met by evidencing that they own several trademark registrations for OLD MUTUAL worldwide and that such trademark is contained in its entirety in the disputed domain name <oldmutual-application.com>.
The Panel acknowledges that OLD MUTUAL is a widely known trademark and believes the disputed domain name may cause confusion, since its most distinctive feature, the term “Old Mutual”, reproduces Complainants’ trademark in its entirety.
The Panel finds the disputed domain name to be confusingly similar to Complainants’ trademark, since besides using the trademark OLD MUTUAL in its entirely, the term “application” is not capable of distinguishing the disputed domain name from the trademark satisfactorily.
Thus, the Panel finds that the disputed domain name <oldmutual-application.com> is confusingly similar to Complainants’ trademark.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied.
Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[W]here 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The disputed domain name was registered on June 5, 2017, that is, several years after registration of Complainants’ first trademarks. The Panel acknowledges that Complainants’ trademark is widely known, and, as a result thereof, the Panel holds that Respondent must have been aware of Complainants’ trademark at the time of registration.
The Panel finds that Complainants have never entered into any agreement with Respondent nor granted any authorization or license to Respondent regarding the use of Complainants’ trademarks, nor is Respondent affiliated with Complainants’ activities.
Accordingly, Complainants established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainants’ contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel finds it highly unlikely that Respondent had no knowledge of Complainants’ rights to the trademark OLD MUTUAL at the time of registration of the disputed domain name, taking into consideration its protection and activity worldwide; on the contrary, the evidence shows that Respondent was likely deliberately trying to create confusion.
In this connection, the Panel notes that the disputed domain name <oldmutual-application.com> redirects to what appears to be a WordPress.com webpage that states, “oldmutual-application.wordpress.com doesn’t exist”. The disputed domain name appears to be registered for the sole purpose of providing Respondent with the email address “@oldmutual-application.com”, through which Respondent carries out fraudulent activities. That is, Respondent has been using the disputed domain name to offer loans to Complainants’ customers and potential customers under an email address that is confusingly similar to Complainants’ trademark OLD MUTUAL, which is capable of leading them to confusion and undue association. This kind of activity may constitute evidence of bad faith use of the disputed domain name.
Thus, the Panel concludes that Respondent acts in bad faith for the following reasons:
(i) the widespread reputation of Complainants’ products and services makes it highly unlikely that Respondent had no prior knowledge of Complainants’ rights in its registered trademarks at the moment of the domain name registration;
(ii) Respondent’s domain name entirely reproduces Complainants’ word trademark;
(iii) Respondent provides consumers with documents containing Complainants’ logo;
(iv) the disputed domain name is being used for an advance fee scam; and
(v) the disputed domain name misrepresents Complainants and deceive their customers or potential customers by leading them to think that the loans are being offered by Complainants in what appears likely to be an advance fee scam.
Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent opted for the privacy service, preventing others to have access to its real identity, and did not present any response to the Complaint, reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
As such, the Panel finds that Complainants have satisfied paragraph 4(a)(iii) 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 disputed domain name <oldmutual-application.com> be transferred to Complainant, Old Mutual Life Assurance Company (South Africa) Limited.
Gabriel F. Leonardos
Sole Panelist
Date: September 15, 2017