WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Old Mutual Life Assurance Company (South Africa) Limited, Old Mutual PLC, Old Mutual Investment Advisers, Inc., Old Mutual Life Assurance Company Zimbabwe Limited, South African Mutual Life Assurance Society, Old Mutual Life Assurance Company Kenya, Old Mutual Swaziland (Proprietary) Limited v. Jonson Albert

Case No. D2018-0450

1. The Parties

The 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 of Nairobi, Kenya, Old Mutual Swaziland (Proprietary) Limited of Mbabane, Swaziland, represented by Spoor & Fisher Attorneys, South Africa.

The Respondent is Jonson Albert of Hillmint, Kentucky, United States.

2. The Domain Name and Registrar

The disputed domain name <oldmutuals.org> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2018, 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. In response to a notification by the Center that the Complaint exceeded the 5,000 word limit, the Complainants filed two amended Complaints on March 5, 2018 and March 6, 2018, respectively.

The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.

The Center appointed James Bridgeman as the sole panelist in this matter on April 9, 2018. 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 Complainants are all related entities and form part of the Old Mutual group of companies engaged in the provision of international investment, savings, insurance and banking services since 1845 in South Africa. The group has grown to have more than 18.9 million customers and GBP 168.2 billion assets under management and is listed on the stock exchanges of London, Johannesburg, Zimbabwe, Malawi and Namibia. On July 14, 2005 it was announced that the Complainants had joined the top 300 firms on the Fortune 500 list.

The Complainants are the proprietors of the trademark OLD MUTUAL and various marks incorporating the trademark OLD MUTUAL. The Complainants have specifically provided evidence of the following service mark registrations:

- United Kingdom trademark OLD MUTUAL, registration number UK00002286288 registered on March 21, 2003 for services in class 36 and owned by the first named Complainant;

- Swiss trademark OLD MUTUAL registration number 645989, registered on July 9, 2013 for services in classes 35 and 36 owned by the second named Complainant;

- United States trademark OLD MUTUAL, registration number 2051432, registered on April 8, 1997 for services in international class 36 owned by the third named Complainant,

and have furnished a list of trademark registrations which they claim to hold for the OLD MUTUAL mark for use in connection with the provision of financial services in numerous other jurisdictions across the world including Namibia, India, Ghana, Nigeria, Austria, Colombia, Mexico, Singapore, United Arab Emirates, Uganda, Botswana, Zambia, Zanzibar, United Republic of Tanzania, Mozambique, Angola, Uruguay, Zimbabwe, Kenya, Panama, Burundi, Mauritius, Democratic Republic of the Congo, South Sudan, Tunisia, Egypt, Swaziland, Ethiopia, Sierra Leone, Morocco, the African Intellectual Property Organization (“OAPI”) and Rwanda.

The disputed domain name was registered on January 10, 2018 and resolves to a website that purports to impersonate the second named Complainant as more particularly described below.

The Complainants became aware of the disputed domain name on or about January 15, 2018, which on that date was linked to an active website. In response to a letter of complaint from the Complainants’ attorneys of record, the Internet Service Provider (“ISP”) that hosted the website to which the disputed domain name resolved at that time took down the website on January 22, 2018. On January 25, 2018, the Complainant sent a cease and desist letter to all available contacts of the registrant of the disputed domain name, advising the Respondent of the Complainants’ claimed rights in the OLD MUTUAL trademark and demanding that use of the disputed domain name be discontinued. No response was ever received from the Respondent but on February 15, 2018, investigations revealed that the website linked to the disputed domain name was live again. The Respondent had changed ISPs. In response to a letter from the Complainants’ attorneys posted on the same date the new ISP advised the Complainant that they expected the Respondent’s website linked to be removed within 24 hours and on February 21, 2018, investigations revealed that access to the Respondent’s website had again been suspended, however the website was once again active on February 22, 2018.

The Complainants filed this Complaint requesting a decision that the disputed domain name be transferred to the first Complainant.

5. Parties’ Contentions

A. Complainant

The Complainants request that the disputed domain name be transferred to the first named Complainant and submit that the disputed domain name is identical or confusingly similar to their OLD MUTUAL service mark in which the Complainants have rights established by their ownership of the abovementioned service mark registrations and common law rights established as a result of their long and extensive use of the mark in their financial services business in particular the jurisdictions where they have registered trademarks.

The Complainants submit that the disputed domain name is almost identical and confusingly similar to their OLD MUTUAL service mark, differing only by the inclusion of the letter “s” which by no means serves to distinguish the disputed domain name from the Complainants’ mark.

The Complainants allege that the Respondent has no rights or legitimate interests in respect of the disputed domain name and consequently, the onus rests with the Respondent to show otherwise.

The Complainants submit that the Respondent has no business interest in its registered OLD MUTUAL trademarks; assert that the Respondent has not obtained permission from the Complainants to use them; ask this Panel to note that the Respondent is not commonly known by the disputed domain name and is identified in the WhoIs report as Jonson Albert, with an address in the United States.

The Complainants further submit that the disputed domain name is not utilised by the Respondent in any bona fide offering of goods and services and there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with any such bona fide offering of goods or services. On the contrary, the Complainants submit that the Respondent is using the disputed domain name for illegal and fraudulent purposes.

The Complainants submit that a comparison of the website to which the disputed domain name resolves, with the Complainants’ website at “www.oldmutualplc.com” reveals that the Respondent has substantially reproduced and copied the Complainants’ website and misrepresented itself as the second named Complainant. The website linked to the disputed domain name contains literary, artistic and design elements which collectively constitute the content of the Complainants’ original website content located on its website. The Complainants allege that such a blatant reproduction of the copyrighted content taken from their official website is part of a fraudulent scheme of the Respondent intended to deceive unsuspecting third parties into the belief that the Respondent’s website at “www.oldmutuals.org” is in fact the Complainants’ website.

The Complainants have furnished copies of the respective websites as annexes to this Complaint to illustrate the slavish copying of the elements of the second named Complainant’s website at “www.oldmutalplc.com” by the Respondent.

The Complainants submit that so flagrant is the verbatim copying, which occurred, that the Respondent even refers to the second name Complainant by name viz. “Old Mutual PLC” on the footer of its website; the Complainants’ OLD MUTUAL trademark including a “three anchor” device which the Complainants claim to to own and have registered (but have not provided evidence) is used as part of the header; the Complainants’ board of directors as listed on the Complainants’ website at “www.oldmutualplc.com” are also listed on the Respondent’s website; and the entire bottom part of the Respondent’s homepage is identical to that of the Complainants.

It is the Complainants’ submission that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name but instead the website linked to the disputed domain name is merely a substantial reproduction and flagrant copying of the Complainants’ website at “www.oldmutualplc.com” intending to mislead visitors through fraudulent misrepresentations, seemingly with the sole objective of financial gain.

The Respondent’s website makes provision for a visitor to access a link titled “E-Banking” which redirects users to a webpage which appears to be an online banking page that provides for a “bank account holder’s secure login” and provision is made for an “account number” and “password” to be entered by a user accessing the “EBanking” tab.

The Complainants submit that any of its customers or potential customers will log his/her online banking particulars expecting to be accessing a legitimate account view.

The offending website and domain were clearly created with illegitimate and fraudulent purpose in mind to divert the Complainants’ clients or potential clients for commercial gain.

The Complainants submit that in these circumstances the burden of production shifts to the Respondent citing in support of their submissions the decision of the panel in Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551, where it is stated that in determining the issue of legitimate use by the respondent, the complainant need only to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name.

Alleging that the disputed domain name was registered is being used in bad faith the Complainants argue that there is no conceivable reason for the Respondent to register the disputed domain name, apart from intentionally attempting misleading and defrauding the Complainants’ customers or potential customers and diluting and tarnishing of the Complainants’ trademarks.

The Complainant points out that the disputed domain name was registered only on January 10, 2018, whereas the Complainants have been using the trademark OLD MUTUAL for more than 150 years, with early registrations dating back to 1976 in South Africa.

The Complainants argue that the Respondent’s choice of and registration of the disputed domain name which consists of the Complainants’ OLD MUTUAL mark with one insignificant modification amounts to “typo-squatting” which has been defined in La Touraine, Inc. d/ba Naughty America v. Texas International Property Associates, WIPO Case No. D2010-1502 as arising “when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who make those typographical errors.”

The Complainants also submit that it is clear from the facts alleged above, that the Respondent’s use of the website linked to the disputed domain name is intended to fraudulently attract the Complainants’ customers or potential customers for illegitimate commercial gain. These possible clients will use or wish to use the disputed domain name on the assumption that there is a link between the Complainants and the Respondent, which there clearly is not. The Respondent’s use of the disputed domain name is creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website by the Complainants.

In conclusion the Complainants submit that it is inconceivable that the disputed domain name was chosen other than to cause confusion with the Complainants’ mark and the Respondent is using the disputed domain name in a fraudulent manner to obtain the confidential online banking particulars of clients or possible clients of the Complainants, interested in the services offered by the Complainants under their various registered trademarks.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainants to establish that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the 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.

A. Identical or Confusingly Similar

The Complainants have provided convincing evidence of their rights in the OLD MUTUAL trademark acquired through abovementioned portfolio of registrations and the goodwill acquired through extensive and long use of the mark in connection with the provision of financial services.

The disputed domain name is almost identical to the Complainants’ mark except for the addition of the letter “s”. This minor change is not sufficient to distinguish the disputed domain name from the Complainants’ mark and having compared both, this Panel finds that in the circumstances of the present Complaint the “.org” generic Top-Level Domain name extension may be ignored and that the disputed domain name is confusingly similar to the OLD MUTUAL service mark in which the Complainant has rights.

The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Most importantly the Complainants have produced evidence that the Respondent is using the disputed domain name to resolve to a website which has been created by the Respondent to give the misleading impression that the site is owned and managed by the second named Complainant.

Such use cannot give rise to any rights or legitimate interests in the disputed domain name and it is well established that in such circumstances the burden of production shifts to the Respondent to demonstrate that it has such rights.

The Respondent has not responded or made any submissions and therefore has failed to discharge the burden of production.

It follows that the Complainant has therefore satisfied the second element of the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainants have a strong international reputation in providing international financial services. OLD MUTUAL is a distinctive mark, with no obvious meaning or reference other than as the Complainants’ trademark. Also the Complainants have a long-established and well-known financial services business. It is most improbable therefore that the confusingly similar disputed domain name was registered by coincidence.

On the contrary, the Respondent’s use of the disputed domain name to resolve to a website which presents itself as having a connection with the Complainants’ organization; uses the Complainants’ trademarks and copyright material and information about the corporate governance of the Complainants; and takes predatory advantage of the Complainants’ goodwill in order to attract Internet traffic to its website indicates that the disputed domain name was registered and is being used in bad faith.

Furthermore, and of particular concern, the Respondent’s website has a facility which purports to give an Internet visitor access to a link titled “E-Banking” which redirects users to a webpage which appears to be an online banking page that provides for a “bank account holder’s secure login” and provision is made for an “account number” and “password” to be entered by a user accessing the “EBanking” tab. This Panel finds that this content on the Respondent’s website is evidence that the disputed domain name is intended to be used for phishing to obtain the confidential online banking particulars of clients or possible clients of the Complainants, interested in the services offered by the Complainants under their various registered trademarks.

This Panel also accepts the Complainants’ submissions that the Respondent is engaged in typosquatting as alleged by the Complainants by choosing, registering and using the disputed domain name because it is almost identical to the Complainants’ OLD MUTUAL mark except for the addition of the single letter “s” and likely to confuse Internet users into believing that the website to which the disputed domain name resolves is owned by the Complainants or that there is an association between the Respondent’s website and the Complainants’ group of companies.

In the circumstances this Panel finds that the disputed domain name has been registered and is being used in bad faith. This Panel is further convinced in reaching this decision by the fact that the Respondent has failed to respond to the Complainants’ cease and desist letters; has failed to deliver a Response or otherwise communicate with the Complainants; and has played “cat and mouse” with the Complainants by changing ISPs to avoid the effect of take down decisions as described above.

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. As the Complainants have also succeeded in the third and final element of the test in paragraph 4(a) of the Policy, they are entitled to the relief sought.

7. Decision

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 <oldmutuals.org> be transferred to the first named Complainant, Old Mutual Life Assurance Company (South Africa) Limited.

James Bridgeman
Sole Panelist
Date: April 19, 2018