Decisión del Panel Administrativo nº D2016-2607 of Tribunal Arbitral de la OMPI, February 16, 2017 (case 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. OLDMUTUAL FINANCE / Registration Private, Domains By Proxy, LLC)
|Actor:||Old Mutual Investment Advisers, Inc. Old Mutual Life Assurance Company Kenya Old Mutual Life Assurance Company (South Africa) Limited Old Mutual Life Assurance Company Zimbabwe Limited Old Mutual PLC Old Mutual Swaziland (Proprietary) Limited South African Mutual Life Assurance Society|
|Defense:||OLDMUTUAL FINANCE / Registration Private, Domains By Proxy, LLC|
|Resolution Date:||February 16, 2017|
|Issuing Organization:||Tribunal Arbitral de la OMPI|
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; Old Mutual Investment Advisers, Inc. of Boston, Massachusetts, United States of America; 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; and Old Mutual Swaziland (Proprietary) Limited of Mbabane, Swaziland, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is OLDMUTUAL FINANCE of Johannesburg, South Africa / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
The disputed domain name [oldmutual-finance.com] is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2016, 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 the Complainants on January 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 6, 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 the Respondent of the Complaint, and the proceedings commenced on January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2017.
The Center appointed Archibald Findlay S.C. as the sole panelist in this matter on February 9, 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.
The seven Complainants are all related entities and form part of the Old Mutual Group of companies (the “Group”) internationally. The Group carries on the business of international investments, savings, insurance and banking and was established in South Africa in 1845. The Group has more than 18.9 million customers and assets of GBP 168.2 billion under its management. The Complainants are listed on the London, Johannesburg, Zimbabwe, Malawi and Namibian stock exchanges as Old Mutual and information in respect of its activities can be accessed from its websites online, notably “www.oldmutualfinance.co.za”. The Group has registered trademarks in many countries around the world and has put up schedules detailing a selection of them. The first of these refers to some 24 countries in which they held registration, most of which are in the name of the Second Complainant and the schedule sets out details thereof.
The Complainants have put up a further schedule of 172 trademarks also registered to various of them and other companies (who are not Complainants) in the Group. It is significant that the earliest of the registered OLD MUTUAL trademarks set out in the various annexures appears to be trademark number 1976/03077 which is registered in the name of the First Complainant with effect from January 24, 1980. The First Complainant also has several other registered trademarks.
The schedules also reflect a large number of trademarks registered in different countries thereafter in the name of the Second Complainant. Further trademarks registered also thereafter in the name of the First, Second, Third, Fifth and Seventh Complainants specifically. Among the trademarks put up are all either a wordmark OLD MUTUAL or a wordmark containing the words “old mutual” and describing a specific service in one of the businesses.
The schedules show that most, if not almost all, of the trademarks registered in foreign countries (i.e. not South Africa) have been registered in the name of the Second Complainant.
The Third Complainant is the registered owner of the Old Mutual trademark number 2051432 having been registered on April 8, 1997 in the United States of America.
The Fifth Complainant is the registered owner of the Namibian OLD MUTUAL trademark number 97/0676.
The Seventh Complainant is the registered owner of the OLD MUTUAL trademark in Swaziland, number 193/2015.
The trademarks set out in the schedules registered in the names of these Complainants are valid and operative. Although the Complaint does not mention the trademark holding of the Fourth and Sixth Complainants, Kenya and Zimbabwe are listed as being two of the 37 countries in which OLD MUTUAL trademarks are held.
The disputed domain name was registered on September 15, 2016. The Respondent was using the disputed domain name as part of a scam for its own commercial gain. The disputed domain name currently resolves to the website “www.wordpress.com”.
The Complainants contend that they became aware of the disputed domain name during October 2016 and that once it was...
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