WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aviva Brands Limited v. Domain Administrator, See PrivacyGuardian.org / Domain Admin

Case No. D2018-0632

1. The Parties

The Complainant is Aviva Brands Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Domain Admin of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <avivaquantum.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2018, 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 Complainant on March 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 29, 2018.

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 April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2018.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 1, 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 Complainant is a multinational insurance company headquartered in London, United Kingdom. The Complainant can trace its history back 320 years to 1696 with the establishment of Hand in Hand Fire & Life Insurance Society, London. The Complainant has been officially known as Aviva since 2002.

Aviva provides a wide range of insurance products and services including, life, accident and health, and general insurance along with retirement income planning and asset management services. The Complainant and its 30,000 employees serve 33 million customers across 16 markets in North America, Europe, and Asia.

The Complainant is the owner of trademark registrations across various jurisdictions for the term “Aviva”. The trademark was registered in the United States Patent & Trademark Office (USPTO), the United Kingdom Intellectual Property Office (UKIPO), the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO) for these registrations, which demonstrate that the Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s trademarks.” The trademarks relevant to this instant matter are:

- AVIVA (HKIPO), Registration No. 200211276AA, with a registration date of August 27, 2002;

- AVIVA (UKIPO), Registration No. 2278305B, with a registration date of May 10, 2002;

- AVIVA (UKIPO), Registration No. 2278305C, with a registration date of March 11, 2005;

- AVIVA (UKIPO), Registration No. 2278305D, with a registration date of April 11, 2003;

- AVIVA (USPTO), Registration No. 2773101, with a registration date of October 14, 2003;

- AVIVA (EUIPO), Registration No. 002358133, with a registration date of January 3, 2005;

- AVIVA (WIPO), Registration No. 781157, with a registration date of February 11, 2002.

In addition, the Complainant filed for the trademark application of its AVIVA QUANTUM trademark with the UKIPO on January 23, 2018.

The Disputed Domain Name <avivaquantum.com> was registered on January 23, 2018.

The Disputed Domain Name resolves to a website offering it for sale via NameSilo.

5. Parties’ Contentions

A. Complainant

With respect to identity or confusing similarity the Complainant states that:

- By virtue of its trademark registrations as shown in Annex 1 to the Complaint, the Complainant has the exclusive ownership of and right to use the AVIVA trademark.

- The Disputed Domain Name contains the Complainant’s AVIVA QUANTUM trademark in its entirety.

- On January 23, 2018, the Complainant filed for the trademark application of its AVIVA QUANTUM trademark with the UKIPO and the application was published for opposition on March 2, 2018. Here, there is no denying that the Disputed Domain Name encompasses and captures a complainant’s trademark in its entirety. Thus, the Disputed Domain Name should be considered identical and confusingly similar to the Complainant’s AVIVA QUANTUM trademark.

- Regardless of the Complainant’s AVIVA QUANTUM trademark application, the Disputed Domain Name should still be considered as capturing, in its entirety, the Complainant’s AVIVA trademark and simply adding the descriptive term “quantum” to the end of the trademark. This addition to the Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. It is well established that the addition of other terms to recognizable trademarks is not sufficient to overcome a finding of confusing similarity pursuant to Policy paragraph 4(a)(i).

With respect to legitimate interests the Complainant states that:

- The Respondent is using the Disputed Domain Name to redirect Internet users to a website that resolves to a page that states “avivaquantum.com is for sale!”, and by clicking the “Buy now for $988” link takes an Internet user to another website where the Internet user is able to pay and buy the Disputed Domain Name. These post and link on the website exhibit the Respondent’s willingness to dispose of its rights in the Disputed Domain Name, which strongly suggests that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

- In addition, the Respondent’s name does not bear any resemblance with the Disputed Domain Name, nor is there any basis to conclude that the Respondent is commonly known by the trademark AVIVA QUANTUM.

- The Complainant has not granted any licenses or other rights to the Respondent to use the trademark AVIVA QUANTUM in the Disputed Domain Name or to register any domain name which incorporates the Complainant’s trademark.

- The Respondent registered the Disputed Domain Name on January 23, 2018, which is significantly after the Complainant filed for registration of its AVIVA trademark with the USPTO, UKIPO, EUIPO and WIPO, and also significantly after the Complainant’s first use in commerce of its trademark in 2002.

With respect to bad faith the Complainant states that:

- The Complainant and its AVIVA trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 2002, which is well before the Respondent’s registration of the Disputed Domain Name on January 23, 2018.

- By registering a domain name that incorporates the well-known AVIVA trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its <aviva.com> domain name. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

- The Respondent’s registration of the Disputed Domain Name on the same date the Complainant filed for a trademark application for its AVIVA QUANTUM trademark with the UKIPO strongly suggests that the Respondent knew of the Complainant and only registered the Disputed Domain Name in response to the Complainant’s filing of such trademark application. Previous UDRP panels have held that a respondent’s registration of a domain name prior to the registration of complainant’s trademark based on advance knowledge of a new product or business constitutes opportunistic bad faith registration. The Complainant cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.8.

- The Disputed Domain Name currently resolves to a website which shows that the Disputed Domain Name is being offered for sale at the price of USD 988. This constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Disputed Domain Name for valuable consideration in excess of its out-of-pocket expenses.

- The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use.

- The Respondent even ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.

- On balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the Disputed Domain Name in bad faith.

The Complainant requests the transfer of the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that the Disputed Domain Name should be either cancelled or transferred:

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

(ii) the Respondent has no rights or legitimate interests with respect to 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 Panel finds that the Disputed Domain Name <avivaquantum.com> is confusingly similar to the Complainant’s trademark AVIVA. The Disputed Domain Name wholly incorporates the Complainant’s trademark.

Furthermore, the Disputed Domain Name contains the Complainant’s AVIVA trademark in its entirety; the addition of the term “quantum” does not negate the confusing similarity between the Disputed Domain Name and the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”

The Respondent has not responded to the Complaint and has not put forward any explanation why it would be entitled to register a domain name containing the Complainant’s AVIVA trademark and the term “quantum” which in combination was also filed recently by the Complainant as part of a trademark registration.

The Respondent does not appear to have any registered trademarks or intellectual property rights associated with the “aviva” or “quantum” terms. There is no evidence that it is commonly known by these names and it does not have any consent from the Complainant to use its AVIVA mark.

The Respondent does not appear to have used the Disputed Domain Name for any bona fide offering of services of his own. Currently, the Disputed Domain Name is parked and offered for sale at NameSilo, the Registrar used to register the Disputed Domain Name.

The Respondent does not deny any knowledge of the Complainant and its rights in the AVIVA trademark or the Aviva Company or provide any evidence of intended use in any other capacity than to refer to them.

Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

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 “circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name” (see paragraph 4(b)(i) of the Policy).

The Respondent does not deny that it is or was aware of the Complainant and its rights in the AVIVA trademark and has not provided any evidence of use in any other capacity than to refer to them. The timing of the registration of the Disputed Domain Name <avivaquantum.com>, which was on the same day that the Complainant filed for the trademark application AVIVA QUANTUM suggests opportunistic bad faith.

The Complainant has also produced evidence that the Respondent had included a “domain for sale” sign on the website to which the Disputed Domain Name resolved.

Accordingly, the Panel finds on the balance of probabilities that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant who is the owner of the trademark AVIVA or to a competitor of the Complainant, for valuable consideration in excess of its documented
out-of-pocket costs directly related to the Disputed Domain Name.

The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(i) of the Policy.

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 <avivaquantum.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: May 16, 2018