WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aviva Brands Limited v. Deng Guo Sen / Nexperian Holding Limited
Case No. D2017-0730
1. The Parties
The Complainant is Aviva Brands Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Deng Guo Sen of Hangzhou, Zhejiang, China / Nexperian Holding Limited of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <avivacanad.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 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 the Complainant on April 19, 2017, 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 April 21, 2017.
On April 19, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On April 21, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on May 23, 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.
4. Factual Background
The Complainant is the owner of trade mark registrations for AVIVA in many jurisdictions, including in China, Canada, the UK, the European Union, and the United States of America ("US") (see, e.g., US trade mark Registration Number 2,773,101, AVIVA, registered on October 14, 2003). The Complainant is a British multinational insurance company headquartered in London, UK, with a history dating back to 1696. The Complainant came to be officially known as Aviva since 2002. The Complainant has 29,600 employees, serving 33 million customers across 16 markets in the UK, Europe, Asia and Canada. It is a publicly-traded company and is, in the UK, among the largest general insurers and a leading life and pensions provider. In Canada, the Complainant is one of the largest general insurers, with more than 3,000 employees, 25 locations and 1,500 independent insurance broker partners.
The Complainant maintains a strong Internet presence through various websites including "www.avivacanada.com" and "www.aviva.co.uk". In their respective countries, these two domain names rank 11,830th and 1,203rd, respectively. The "www.avivacanada.com" website received 59,000 visits in the six-month period, August 2016-January 2017.
The disputed domain name was registered on August 23, 2016, and redirects Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant's business, e.g., in the area of home and auto insurance.
5. Parties' Contentions
The Complainant contends, firstly, that the disputed domain name is identical or confusingly similar to the Complainant's trade mark. When comparing the disputed domain name to the Complainant's trade marks, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the Complainant's trade marks.
The disputed domain name incorporates the AVIVA trade mark in its entirety while merely adding a mis‑spelled version of the geographically descriptive term, "Canada". The disputed domain name is thus rendered confusingly similar to the AVIVA trade mark and the Complainant's domain name <avivacanada.com>. The addition of a geographic term or place name does not alter the underlying trade mark or negate the confusing similarity.
The use of the geographically descriptive term in conjunction with the AVIVA trade mark belonging to the Complainant only serves to underscore the confusing similarity between the disputed domain name and the Complainant's trade mark.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated by the Complainant; the Respondent is not permitted by the Complainant to use the AVIVA trade mark in any manner; the Respondent is not commonly known by the disputed domain name. Presumably, the Respondent receives pay-per-click fees from the linked websites. The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, nor is there evidence of noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy. The disputed domain name was registered long after the Complainant applied for registration of its AVIVA trade mark in China, the UK, the European Union, and the US, and long after the Complainant commenced use of the AVIVA trade mark. The disputed domain name was also registered long after the <avivacanada.com> and <aviva.co.uk> domain names were registered (i.e., February 11, 2002, and September 24, 1999, respectively).
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant and its AVIVA trade mark are known internationally, with trademark registrations across numerous countries; the Complainant has marketed and sold its goods and services using the AVIVA trade mark since 2002, which is well before Respondent's registration of the disputed domain name on August 23, 2016; at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's AVIVA trade marks and that the registration of a domain name containing the well-known AVIVA trademark constitutes bad faith per se. In China, where the Respondent resides, the Complainant has a 50 percent joint venture with Cofco Ltd to provide savings, protection, healthcare and retirement products, which demonstrates the Complainant's fame. Performing searches across a number of Internet search engines for "aviva canad" and "aviva cofco tpa" returns multiple links referencing the Complainant and its business. The Respondent should be considered as possessing actual notice and knowledge of the Complainant's AVIVA mark, and thus having registered the disputed domain name in bad faith, since the Complainant's AVIVA mark is well known and the circumstances support such a finding.
Typosquatting is also evidence of bad faith registration and use. The disputed domain name is a mis-spelling of the Complainant's <avivacanada.com> domain name. The Respondent is attempting to capitalize on typing errors committed by the Complainant's customers when trying to locate the Complainant on the Internet.
The Respondent has sought to create a likelihood of confusion with the Complainant and its AVIVA trade mark by registering a domain name that incorporates the Complainant's AVIVA trade mark in its entirety while adding a mis-spelled version of the term "Canada". The disputed domain name is also confusingly similar to the Complainant's <avivacanada.com> domain name which the Complainant has owned continuously since 2002. The Respondent is therefore using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant's services, and to mislead Internet users as to the source of the disputed domain name and corresponding website. The Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant's trade mark in order to increase traffic to its website for the Respondent's own pecuniary gain.
The Respondent also holds registrations for several other domain names that misappropriate the trade marks of well-known brands and businesses (<apple-corp.com>, <siemenssoftware.com>, <toyotapartsco.com>, <google-i.com> and <bmwremotekey.com>). This demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the disputed domain name. The Respondent did not respond to the Complainant's cease and desist letters, which were sent three times in January 2017.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese whereas the Complaint was filed in English. The Complainant requested that English apply as the language of the proceeding as it is unable to communicate in Chinese and a translation of the Complaint into Chinese would unfairly disadvantage and burden the Complainant and delay the proceeding. Further, the disputed domain name comprises Latin characters and the website, to which the disputed domain name resolves, is in English. The links which appear on the website include "Car Insurance Canada", "Cheap Auto Insurance" and "Home Insurance Quotes Online". The term "aviva" does not carry any specific meaning in the Chinese language.
The Respondent had ample opportunity to respond to the Complainant's cease and desist letters and request that communications continue in Chinese, but did not do so.
The Rules provide that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding" (paragraph 11(a)).
Paragraph 10(c) of the Rules stipulates that "The Panel shall ensure that the administrative proceeding takes place with due expedition."
Whilst the said language requirement is provided by the Rules, the Panel has to bear in mind the prescribed mandate to ensure that the proceeding takes place with due expedition.
The Respondent was given a fair opportunity to respond on the issue of the language of the proceeding since all communications from the Center were sent in both Chinese and English. If the Respondent had difficulty communicating in English, it could have opted to respond to the Complaint in Chinese or at least requested that Chinese be the language of the proceeding. The Panel believes that the Respondent would not be prejudiced if English were to be adopted as the language of the proceeding. The Panel finds it appropriate for English to be the language of the proceeding since the disputed domain name comprises letters from the Latin alphabet, the website associated with the disputed domain name is in English, and the Respondent is associated with a number of other domain names which comprise English terms (e.g., "software", "remote key" and "parts"). The Respondent has not at any time indicated it is unable to understand English whereas on the face of it, the Respondent appears to have a level of familiarity with English. To require the Complainant to translate the Complainant and evidence into Chinese would delay the proceeding.
The Panel therefore determines that English should be the language of the proceeding in this case.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark AVIVA by virtue of its trade mark registrations and established prior use.
The next question to be addressed is whether the addition of the element "canad" serves to remove the confusing similarity with the Complainant's AVIVA trade mark. The Panel is of the view that it does not. The AVIVA mark is recognizable within the disputed domain name. The element "canad" is reasonably understood and/or presumed to be a mis-spelling of "Canada", which is a geographical location. Such a term does not serve to remove the confusing similarity between the disputed domain name and the AVIVA trade mark. See paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"): "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark AVIVA and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
The Panel further finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is sponsored by or affiliated with the Complainant or that it is permitted by the Complainant to use the AVIVA trade mark in any manner. Nor is there evidence that the Respondent is commonly known by the disputed domain name. The Respondent's use of the Complainant's trade mark in the disputed domain name to resolve to a parking page with pay-per-click links does not amount to a legitimate noncommercial or fair use, nor a bona fide offering of goods or services.
The Respondent did not refute the Complainant's case with evidence, nor did it respond to the Complainant's cease and desist letters. The Respondent did not disclaim awareness of the Complainant and its rights in the AVIVA trade mark. Bearing in mind the long prior use and reputation of the Complainant's AVIVA trade mark, it is indeed highly unlikely that the Respondent independently and by pure chance chose to register the disputed domain name. It is difficult to conceive of a reasonable and logical connection between the Respondent (being Chinese) and the term "aviva" which has no apparent meaning in English and may otherwise be a female given name.
The Panel concludes, in the circumstances, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the reasons mentioned above, the Panel also concludes that the Respondent registered and has used the disputed domain name in bad faith. The Respondent must have been aware of the Complainant and its trade mark rights in AVIVA. The Panel infers that the Respondent registered the disputed domain name with the intention to exploit the goodwill and reputation of the Complainant and of its AVIVA trade mark for monetary gain. A presumption of bad faith registration and use can be drawn where the domain name in dispute is identical or confusingly similar to a well-known trade mark and the respondent is an unaffiliated entity. (See paragraph 3.1.4 of the WIPO Jurisprudential Overview 3.0.) The Respondent's use of the disputed domain name in connection with a parking page displaying pay-per-click links further supports a finding of bad faith in the present case.
The evidence the Complainant submitted of the other domain names registered by the Respondent which incorporate well-known brands is further indicative of bad faith registration and use of the disputed domain name. (See paragraph 3.1.2 of the WIPO Jurisprudential Overview 3.0: "A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.")
The requirements of paragraph 4(a)(iii) of the Policy have therefore been satisfied.
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 <avivacanad.com> be transferred to the Complainant.
Date: May 30, 2017