WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ActivTrades Plc v. Domains By Proxy LLC, DomainsByProxy.com / Leandro Philipe Araujo, iFlex Tecnologia
Case No. D2017-1754
1. The Parties
Complainant is ActivTrades Plc of London United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “U.K.”), represented by Hiddleston Trade Marks, United Kingdom.
Respondent is Domains By Proxy LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Leandro Philipe Araujo, iFlex Tecnologia of Goias, Brazil, self-represented.
2. The Domain Name and Registrar
The disputed domain name <activtradersozone.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2017. On September 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2017providing 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 September 20, 2017
The Center verified that 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 Complaint, and the proceedings commenced on October 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2017. Apart from the email of September 22, 2017, to which the Center replied on September 26, 2017, no formal Response was filed with the Center.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 13, 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
Complainant is engaged in the provision of financial brokerage services. Complainant operates a website using the domain name <activtrades.com>.
The Complainant is the owner of the following trademark registrations for the mark ACTIVTRADES:
- European Union Trademark Reg. No. 004411815 (registered May 18, 2006).
- International Trademark Reg. No. 1048755 (registered June 23, 2010).
- European Union Trademark Reg. No. 12081071 (registered January 16, 2014).
- U.K. Trademark Reg. No. 3018283 (registered November 15, 2013).
In addition, Complainant is also owner of the Trademark ACTIVTRADER (U.K. Trademark Reg. No. 3184879, registered September 9, 2016).
The disputed domain name was registered on August 1, 2017.
The disputed domain name resolves to a website apparently with identical content to Complainant’s website available at ”www.activtrades.com” but only in Portuguese language, and including name, address and telephone number of Complainant.
5. Parties’ Contentions
With respect to trademark rights, the Complainant contends as follows:
- Complainant has rights in and to the ACTIVTRADES Trademark as a result of the trademark registrations cited above.
- The disputed domain name is confusingly similar to the ACTIVTRADES Trademark because it contains the dominant and distinctive element of the earlier trademark and the term “ozone”.
With respect to rights or legitimate interests, Complainant states the following:
- Respondent has no rights or legitimate interests in respect of the disputed domain name because the disputed domain name post-dates Complainant’s first use and registration of the trademark ACTIVTRADES.
- Respondent’s websites is a copy of the Portuguese version of Complainant’s website at www.activtrades.com.
With respect to bad faith registration and use, Complainant states the following:
- The disputed domain name was registered and is being used in bad faith because, inter alia, Respondent has clearly copied text directly from Complainant’s website at “www.activtrades.com”
- It is clear that Respondent is attempting to trade off the reputation of Complainant in its Trademark and website to lead to confusion to encourage customers to believe that its website is connected with Complainant;
- There is a real risk that customers for the services provided by Complainant may be confused into believing that Respondent’s website is connected with that of Complainant.
Respondent did not reply to Complainant’s contentions. Respondent, Leandro Philipe Araujo sent an email asking if the domain <activtradersozone.com> was involved in any kind of dispute. No further communications were received from Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established their Trademark rights in ACTIVTRADES and ACTIVTRADER as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name <activtradersozone.com> is confusingly similar to Complainant’s Trademark ACTIVTRADES and ACTIVTRADER. The Trademark of Complainant is clearly the dominant element of the disputed domain name.
The Panel has had little difficulty in finding that the domain name is confusingly similar to the Trademark, since there is only one different letter (Trademark ACTIVTRADES vs. domain name “activtraders”). In the case of the Trademark ACTIVTRADERS the disputed domain name is identical to the Trademark of Complainant. The additional term “ozone” does not alter this conclusion.
Therefore, the Panel finds that 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, or 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 mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use the Trademarks. Complainant has prior rights in the trademarks which precede Respondent’s registration of the disputed domain name by several years. Complainant has therefore established a prima facie case that Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption.
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolves to a website that according to the Complaint has identical content to Complainant’s website available at ”www.activtrades.com” in the Portuguese language, including name, address and telephone number of Complainant. There cannot be a legitimate interest to register a domain name identical to Complainant’s Trademark and create a website whose content is identical to that of Complainant.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that Respondent must have been aware of Complainant’s Trademark when it registered the disputed domain name. It is implausible that it was unaware of Complainant when it registered the disputed domain name since it has been demonstrated by the screenshots included in the Complaint that the disputed domain name reproduces in its entirety the content of Complainant’s website. The disputed domain name resolves to a website that also references to the company address and telephone number of Complainant’s office in the United Kingdom.
It is the view of the Panel that this is evidence of bad faith since it means that Respondent knew of the existence of Complainant and its Trademarks (see Molinos Río De La Plata S.A., Molinos IP S.A. v. Ipecsa, WIPO Case No. D2009-1384; Asia Pacific Resources International Holdings Ltd. v. Boeang Maulana, WIPO Case No. D2014-1649; Honda Motor co., Ltd v. Domains By Proxy, LLC, Domains By Proxy, LLC / Antonio rocha jesus, WIPO Case No. D2017-1377, and Honda Motor Co., Ltd. v. Gustavo Henrique Rodrigues Pacheco Caso, WIPO Case No. D2017-1770).
Therefore, the Panel finds that Respondent has intentionally attempted to cause confusion with Complainant’s Trademark by misleading Internet users to believe that its website belongs to or is associated with Complainant. Respondent’s attempt of taking undue advantage of Complainant’s Trademark for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the third condition of paragraph 4(a) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
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 <activtradersozone.com> be transferred to Complainant.
Pablo A. Palazzi
Date: November 27, 2017