WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2018-2449

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 (“United States”) / Shi Lei of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 October 30, 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 November 1, 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 November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 5, 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 AVIVA BRANDS LIMITED, a publicly traded multinational insurance company, which is officially known under this name since 2002 and is headquartered in London, United Kingdom.

The Complainant provides a wide range of insurance products and services and employs 30,000 employees for 33 million customers across 16 markets in North America, Europe, and Asia.

The Complainant is the owner of numerous trademarks registered with Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China (“SAIC”), the United States Patent & Trademarks Office (“USPTO”), the United Kingdom Intellectual Property Office (“UKIPO”), the European Union Intellectual Property Office (“EUIPO”) and the World Intellectual Property Organization (“WIPO”) (thereafter the “AVIVA trademarks”), such as:

-The China trademark AVIVA, no. 6678656 registered on June 7, 2014 in class 36;
-The China trademark AVIVA, no. G781157 filed on August 14, 2002 in class 36;
-The United States trademark AVIVA, no. 2773101 registered on October 14, 2003 in class 36;
-The United Kingdom trademark AVIVA, no. 2278305B registered on May 10, 2002 in classes 16, 36, 42 and 45;
-The United Kingdom trademark AVIVA, no. 2278305C registered on March 11, 2005 in classes 9 and 35;
-The United Kingdom trademark AVIVA, no. 2278305D registered on April 11, 2003 in class 41;
-The European Union trademark AVIVA, no. 002358133 registered on January 3, 2005 in classes 9, 16, 35, 36, 41 and 42;
-The International trademark AVIVA, no. 781157 registered on February 11, 2002 in classes 9, 16, 35, 36, 41 and 42.

The Complainant also registered several domain names among which:

-<aviva.com>, registered on April 13, 1996;
-<avivashareplans.com>, registered on August 18, 2016.

The disputed domain name was registered by the Respondent on September 1, 2018, and resolves to a website with pay-per-click links.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant argues that the disputed domain name is identical or confusingly similar to the AVIVA trademarks, since it strictly reproduces the AVIVA mark in its entirety and simply added to it the descriptive term “share plan”, making the disputed domain name confusingly similar also to its domain name <avivashareplans.com>.

The Complainant underlines that these terms are closely linked to its activities, therefore underscoring and increasing the confusing similarity between the disputed domain name and the AVIVA trademarks.

Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the disputed domain name.

The Complainant also contends that the Respondent is not making a bona fide offering of goods or services that would give rise to rights or legitimate interests in the disputed domain name since the disputed domain name is used to redirect internet users to a website featuring links to third-party websites or links that directly reference the Complainant and its business, presumably leading the Respondent to receive pay-per-click fees from these links.

The Complainant finally underlines that he has never authorized, permitted nor granted a license to the Respondent to register or use the AVIVA trademarks or the disputed domain name.

Thirdly, the Complainant considers that the disputed domain name was registered and is being used in bad faith, since the Respondent knew or should have known of the existence of the AVIVA trademarks at the time of registration, given the fame of the Complainant and the fact that it is a publicly traded company.

Also, according to the Complainant, the use in bad faith of the disputed domain name results from the incorporation in the disputed domain name of the word “aviva”, which is identical to the Complainant trademarks, and of the terms “share plan”, which are related to the Complainant’s business, in order to confuse Internet users looking for the Complainant’s services and at mislead them as to the source of the domain name and website.

The Complainant finally reminds that the Respondent has previously been involved in several cases providing evidence of the pattern of cybersquatting.

On the basis of the above, the Complainant requests the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name,
the Complainant shall prove the following three elements:

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

(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

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the AVIVA trademarks.

Then, the Panel notices that the disputed domain name <avivashareplan.com> is composed of (i) the distinctive element “aviva”, which is the exact reproduction of the AVIVA trademarks, (ii) the terms “share” and “plan”, and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., BNP Paribas v. Ronan Laster., WIPO Case No. D2017-2761; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).

Regarding the disputed domain name <avivashareplan.com>, the Panel finds that the addition of the terms “share” and “plan” to the AVIVA trademark is not sufficient to exclude confusing similarity, all the more that they are related to the Complainant’s activities and that they make the disputed domain name very confusingly similar to the Complainant’s own domain name <avivashareplans.com>.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed, or otherwise authorized by the Complainant to use its AVIVA trademarks, and that the Respondent is not currently and has never been known under the name AVIVA.

For all these reasons, the Complainant has established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, therefore the burden of production has been shifted to the Respondent. However, the Respondent has not provided any response to the Complainant’s contentions. Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

First of all, the Panel finds that the Complainant's trademarks were registered long before the Respondent registered the disputed domain name.

Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant's mark, given the strong reputation of the Complainant, which is a publicly traded company.

Furthermore, the Panel considers it obvious that the Respondent registered the disputed domain name in bad faith, since the added terms “share” and “plan” are closely linked to the Complainant’s business, and since the disputed domain name is almost perfectly identical to the Complainant’s domain name <avivashareplans.com>, having just a single letter less, which is the “s” of “plans”.

Finally, the Panel notice that the Respondent did not answer to the Complainant’s attempts to resolve the dispute outside of the Complaint, and that its involvement in several similar cases supports evidence of the pattern of cybersquatting, which constitute evidence of bad faith registration and use.

Therefore, in view of all the circumstances of this case, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 <avivashareplan.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: December 19, 2018