WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aviva Brands Limited v. Mark Wright
Case No. D2019-1487
1. The Parties
The Complainant is Aviva Brands Limited, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Mark Wright, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <aviva-ins.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2019, 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 June 28, 2019 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 July 3, 2019.
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 July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on August 8, 2019. 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 wholly owned subsidiary of the Aviva Group, an insurance company with its headquarters in London, United Kingdom. The Aviva Group provides a wide range of insurance products and has 33 million customers in 16 markets across North America, Europe and Asia.
The Complainant has traded as AVIVA since 2002. It owns trade mark registrations for AVIVA in multiple jurisdictions including, by way of example only, European Union Trade Mark, registration no. 002358133, for AVIVA, registered on January 3, 2005 in classes 9, 16, 35, 36, 41 and 42. It also owns a number of AVIVA-related domain names including <aviva.com>, which resolves to its primary website.
The disputed domain name was registered on August 22, 2018. The website to which it resolved has since been taken down, at the instigation of the Complainant. As at May 2019, the Respondent’s website purported to be operated by the Complainant and to promote its services. Amongst other matters, the home page contained the greeting, “Welcome to Aviva”, with a message in smaller font underneath; “We give our 33 million customers the confidence”. The links on the menu bar comprised “Home”, “Insurance” and “Contact” and the menu banner used the same blue and yellow stylization which features on the Complainant’s website. Since the website was taken down, the disputed domain name resolves to an error page indicating that the webpage being looked for does not exist.
The Complainant has produced email evidence which indicates that, in March 2019, a member of the public transacted with the website to which the disputed domain name then resolved, under the impression that it was one of the Complainant’s websites, and, as a consequence, has been the victim of a fraud.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It draws attention to its many trade marks for AVIVA, full details of one of these marks being set out above. When considering whether a domain name is confusingly similar to a complainant’s trade mark, the applicable Top Level Domain (“TLD”) is disregarded as a standard registration requirement. In creating the disputed domain name, the Respondent has incorporated the Complainant’s AVIVA mark and simply added a hyphen and the term “ins”, which is likely to be short for “insurance”. The hyphen does not have any distinguishing effect and the use of “ins” underscores and increases the confusing similarity between the disputed domain name and the Complainant’s trade mark; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name nor has the Complainant licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trade mark. The use to which the Respondent put the disputed domain name was to establish a website, which purported to be authorized and administered by the Complainant, in order to fool unsuspecting users into divulging personal and sensitive information such as usernames and passwords. Such use of the disputed domain name does not constitute either a bona fide offering of goods or services; (see section 2.13.1 of the WIPO Overview 3.0), nor a legitimate noncommercial or fair use of the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Policy provides that bad faith can be established by evidence that demonstrates that a respondent, by using a domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or a product or service on it.
By registering the disputed domain name, which is confusingly similar to the Complainant’s trade mark, the Respondent has shown a knowledge of, and familiarity with, the Complainant’s brand and business. Use of the Complainant’s AVIVA logo and its distinctive yellow trade banner comprise evidence of a direct effort to take advantage of the fame and goodwill that the Complainant has built in its brand by deceiving Internet users into believing that the website was associated with it, in addition to offering what seem to be counterfeit versions of the Complainant’s products. Earlier panels have found that use of a domain name by a respondent in order to confuse Internet users looking for a complainant’s services into thinking that its website was connected with the complainant constitutes bad faith use. See, for example, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306. Moreover, the Respondent registered and used the disputed domain name for the purpose of launching a phishing attack, which is clear evidence of bad faith registration and use; see section 3.1.4 of the WIPO Overview 3.0.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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
The Complainant has provided evidence of its many trade marks for AVIVA, including the specific marks in respect of which details are provided above. These establish its rights in AVIVA.
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. Neither the addition of a hyphen nor the term “ins” have any substantive impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained at section 1.8 of the WIPO 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”.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. If a complainant establishes a prima facie case that a respondent lacks rights or a legitimate interest in a domain name, the burden of production shifts to the respondent.
Dealing with these circumstances in reverse order, paragraph 4(c)((iii) is inapplicable as the use of the disputed domain name is commercial in character. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name and so paragraph 4(c)(ii) is equally inapplicable.
So far as paragraph 4(c)(i) is concerned, it is clear from the evidence that the Respondent has not been using the disputed domain name in connection with a genuine offering of goods and services. During the period whilst the Respondent’s website was active, it masqueraded as being operated by, or on behalf of the Complainant and therefore misled Internet users into believing that the services offered on it were connected with the Complainant. See section 2.13.1 of the WIPO Overview 3.0; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” The disputed domain name does not presently point to an active website; this does not comprise a bona fide offering of goods and services.
The Respondent has not attempted to challenge the Complainant’s assertions. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls squarely within these circumstances in that the website to which it formerly resolved purported to be operated by the Complainant and to offer essentially the same insurance products as the Complainant. The belief of Internet users that they had found one of the Complainant’s websites will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s AVIVA trade mark. The addition of “ins” (which, as the Complainant has said, is likely to be perceived as an abbreviation for “insurance”) is descriptive of the services offered by the Complainant and will not serve to have reduced the false impression of a connection with it. Moreover, the Complainant has produced evidence which indicates that the website to which the disputed domain name resolved was used as part of a fraud upon a member of the public. As explained at section 3.1.4 of the WIPO Overview 3.0; “As noted in section 2.13.1, given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”.
Now that the Respondent’s website has been taken down, the Respondent’s passive holding of the disputed domain name is also in bad faith; see section 3.3 of the WIPO Overview 3.0. In particular, the Respondent has not submitted a response nor provided any evidence of actual or contemplated good faith use, and it is not possible to conceive of a good faith use to which the disputed domain name could be put.
The Panel accordingly finds that 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 <aviva-ins.com> be transferred to the Complainant.
Date: August 22, 2019