WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ares Management LLC v. juandaohanjing (上海锐思人力资源有限公司)

Case No. D2020-3254

1. The Parties

The Complainant is Ares Management LLC, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.

The Respondent is juandaohanjing (上海锐思人力资源有限公司), China.

2. The Domain Name and Registrar

The disputed domain name <ares-shanghai.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2020, 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 December 7, 2020 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 in English on December 8, 2020.

On December 7, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on December 8, 2020. The Respondent did not comment on the language of the proceeding.

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 English and Chinese of the Complaint, and the proceedings commenced on December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 27, 2021. 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 subsidiary of Ares Management, L.P., which is a publicly traded company listed on the New York Stock Exchange, and provides investment and alternative asset management services. The Complainant and its parent company manage over USD 179 billion of assets and employ over 1,400 employees. The Complainant is headquartered in Los Angeles, United States, and has over 25 local offices throughout the world, such as in Europe, Australia and Asia, including particularly an office in Shanghai, China.

The Complainant owns a portfolio of trademark registrations for ARES, for instance Chinese trademark registration number 8537439 registered on September 21, 2011 and United States trademark registration number 3014171 registered on November 8, 2005. The Complainant also owns a portfolio of official domain names, such as <aresmgmt.com> created on March 19, 2002 and <aresmanagement.com> created on December 29, 2011. The relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was created on September 4, 2020. The Complainant submits evidence that the disputed domain name directs to an inactive website.

The Complainant also provides evidence that it first attempted to resolve this dispute amicably through a cease-and-desist letter sent to the Respondent on November 4, 2020 via the contact form link provided in the WhoIs database.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks for ARES, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive, famous and used intensively, and submits a printout of its official website. The Complainant particularly contends that there are no justifications for the use of its trademarks in the disputed domain name, and claims that the Respondent is passively holding the disputed domain name, which does not confer any rights or legitimate interests in respect of the disputed domain name to the Respondent. The Complainant also contends that the non-use of the disputed domain name does not prevent a finding of bad faith, and that the disputed domain name has active mail exchanger (MX) records indicating the possible use for fraudulent email communications by the Respondent, which additionally constitutes use in bad faith of the disputed domain name.

On the basis of the above arguments, 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

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.

The Complainant states that it could not locate the Registration Agreement, and that it therefore submitted the Complaint in English. On December 7, 2020, the Center notified the Parties that the language of the Registration Agreement is Chinese. On December 8, 2020, the Complainant filed the amended Complaint in English, and submitted a request that the language of the proceeding be English.

The Panel has carefully considered all elements of this case in considering this request, and attaches particular relevance to the following elements: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response of the Respondent (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); the fact that the disputed domain name is a combination of the Complainant’s trademark with the word “Shanghai” written in English rather than in Chinese; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays to the proceeding and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove 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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark ARES based on its use and registration of the same as a trademark, incidentally commencing many years prior to the registration of the disputed domain name.

Moreover, as to confusing similarity of the disputed domain name with the Complainant’s trademark, the disputed domain name consists of the combination of two elements, which are the Complainant’s ARES trademark and the geographical location “Shanghai”, connected by a hyphen. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “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 concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its sole distinctive and dominant feature.

Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademark, and the Complainant has satisfied the requirements for the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any Response or evidence in this administrative proceeding.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

Given the reputation and fame of the Complainant’s trademark, the registration of the disputed domain name, which incorporates such trademark in its entirety, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns the trademark ARES and uses it extensively, including in the Respondent’s home jurisdiction China. This finding is reinforced by the fact that the Complainant operates one of its local offices in Shanghai, China and that the registration of the disputed domain name, including the word “Shanghai”, was intended to mislead the Complainant’s customers into thinking that the disputed domain name is linked to the Complainant’s Shanghai office. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

As to use of the disputed domain name in bad faith, the disputed domain name has not been used and links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attaches particular relevance to the following elements: the disputed domain name incorporates the Complainant’s trademark in its entirety, the high degree of distinctiveness and fame of the Complainant’s trademark and the Complainant’s evidence that the MX records for the disputed domain name indicate that the Respondent has connected the disputed domain name to email servers, which creates a grave risk that the Respondent may be using the disputed domain name for misrepresentations and/or phishing and spamming activities (see in this sense also previous UDRP decisions such as Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533). On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <ares-shanghai.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: February 8, 2021