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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aviva Brands Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Luca Dellepiane, Cr

Case No. D2021-1276

1. The Parties

The Complainant is Aviva Brands Limited, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Luca Dellepiane, Cr, Italy.

2. The Domain Name and Registrar

The disputed domain name <aviva-arb.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2021. On April 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2021, 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 28, 2021, 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 30, 2021.

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 April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on May 31, 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 multinational company headquartered in London, United Kingdom. The Complainant provides a wide range of insurance products and services including life, accident and health, general insurance along with retirement income planning and asset management services. The Complainant has over 28,000 employees, serves 31.6 million customers across 16 markets in North America, Europe, and Asia. The Complaint is publicly listed with the London Stock Exchange and New York Stock Exchange.

The Complainant is the exclusive owner of a number of registered trademarks consisting of or including the word “aviva”, including the European trademark registration No. 002358133 for AVIVA, registered on January 3, 2005, the United Kingdom trademark registration No. 2278305B for AVIVA, registered on May 10, 2002 and the International trademark registration No. 781157 for AVIVA registered on February 11, 2002. The Complainant has also registered numerous domain names containing the AVIVA word trademark, including <aviva.com> (registered April 12, 1996) and <aviva.co.uk> (registered September 24, 1999).

The disputed domain name was registered on October 2, 2020. According to the evidence submitted by the Complainant, the disputed domain name resolves to a website providing a trading platform displaying the Complainant’s trademark.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its registered trademark AVIVA, as the disputed domain name captures in its entirety the Complainant’s trademark and simply adds the generic term “arb” which does not negate the confusing similarity. The addition of a hyphen does not distinguish the disputed domain name from the Complainant’s trademark.

About the second element, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent authorization, license, or permission to use the Complainant’s trademarks in any manner, including in domain names. In addition, the Complainant argues that the Respondent is not commonly known by the disputed domain name and that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services. The Complainant alleges that the disputed domain name is used to resolve to a website which provides a trading platform under the name “AVIVA ARB”. The Respondent has intentionally and fraudulently attempted to pass itself off as the Complainant, as in the information found on the website the Respondent is mistakenly claiming to be a member of the Complainant’s group of companies. Also, the Respondent has sent emails from the disputed domain name to numerous people, fraudulently attempting to create an impression that such emails originate from the Complainant, including inciting customers to open a discretionary advisory account in an effort to obtain money from these customers.

With respect to the third element, the Complainant argues that its trademarks AVIVA are known internationally, and the Respondent has registered a domain name that is confusingly similar to the Complainant’s trademarks. The Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademarks and business also by sending fraudulent emails and impersonating the Complainant. The Complainant alleges that the Respondent’s registration of a confusingly similar domain name to redirect Internet users to its own trading website creates a likelihood of confusion between the Complainant’s trademark and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. As further evidence of bad faith registration and use, the Complainant refers to the fact that the Respondent had employed a privacy service to hide its identity.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the AVIVA trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. Here the disputed domain name wholly incorporates the Complainant’s AVIVA trademark in addition to the term “arb” and a hyphen. The trademark AVIVA is fully recognizable within the disputed domain name. The mentioned additions do not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case 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.”

In the present case, the Complainant has established a prima facie case that it holds rights over the trademark AVIVA and claims that the Respondent has no legitimate interests or rights to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name. Rather, according to the unrebutted evidence put forward by the Complainant, the disputed domain name was used for fraudulent activities, and the Respondent has tried to pass off as the Complainant for financial gain by sending fraudulent emails. Such activity cannot confer rights or legitimate interests on a respondent. See section 2.13.1 of the WIPO Overview 3.0.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

According to the unrebutted assertions of the Complainant, its AVIVA trademark was widely used in commerce well before the registration of the disputed domain name in October 2020. The disputed domain name is confusingly similar with the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why it registered the disputed domain name.

As regards the use of the disputed domain name, the Panel finds that, according to the unrebutted evidence submitted by the Complainant, the disputed domain name resolves to a website displaying “AVIVA ARB” with the Complainant’s trademark, offering services in a closely related field as those of the Complainant. The Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain. Given the confusing similarity between the AVIVA trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolved. Presumably, the Respondent intended to benefit from the confusion created. This amounts to use in bad faith.

The Complainant argues that the Respondent is using the disputed domain name to send emails to customers claiming to be a member of the Complainant’s group of companies and inciting them to open advisory accounts to obtain money from these customers. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0).

Moreover, the Complainant’s trademark AVIVA has been extensively used by the Complainant and had significant goodwill and reputation by the time of the registration of the disputed domain name (see e.g. Aviva Brands Limited v. Shen Zhong Chao, WIPO Case No. D2018-2461). The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s well-known trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and used in bad faith.

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 <aviva-arb.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: June 14, 2021

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