WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ares Management LLC v. Contact Privacy Inc. Customer 0160089543 / Aspida Pots, aspida
Case No. D2021-1604
1. The Parties
The Complainant is Ares Management LLC, United States of America (“United States” or “U.S.”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Contact Privacy Inc. Customer 0160089543, Canada / Aspida Pots, aspida, Canada.
2. The Domain Name and Registrar
The disputed domain name <aspiida.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Upon receipt of the Complainant’s extension request dated May 28, 2021, the Center confirmed on May 31, 2021 that the due date for the Complainant to submit any amendment to the Complaint has been extended to June 9, 2021. The Complainant filed an amended Complaint on June 9, 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 June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 6, 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 publicly traded, global alternative asset manager with approximately USD 207 billion of assets under management and approximately 1,450 employees. The Complainant has offices across the United States, Europe, Asia, and Australia. In July 2019, the Complainant launched Aspida Financial, a subsidiary of the Complainant, and has continuously used its ASPIDA mark since July 2019 in connection with a variety of insurance and financial services, such as insurance consultation and underwriting services and investment management.
The Complainant owns several trademarks incorporating the word “Aspida”, such as U.S. Registration No. 5972629 for ASPIDA, registered on January 28, 2020. In addition to its U.S. trademark, the Complainant has registered trademarks in many other countries, including Australia, China, Switzerland, and the European Union.
The Complainant owns the domain name <aspida.com>. The Complainant uses the ASPIDA mark in its advertising and promotional materials and on the Complainant’s websites at “www.aspida.com” and “www.aresmgmt.com”.
The Domain Name was registered on November 26, 2020. At the time of filing the Complaint, the Domain Name resolved to an inactive error web page stating “403 Forbidden”.
5. Parties’ Contentions
The Complainant argues that it has registered trademark rights and common law rights in ASPIDA, and that the Domain Name is almost identical to the Complainant’s trademark, only adding a typo consisting of the repeated letter “i”. The mere addition of the letter “i” does not avoid confusing similarity with the Complainant’s trademark.
The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant argues that the Respondent cannot establish rights in the Domain Name, as the Respondent has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the Domain Name. On the contrary, the Complainant documents that the Respondent has provided a false name and address in the registration of the Domain Name. There are no records of any person or business by the name “Aspida” (or “Aspiida”) at the Respondent’s purported address shown in the registration information.
Finally, the Complainant submits that it is evident that the Respondent knew of the Complainant and its trademark when the Respondent registered the Domain Name. The Domain Name is a confusingly similar mistype of the Complainant’s ASPIDA trademark, and the ASPIDA trademark is completely arbitrary. The Respondent has not replied to the Complainant’s cease and desist letter, nor has it responded to the Complaint. The Respondent’s passive holding of the confusingly similar Domain Name, is indication of bad faith use and registration. The Domain Name has active mail exchange (“MX”) records that may indicate use of the Domain Name for email, which evidences a likelihood of additional bad faith use of the Domain Name. The Respondent’s bad faith is further supported by it utilizing a privacy service and the fact that the Respondent has used a false name and address in the registration of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in its trademark ASPIDA. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety, with the addition of the letter “i” in the middle. The addition does not prevent a finding of confusing similarity. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant. There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. On the contrary, the Complainant documents that the Respondent has provided a false name and address in the registration of the Domain Name. There are no records of any person or business by the name “Aspida” (or “Aspiida”) at the Respondent’s purported address shown in the registration information. There is no evidence of bona fide offering of goods or services nor legitimate noncommercial or fair use in the case file. The Domain Name resolves to an error page.
The Panel finds that the Complainant has made out a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name, which has been unrebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the Complainant’s submissions, the Complainant’s ASPIDA trademark was registered before the registration of the Domain Name. The Complainant advertises and promotes its activities at “www.aspida.com”. The Complainant has engaged in significant promotion and invested significant resources to promote the ASPIDA trademark in connection with the Complainant’s services. Consequently, the ASPIDA trademark has been widely recognized in the insurance field, financial industry, and related industries. Further, the Panel finds that the ASPIDA trademark is distinctive. Therefore, it is more likely than not that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name.
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4.
The Panel notes that the Domain Name does not resolve to an active page. Under the circumstances of this case, the Panel finds that the non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
Additionally, the Panel notes that the Domain Name has active MX records. It indicates the Domain Name has been connected to email servers, which creates a risk that the Domain Name may be used for phishing or fraudulent email communications. The Respondent’s bad faith is also supported by the Respondent’s use of a privacy service, and it has used a false name and address when registering the Domain Name. Furthermore, the Respondent has not replied to the Complainant’s cease and desist letter or the Complainant’s contentions.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aspiida.com> be transferred to the Complainant.
Date: July 15, 2021