WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aventiv Technologies, LLC v. Malcolm Maxwell
Case No. D2021-1951
1. The Parties
Complainant is Aventiv Technologies, LLC, United States of America (“United States”), represented by Squire Patton Boggs (US) LLP, United States.
Respondent is Contact Privacy Inc. Customer 0160524504, Canada / Malcolm Maxwell, United States.
2. The Domain Name and Registrar
The disputed domain name <iamaventiv.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 Complainant on July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 13, 2021. After an informal communication from Respondent on July 13, 2021, the Center sent to the Parties a Possible Settlement communication on July 14, 2021. Subsequently, Complainant filed a first suspension request on July 17, 2021, and requested further extensions of suspension on August 13, 2021 and September 23, 2021. On November 4, 2021, Complainant requested that the Center reinstitute the proceedings.
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 Respondent of the Complaint, and the proceedings commenced on November 4, 2021. On November 11, 2021, the Center received an email communication from a third party claiming unauthorized use of its contact details in relation to the disputed domain name in the present proceedings. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. Respondent did not provide any Response. The Center proceeded to Panel Appointment on November 29, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 3, 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
Complainant is a UnitedStates based company that provides technology solutions to customers in the corrections and government services sectors. It is the proprietor of United States Trademark No. 6053084 for AVENTIV (word mark), registered on May 12, 2020 for services in Class 36. Complainant operates its primary business website at “www.aventiv.com.” Additionally, Complainant operates its “Ask a Question” and “Report an Incident” page at the website “www.iameventiv.aventiv.com.”
The disputed domain name was registered on January 11, 2021. At the time of the Decision, it did not resolve to an active website. The record contains evidence that the disputed domain name previously resolved to a web page that invited Internet visitors to submit anonymous reports. The page displayed the AVENTIV mark.
The record reflects that the Parties attempted to resolve this dispute, however, settlement discussions were not successful and these proceedings ensued.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it has been using the AVENTIV mark since at least 2019. Respondent is using the AVENTIV mark in its entirety, preceded by the identifying language “I am.” The intent is to lead consumers to believe that Respondent’s website is operated by Complainant.
Under the second element, Complainant states that, at the time that the disputed domain name was registered by Respondent, it has already been using the AVENTIV mark in connection with its business and had already registered the AVENTIV mark with the United States Patent and Trademark Office. Complainant has not given permission to Respondent to use its mark in a domain name. Therefore, Respondent’s use is illegitimate.
Under the third element, Complainant states its belief that Respondent has registered the disputed domain name in bad faith intentionally to tarnish the goodwill associated with Complainant’s AVENTIV mark. By registering a domain name identical to Complainant’s mark, Respondent must have had prior knowledge of this mark. Respondent has intentionally attracted Internet users to its website by creating a likelihood of confusion with Complainant’s mark. By adding “I am” to the AVENTIV mark, Respondent has signaled an unmistakable intent to impersonate Complainant.
Complainant requests transfer of the disputed domain name.
Respondent did not provide a formal Response. In an informal email communication with the Center on July 13, 2021, a date prior to the settlement discussions, Respondent stated the following: “The website has been been taken-down, though it's going to take a day or two to see the changes propagated throughout the Internet. I will monitor progress to make sure this successfully completes. You may take the domain name, if you need it.”
Subsequently, Respondent sent a settlement form signed on July 27, 2021 and consented to remedy. Complainant did not submit any answer to Respondent’s signed settlement form.
5. Consent to Remedy
The Panel notes that even without a formal settlement between the parties, a consent for the transfer of a disputed domain name by the Respondent can provide sufficient basis for an order for transfer without the need for substantial consideration of the UDRP grounds and the further merits of the case. In view of WIPO Overview 3.0, section 4.10, a panel may “order the requested remedy solely on the basis of such consent”.
As indicated above, the Center received an email communication from the Respondent on July 27, 2021, 2021, which unambiguously expresses her consent to transfer the disputed domain name to Complainant. In said email communication, the Respondent wrote literally: “You may take the domain name, if you need it.”
The Panel finds that the email communication by Respondent to the Center undoubtedly demonstrates his consent to have the disputed domain name transferred. Furthermore, the Panel notes that the content at the disputed domain name impersonating the Complainant is no longer supported; namely the disputed domain name no longer resolves to an active website.
The fact that no settlement agreement has been concluded between the Parties does not, in view of the Panel, affect the effectiveness of the Respondent’s unilateral consent to the transfer of the disputed domain name. It does however mean that it is necessary to render a panel decision; the Panel notes moreover in this regard that the communication from an apparently unrelated third party raises the question of possible identity theft which may be relevant to the second and third elements.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the AVENTIV mark through registration in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.
In comparing Complainant’s mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name comprises Complainant’s AVENTIV mark in its entirety, preceded by the letters “iam.” It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, 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. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”), in this case, “.com”, to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no rights in the AVENTIV mark. The disputed domain name reflects Complainant’s mark in its entirety plus the modifier “iam”, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, nor that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name redirects to a website at which Respondent uses Complainant’s mark and suggests that Internet visitors file anonymous reports, presumably, about Complainant. Respondent has not, however, provided any information or arguments to the effect that Respondent is operating a criticism site and therefore may not avail himself of the fair use exception for noncommercial free speech under UDRP paragraph 4(c)(iii). Moreover, Respondent consented to remedy on its email communication from July 13, 2021, and submitted a signed Settlement Form on July 27, 2021. The Panel finds that the disputed domain name is nearly identical to Complainant’s mark and is identical to the domain name used for Complainant’s own reporting website. Respondent’s website lacks a disclaimer or even clear language indicating that Respondent is criticizing, rather than impersonating, Complainant. On these facts, there is an impermissible risk of user confusion. See WIPO Overview 3.0, section 2.6.2.
Therefore, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its AVENTIV mark predate the registration of the disputed domain name. The disputed domain name reflects Complainant’s AVENTIV mark in its entirety, together with the letters “iam,” which implies affiliation with Complainant by asserting that Respondent is, in fact, Complainant. The Panel finds that the evidence supports a finding that Respondent was aware of Complainant when registering the disputed domain name.
The Panel finds that Respondent has demonstrated bad faith use of the disputed domain name. The evidence on record indicates that Respondent is operating a website inviting Internet users to submit anonymous reports. Complainant itself operates a website for users to file error reports at the domain name <iamaventiv.aventiv.com>. The Panel notes that Respondent’s website is not visually similar to that of Complainant. Nevertheless, the use of Complainant’s mark, the statement “I am Aventiv” and the lack of any disclaimer or information identifying Respondent support a finding that Respondent has intentionally attempted to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The Panel notes, in particular, that the modifier “I am” increases, rather than reduces, likelihood of confusion. For this reason, it quite different from the types of modifiers that, when used together with a complainant’s mark, would indicate to Internet users that the website is clearly operated by a party other than the complainant for legitimate criticism purposes. See, for example, Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248. All these factors plus the apparent use of a third party postal address support a finding of bad faith registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.1.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 disputed domain name <iamaventiv.com> be transferred to Complainant.
Date: December 17, 2021