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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asgn Incorporated v. Chao Xian Liu

Case No. D2021-3300

1. The Parties

The Complainant is Asgn Incorporated, United States of America, represented by Montaury Pimenta Machado & Vieira de Mello, Brazil.

The Respondent is Chao Xian Liu, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <asgn-brazil.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 7, 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 October 11, 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 amendment to the Complaint also on October 11, 2021.

The Center verified that the Complaint together with the amendment to the 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 October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2021.

The Center appointed Dawn Osborne as the sole panelist in this matter on November 8, 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 the owner of the trade mark ASGN, registered, inter alia, as European Union Trade Mark registration number 017682139 for employment agency services since May 14, 2018. The Complainant has its main website at the domain name <asgn.com>.

According to the Complaint, the Domain Name registered in 2021 has been used to purport to offer investment services providing on the website the contact number of a WhatsApp account that used the Complainant’s name and logo in its profile. Internet users have actually been confused into believing these services were associated with the Complainant when they were not.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

The Complainant is the owner of the trade mark ASGN, registered, inter alia, as European Union Trade Mark registration number 017682139 for employment agency services, among other goods and services, since May 14, 2018.

The Domain Name registered on August 10, 2021 is confusingly similar to the Complainant’s ASGN trade mark containing it in its entirety and adding the geographical term “Brazil” and the generic Top-Level Domain (“gTLD”) “.com”, neither of which prevents confusing similarity between the Domain Name and the Complainant’s ASGN mark.

The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

The Respondent provided a WhatsApp contact to consumers viewing the website related to the Domain Name, and this WhatsApp account used, without authorization, the Complainant’s ASGN composite logo mark as a profile picture to purport to offer investment services. It is therefore unquestionable that the Respondent, when registering the Domain Name was fully aware of the Complainant and the Complainant’s mark and business.

The Respondent has been using the Domain Name to lead Internet users to advertisement of a supposed investment service using the mark and logo of the Complainant. This is not a bona fide offering of goods or services or legitimate non-commercial or fair use. It is registration and use in bad faith impersonating the Complainant, disrupting its business and diverting and causing confusion amongst Internet users for commercial gain. Internet users have been actually deceived by the use of the Domain Name into investing in the services offered via the Domain Name believing that they were connected with the Complainant when they were not.

The Respondent gave false contact details to the WhoIs database.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consists of the Complainant’s ASGN mark (registered, inter alia, in the European Union for employment agency services since 2018), the geographical term “Brazil”, a hyphen and the gTLD “.com”.

Previous panels have found confusing similarity when a respondent merely adds a geographical term, a hyphen and a gTLD to a complainant’s mark in a domain name. The addition of the geographical term “Brazil”, a hyphen and the gTLD “.com” in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has not authorised the use of its ASGN mark. The Respondent has not answered this Complaint and there is no evidence that the Respondent is, in fact, commonly known by the Domain Name.

According to the Complaint the website connected to the Domain Name provided a WhatsApp account which used the Complainant’s ASGN mark and logo to purport to offer commercial investment services. The Complainant has presented prima facie evidence that proves that Internet users were actually confused into believing these services were associated with the Complainant when they were not (asking in some cases how to recover their investment). The Respondent has not rebutted this serious contention of the Complainant, and the Panel finds such use could not amount to a bona fide offering of goods and services or a legitimate non-commercial or fair use.

As such the Panelist finds that the Complainant has established a prima facie case that the Respondent does not have rights or a legitimate interests in the Domain Name, which has not been rebutted by the Respondent, and that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

The use made of the Domain Name in relation to the Respondent’s site was confusing and actually deceived visitors to the site into believing that the Respondent’s site was connected to or approved by the Complainant. Use of a complainant’s logo shows a respondent has actual knowledge of a complainant, its rights, business and services. The Panel notes the seriousness of the Complainant’s allegation, a case calling for an answer, and finds the Respondent has not provided any.

In view of the circumstances of the case, the Panel holds that the Respondent intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site attached to the Domain Name and services offered on it likely to disrupt the business of the Complainant. Internet users were proven to be actually confused and deceived by the activities of the Respondent.

As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv).

The Panel also notes that false contact details were provided by the Respondent to the WhoIs database which is an additional indication of bad faith in the circumstances of this case.

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 Domain Name <asgn-brazil.com> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: November 22, 2021

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