WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AEW SA v. Clark Goodram, Wundle ltd.
Case No. D2019-0216
1. The Parties
The Complainant is AEW SA of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Clark Goodram, Wundle ltd., of Radcliffe, Manchester, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <aew-uk.com> is registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2019, 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 February 1, 2019, 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 February 1, 2019.
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 February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Center received email communications from the Respondent on February 6 and 26, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on March 12, 2019. 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 one of the world’s largest real estate asset managers with approximately EUR 62.1 billion of assets under management as of June 30, 2018. It has some 690 employees, with 14 offices worldwide, including in Boston, London, Paris and Hong Kong.
The Complainant owns European Union Trade Mark No. 9931635 for “AEW UK”, filed April 29, 2011, registered October 5, 2011, in classes 35, 36 and 41.
The Complainant operates websites at <aew.com> (registered May 12, 1995) and <aewuk.co.uk> (registered May 10, 2017).
The disputed domain name was registered on August 20, 2018.
There is no evidence that the disputed domain name has ever been actively used. On an unspecified date the disputed domain name pointed to a directory folder.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark. It consists of the Complainant’s trade mark, with the terms “AEW” and “UK” separated by a hyphen. It is likely that consumers will be confused into thinking that the disputed domain name belongs to the Complainant, which has a long-established business in the United Kingdom and which operates a .uk website using a very similar domain name.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent does not possess any trade mark rights in the term “AEW UK”. Nor has the Complainant authorised the Respondent to use the term. There is no business relationship between the parties.
The disputed domain name is not being actively used and it is thereby obvious that the Respondent lacks legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered in order to take advantage of the Complainant’s trade marks. It constitutes a passive holding in bad faith.
The Complainant’s “AEW UK” trade mark is well-known not only in France but also worldwide. A Google search for the Complainant’s trade mark brings up over seven million results.
It is therefore unlikely that the Respondent was unaware of the Complainant’s trade marks and domain names at the time of registration of the disputed domain name.
Registration of a domain name which includes a well-known trade mark is indicative of bad faith, even if the domain name has not been actively used.
The Respondent did not file a formal Response. In an email dated February 6, 2019, which the Panel has decided to admit (see section 6A below), the Respondent (Clark Goodram) said he bought the disputed domain name through his company which has since been dissolved. He said that the disputed domain name was bought for a client who intended to use it for an event website which was never built and that, so far as he was aware, the disputed domain name was never used.
6. Discussion and Findings
A. Informal Response
As mentioned above, on February 6, 2019, having received a copy of the Complaint, the Respondent emailed the Center giving a brief explanation for the registration of the disputed domain name. The Respondent did not follow up with a formal Response. The Respondent’s email does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit this in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.
B. Identical or Confusingly Similar
The Complainant has established registered trade mark rights in the term “AEW UK”as well as unregistered rights deriving from its extensive trading activity under that name.
Disregarding the domain name suffix, and the hyphen within the disputed domain name, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Indeed, the Respondent says that so far as he is aware the disputed domain name has never been actively used.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
In the Panel’s view, it is appropriate to consider this case in the context of the principles of passive holding.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels 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. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Applying these principles, the Panel considers that the combination of “AEW” and “UK” is a relatively distinctive one. Furthermore, the Complainant has supported its claim to a substantial reputation in the term “AEW UK” by producing the first page of a Google.com search for this term where all results relate to the Complainant.
The Panel places little weight on the explanation put forward in the Respondent’s email of February 6, 2019. Aside from the fact that it has not been reiterated in a formal Response with a statement of truth, the facts presented are somewhat sketchy. No details are given of the client for whom the disputed domain name was allegedly registered or as to the alleged intended event website. Importantly, no documents have been supplied in support of these assertions.
The Panel concludes that the above cumulative circumstances are indicative of passive holding in bad faith and that the Complainant has established the third element of 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 <aew-uk.com> be transferred to the Complainant.
Date: March 26, 2019