Aon Corporation v. Zeld Garino
Claim Number: FA1812001819274
Complainant is Aon Corporation (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Zeld Garino (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aonassetmanagement.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 6, 2018.
On December 4, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <aonassetmanagement.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aonassetmanagement.com. Also on December 6, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading global professional services firm providing a broad range of risk, retirement, and health solutions to customers in over 120 countries. Complainant has rights in the AON mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and the European Union Intellectual Property Office (“EUIPO”). Respondent’s <aonassetmanagement.com> domain name is identical or confusingly similar to Complainant’s AON mark because Respondent adds the generic or descriptive terms “asset management” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <aonassetmanagement.com> domain name as Respondent is not authorized or licensed to use Complainant’s AON mark. Respondent does not use the <aonassetmanagement.com> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant and to confuse consumers into mistakenly believing Respondent’s website is associated with Complainant’s business.
Respondent registered and used the <aonassetmanagement.com> domain name in bad faith. Specifically, Respondent uses the disputed domain name for commercial gain by mimicking Complainant’s website and passing itself off as Complainant. Respondent also failed to respond to Complainant’s cease and desist letters. Finally, Complainant alleges Respondent had notice of Complainant’s rights in the AON mark as evidenced by Respondent’s mimicking of Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the AON trademark based on its registration of the mark with the USPTO and the EUIPO dating back as early as 2007. Registration of a mark with multiple national trademark agencies is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Here, Complainant provides copies of its registration with the USPTO and the EUIPO (e.g. Reg. No. 672879, registered March 3, 2018). Therefore, the Panel finds that Complainant had rights in the AON mark per Policy ¶ 4(a)(i).
Next, Complainant argues that the <aonassetmanagement.com> domain name, which was registered on August 19, 2018, is identical or confusingly similar to Complainant’s mark because Respondent adds the generic terms “asset management” and the gTLD “.com” to Complainant’s mark. Generally, the addition of generic terms and a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Complainant contends Respondent adds the generic term “asset management” and the gTLD “.com” to Complainant’s mark and that the words “asset management” are directly relevant to one of the services provided by the Complainant. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AON mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent lacks rights or legitimate interest in the <aonassetmanagement.com> domain name because Respondent is not authorized or licensed to use Complainant’s AON mark in any form. Where a respondent is not authorized to use a complainant’s mark, and in the absence of any other evidence of a respondent’s rights or legitimate interests, UDRP Panels may find that the respondent lacks rights or legitimate interest in the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) Complainant here contends that Respondent is not authorized or licensed to use Complainant’s AON mark and there is no reply or other submission from the Respondent to show otherwise. Additionally, the Panel notes that while Complainant fails to specifically assert this in its complaint, the information contained in the WHOIS record may also be used to determine whether a respondent is commonly known by the disputed domain name. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Complainant did provide a screenshot of the WHOIS record which identifies the registrant of the <aonassetmanagement.com> domain name as “Zeld Garino” and this has no bearing on the AON mark or the disputed domain name. Thus, the Panel finds that Respondent lacks rights or legitimate interest in the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <aonassetmanagement.com> domain name. Complainant alleges that Respondent attempts to confuse consumers by using the disputed domain name to pass itself off as a website associated with the Complainant. Use of a disputed domain name to feature a facsimile of a complainant’s mark in order to pass oneself off as a complainant is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the resolving website of the <aonassetmanagement.com> domain name which displays Complainant’s AON mark and otherwise seeks to mimic Complainant’s official Aon.com website (including the AON graphic logo, Complainant’s EMPOWER RESULTS trademark, its sponsorship of the Manchester United football team, and a listing of Complainant’s Financial Conduct Authority license number). Complainant also provides screenshots of its own aon.com website for comparison. As the Complainant’s assertion of website mimicry is supported by evidence and is well founded, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant alleges that Respondent must have had notice of Complainant's rights in the AON mark prior to registration of the domain names. Where a respondent had actual notice of a complainant's mark, this may serve as a foundation upon which to build a case that it registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant alleges that Respondent attempts to mimic Complainant’s website and pass itself off as Complainant for commercial benefit and that this indicates it had actual knowledge of Complainant’s AON mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the AON mark at the time of registration of the disputed domain name, thus constituting bad faith under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and uses the <aonassetmanagement.com> domain name in bad faith because Respondent attempts to pass itself off as the Complainant for commercial benefit. Use of a disputed domain name’s website to pass oneself off as a complainant in order to commercially benefit from any confusion as to source, sponsorship, affiliation, or endorsement of the website may indicate bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel notes that Complainant provides screenshots of the resolving website of the disputed domain name which displays Complainant’s AON mark, other marks owned by Complainant, and other information uniquely associated with Complainant. Complainant also provides screenshots of its own website for comparison and it is clear to this Panel that Respondent has sought to use the confusingly similar <aonassetmanagement.com> domain name to mimic the Complainant’s website in an effort to give the impression that it is, in fact, a legitimate website of the Complainant for the purposes of Respondent’s commercial benefit. Thus, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aonassetmanagement.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 31, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page