The Complainant is Ares Management LLC of Los Angeles, California, United States of America (the “United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Ares Fcl, Ares Fcl Services Ltd of United States Virgin Islands, Overseas Territory of the United States of America, United States.
The disputed domain name <aresforex.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2018. On September 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In reply to a request for clarification from the Center, the Complainant filed an amended Complaint on September 20, 2018.
The Center verified that 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 September 21, 2018. In accordance with the Rules, paragraph 5, the due date for the Respondent to submit a Response was October 11, 2018. An informal email communication from the Respondent was received by the Center on October 10, 2018. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on October 15, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on October 25, 2018. 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.
The Complainant, Ares Management LLC, is a subsidiary of Ares Management, L.P. (collectively, “Ares”), which is a publicly traded, global alternative asset manager with approximately USD 121.4 billion of assets under management as of June 30, 2018 and approximately 1,000 employees. The firm is headquartered in Los Angeles with offices across the United States, Europe, Asia, and Australia. Ares Management, L.P.’s common shares are traded on the New York Stock Exchange under the ticker symbol “ARES”.
The Complainant owns trademarks containing the word “ares” in 39 countries (the “Ares Marks”) including the following federal trademark registrations in The United States, where the Respondent is purportedly located.
− Registration No. 3925364 for ARES CAPITAL, registered on March 1, 2011, in class 36;
− Registration No. 3925366 for ARES MANAGEMENT, registered on March 1, 2011, in class 36;
− Registration No. 3925367 for ARES and a logo, registered on March 1, 2011, in class 36;
− Registration No. 4307815 for ARES COMMERCIAL REAL ESTATE, registered on March 26, 2013, in class 36.
The Complainant also owns several registrations globally for the plain word mark ARES and a number of domain names incorporating its Ares Marks.
The disputed domain name was registered on December 23, 2014. It currently resolves to an inactive website. Previously it resolved to a website promoting a non-existent financial services company called “Ares Forex”.
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark ARES in which it has rights and provides evidence of the trademark registrations referred to above. The Complainant also contends it has adopted and used the mark and trade name ARES in the field of financial and investment services continuously since at least September 1997, and long before the Respondent registered the <aresforex.com> domain name. It generates a large percentage of its business through website traffic to <aresmgmt.com>. In addition, it promotes its brand using the Ares Marks through social media platforms including Facebook and Twitter, and through advertising and promotional materials on which it has incurred significant expense. Thereby, the Complainant submits that it has acquired international fame and the public has come to associate the Ares brand with high-quality financial services.
The Complainant submits that the disputed domain name incorporates the mark ARES in full, changing the mark only by adding the generic term “forex”, which is short for “foreign exchange market”. The mere addition of generic terms and a generic top-level domain fails to distinguish the disputed domain name from the Complainant’s mark and it should be taken to be confusingly similar for the purposes of the Policy.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds. The Respondent is not commonly known by the disputed domain name and has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services. Nor has the Respondent been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name.
Rather, the Respondent is using the disputed domain name to host a fraudulent website which promotes a non-existent company called “Ares Forex” described as “a professional financial services company registered in the United Arab Emirates, the United Arab Emirates RAK regulation (membership no.: 6006009)”. The Complainant submits evidence of investigations conducted by a legal counsel in the United Arab Emirates showing that the company does not exist and that the RAK regulation number is not in the correct format. The Complainant submits that the media articles cited on the website are non-existent or fake and that links to a currency trading mobile app “Ares Forex MetaTrader 4” do not work, which is presumably because there is a legitimate “MetaTrader 4” app owned by a third party. The Complainant also provides evidence of investigations showing that the purported addresses in England, New York, and the U.S. Virgin Islands, used to register the disputed domain name, do not exist. Therefore, the Complainant draws the conclusion that the website is being used to defraud consumers who want to trade currency by either charging them for services that will not be provided or simply obtaining their personal and/or financial information for the purposes of identity theft, and it is using Ares’ famous marks to add legitimacy to its fake company. This is not bona fide or legitimate noncommercial fair use of the disputed domain name.
The Complainant submits that the Respondent acquired and is using the disputed domain name in bad faith. This is because the Respondent had actual knowledge of the Complainant, which is the reason behind its registration of the disputed domain name. The Complainant’s submits that the Respondent is using the disputed domain name in bad faith to redirect Internet users to a website prominently displaying the Complainant’s famous marks to defraud consumers. This brings it within the provisions of paragraph 4(b)(iii) of the Policy, since the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely, the Complainant. Finally, the Complainant submits that the use of false contact information is a further indication of bad faith.
The Respondent submitted a short email but did not formally reply to the Complainant’s contentions.
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. The Panel is satisfied that the Complainant has adequately demonstrated its rights in the mark ARES by virtue of its trademark registrations and extensive reputation in the area of finance and investment.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for whether the domain name is identical or confusingly similar to the mark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
When comparing the domain name with the mark, the Top-Level Domain “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F.Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <aresforex.com> entirely incorporates the mark “arex” with the addition of the word “forex”, which has become a generic term to refer to “foreign exchange market”. It is well established that the addition of a merely descriptive term to a mark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732)
Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the first requirement of the Policy is satisfied.
A complainant must then demonstrate that the respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts that the Respondent has not been authorized or licensed to use the disputed domain name, nor is there anything to suggest the Respondent is commonly known by the disputed domain name. There is also no evidence of a bona fide offering of goods or services, or legitimate use without intent for commercial gain, within the meaning of paragraph 4(c) of the Policy. Rather, the use of the disputed domain name to promote a fake company and fraudulent currency trading scheme designed to deceive Internet users is the opposite of bona fide use.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel concludes it has none.
The second requirement of the Policy is therefore satisfied.
A complainant must prove that the domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In assessing bad faith, whether the Respondent “knew or should have known” of the Complainant’s trademark rights can create a strong inference of bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). The Complainant has proven its significant reputation in the area of financial and investment services. Given that the disputed domain name contains the Complainant’s mark in conjunction with the word “forex” and is specifically used to promote a financial services scheme, it is almost certain that the Respondent was aware of the Complainant’s rights when registering the disputed domain name.
Furthermore, the use of the Complainant’s mark in the disputed domain name and on the website to which it resolves, in conjunction with financial and investment services, creates a real risk that Internet users will be deceived into believing the website is somehow affiliated with the Complainant and invest in a fraudulent scheme or provide personal information which may be misused. This clearly falls within the scope of paragraph 4(b)(iv) of the Policy, which states that bad faith will be found where the respondent intentionally attempts to attract users to its website by relying on consumer confusion as to the source or affiliation of the website for commercial gain. It also falls within paragraph 4(b)(iii) since the Respondent has registered the disputed domain name primarily for the purpose of the disrupting the business of a competitor, namely, the Complainant. The fact that the disputed domain name is now inactive does not alter this conclusion, since passive holding of a domain name containing a well-known mark, especially in conjunction with the provision of false WhoIs information, can still constitute bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.
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, <aresforex.com> be transferred to the Complainant.
Date: October 31, 2018
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