The Complainant is Ares Management LLC of the United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Garry. K / Ares Acquisitions, United States.
The disputed domain name <aresacquisitions.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 14, 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.
The Center verified that 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 September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2018.1
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 8, 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 is a subsidiary of Ares Management, L.P., a publicly traded, global alternative asset manager with approximately USD 125 billion of assets under management. The Complainant is one of the largest global alternative asset managers, with investment groups in credit, private equity and real estate, and approximately 1,000 employees. Headquartered in Los Angeles, California, the Complainant has offices across the United States, Europe, Asia and Australia.
The Complainant has adopted and used the mark and trade name ARES continuously since at least September 1997 in the field of financial services, namely, investment advisory and investment management services for equity, real estate and credit-oriented pooled investment vehicles, private investment funds, and investment accounts. The Complainant is the owner of trademarks in approximately 39 countries, including, but not limited to, ARES, United States Registration No. 3,925,367, registered on March 1, 2011 in International Class 36; ARES CAPITAL, United States Registration No. 3,925,364, registered on March 1, 2011 in International Class 36; ARES COMMERCIAL REAL ESTATE, United States Registration No. 4,307,815, registered on March 26, 2013 in International Class 36; and ARES MANAGEMENT, United States Registration No. 3,925,366, registered on March 1, 2011 in International Class 36 (the “ARES Mark” or “ARES Marks”). The ARES Marks are valid, incontestable, subsisting, unrevoked and uncancelled and constitute primafacie evidence of their validity and conclusive evidence of the Complainant’s exclusive right to use the ARES Marks and trade name in commerce in connection with the named services.
In addition, since March 19, 2002, the Complainant has owned the website “www.aresmgmt.com”, and since at least 2007, the Complainant has promoted and offered services through that website. The Complainant also owns numerous other domain names that incorporate its ARES Marks, including <aresmanagement.com>, <arescapitaladvisors.com>, <arescapitalasia.com>, <arescapitaleurope.co.uk>, <arescapitaleurope.com>, <arescapitalpartners.com>, <aresgroup.com>, and <areschina.com.tw>.
The Complainant also promotes its ARES Marks through several social media platforms, including Facebook and Twitter.
The Complainant’s attorney sent two cease and desist letters to the Respondent, on August 18, 2017 and April 9, 2018, respectively, demanding that the Respondent cease and desist from use of the Disputed Domain Name and demanding that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent did not reply to either letter.
The Respondent registered the Disputed Domain Name on May 15, 2017. As seen in the screenshot provided by the Complainant in an Annex to the Complaint, the Disputed Domain Name initially resolved or was redirected to a website hosted by the Respondent, on which it purported to promote a company called “Ares Acquisitions”. The company allegedly “offer[ed] a wide array of services geared toward the sale, merger and valuation of privately held, small and mid-market and SME firms”. As of the writing of this Decision, however, the Disputed Domain Name no longer resolves to that website.
The contentions made by the Complainant are as follows:
- The Disputed Domain Name is identical or confusingly similar to service marks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Respondent registered and is using the Disputed Domain Name in bad faith; and
- The Complainant requests that the Disputed Domain Name be transferred from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
The Panel concludes that the Disputed Domain Name is confusingly similar to the ARES Mark.
First, the Complainant is the owner of numerous trademark registrations in the United States and in other jurisdictions worldwide for its ARES Marks. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in its trademarks.
Second, the Disputed Domain Name <aresacquisitions.com> consists of the ARES Mark in its entirety, with the addition of the descriptive term “acquisitions”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that such elements have no effect on confusing similarity. The Respondent’s inclusion of the descriptive term “acquisitions” in combination with the ARES Mark does not avoid confusing similarity. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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 Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Moreover, the gTLD suffix “.com” that the Respondent attaches to the Disputed Domain Name containing the ARES Mark is irrelevant in assessing confusing similarity. See Comerica Incorporated v. Domains By Proxy, LLC / G Design, WIPO Case No. D2012-1374. Since the addition of such a suffix to a domain name is technically required, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ARES Marks. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s Marks prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name years after the Complainant first used the ARES Marks.
The Complainant’s continuous and public use of the ARES Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). This is especially true where, as here, the Complainant owns numerous well-known trademarks in the financial industry in the United States and in many jurisdictions worldwide. The Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s ARES Marks to host a financial website suggests bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests bad faith).
Second, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website for commercial gain demonstrates registration and use in bad faith. This was the case when the Complainant drafted the Complaint, since at that time the Disputed Domain Name resolved to the Respondent’s website which offered financial services similar to those offered by the Complainant. Moreover, the website had information about a company that didn’t actually exist and prominently displayed the ARES Marks. The website was used to charge consumers for services they would never receive or to steal their personal or company information. The Complainant submitted a screenshot of a page of the Respondent’s website demonstrating such prior use. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s ARES Marks and to drive Internet traffic seeking the Complainant’s services to the Respondent’s website for commercial gain. See paragraph 4(b)(iv) of the Policy.
Third, the Panel notes that the Disputed Domain Name is no longer redirected to the Respondent’s website, but instead, at the writing of this Decision, is now inactive since it resolves to a ServiceHostNet page. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive or inactive holding of a domain name that incorporates registered trademarks without a legitimate Internet purpose may indicate that the domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Here, the Panel considers the Respondent’s current inactive holding of the Disputed Domain Name to be a further indication of bad faith.
Finally, as noted supra, the Complainant’s attorney sent the Respondent two cease and desist letters to which the Respondent did not reply. The Respondent therefore was made aware of the Complainant’s rights in the ARES Marks and the Complainant’s demand that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent’s failure to respond to a cease and desist letter has been considered relevant in the finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <aresacquisitions.com>, be transferred to the Complainant.
Lynda M. Braun
Date: November 12, 2018
1 On October 24, 2018, the Center notified the Respondent that since one of the Center’s Notification of Complaint emails was not transmitted to the Respondent due to an administrative oversight, an additional five-day period through October 29, 2018 would be provided to the Respondent to issue a Response to the Complaint. The Center informed the Respondent that if no reply was received within that time frame, the Center would proceed to appoint an administrative Panel.
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