WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aviva Brands Limited v. Shen Zhong Chao

Case No. D2018-2461

1. The Parties

Complainant is Aviva Brands Limited of London, the United Kingdom (“UK”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Shen Zhong Chao of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <avivainvestorsrealassets.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2018, 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 Complainant on November 8, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 14, 2018.

On November 5, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed its request that English be the language of the proceeding on November 7, 2018. The Respondent did not comment on the language of the proceeding.

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”).

Respondent sent an email regarding settlement on November 14, 2018. In accordance to Complainant’s request, the Center notified the Parties of the suspension of the proceeding on November 19, 2018. On December 14, 2018, Complainant requested to reinstitute the proceeding. Accordingly, the proceeding was reinstituted as of December 14, 2018.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. Respondent did not submit any formal response. The Center notified the Parties of the commencement of panel appointment process on January 9, 2019.

The Center appointed Yijun Tian as the sole panelist in this matter on January 22, 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

A. Complainant

Complainant, Aviva Brands Limited, is a company incorporated in London, the United Kingdom. Based on the information provided by Complainant, found in 1696, Complainant is a leading British multinational insurance company, and it has been officially known as Aviva since 2002. Aviva provides a wide range of insurance products and services including, life, accident and health, general insurance along with retirement income planning and asset management services. Complainant has 30,000 employees, serving 33 million customers across 16 markets in the UK, North America, Europe, and Asia (see Annexes 7.1 and 7.2 to the Complaint). It is a publicly traded company in the London Stock Exchange (LSE: AV) and New York Stock Exchange (NYSE: AV). In 2016, Aviva reported an operating profit of GBP 3.0 billion, up 12 per cent from the year prior (see Annex 7.4 to the Complaint).

Complainant is the owner of trademark registrations for AVIVA in many jurisdictions, including in China (e.g. International Registration Number 781157, registered on February 11, 2002, designating China), the UK (e.g. UK Registration Number 2278305B, registered on May 10, 2002), the United States of America (“US”) (e.g. US Registration Number 2773101, registered on October 14, 2003), and the European Union (“EU”) (e.g. EU Registration Number 002358133, registered on January 3, 2005) (Annex 2 to the Complaint). Complainant also maintains a strong Internet presence through its various websites, and has many domain names which contain AVIVA trade mark. For example, Complainant’s website resolved by <aviva.com> is ranked as 88,096th globally, and the website received 480,990 total visits in the six-month period September 2017 – February 2018 (See Annexes, 5, 6 and 8 to the Complaint).

B. Respondent

Respondent is Shen Zhong Chao of Beijing, China. The disputed domain name <avivainvestorsrealassets.com> was registered on May 30, 2018, which is long after the AVIVA Mark was registered. The website at the disputed domain name is a parking page with commercial links related to Complainant, and a link for selling the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <avivainvestorsrealassets.com> is identical or confusingly similar to Complainant’s AVIVA Mark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <avivainvestorsrealassets.com> be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter;
(b) Such additional delay, considering the obviously abusive nature of the disputed domain name and its website (Respondent has registered a confusingly similar domain name and is using the website found at the disputed domain name to offer the disputed domain name for sale; see Annex 4 to the Complaint), poses continuing risk to Complainant and unsuspecting consumers seeking Complainant or its products;
(c) The disputed domain name is comprised of Latin characters;
(d) The website found at the disputed domain name features various phrases, in English including “Welcome to” and “the domain is for sale!” (Annex 4 to the Complaint);
(e) The term AVIVA, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Chinese language;
(f) Complainant previously sent a cease-and-desist letter to Respondent via the email address provided on the website at the disputed domain name, as provided in the Complaint (see Annex 11 to the Complaint), and Respondent replied in English to refuse Complainant’s request (see Annex 12 to the Complaint).

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the UK, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters (“aviva”) and English words “investors real assets” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and English words, rather than Chinese script; (b) the contents of the website resolved by the disputed domain name are both in English and in Chinese, e.g. the website resolved by the disputed domain name contains English phrases, such as “Welcome to” and “the domain is for sale!” (Annex 4 to the Complaint); (c) Complainant previously sent a cease-and-desist letter to Respondent, and Respondent replied in English to refuse Complainant’s request (see Annex 12 to the Complaint); (d) Respondent’s reply email to the Centre dated on November 14, 2018 was written in English; (e) the Center has notified Respondent of the proceeding in both Chinese and English; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the AVIVA Mark acquired through registration. Based on the information provided by Complainant, the AVIVA Mark has been registered internationally since 2002, including China (since 2002), and Complainant, as a leading British multinational insurance company, has 30,000 employees, serving 33 million customers across 16 markets in the UK, North America, Europe, and Asia (see Annexes 7.1 and 7.2 to the Complaint). It is a publicly traded company in the London Stock Exchange (LSE: AV) and New York Stock Exchange (NYSE: AV). In 2016, Aviva reported an operating profit of GBP 3.0 billion, up 12 per cent from the year prior (see Annex 7.4 to the Complaint).

The disputed domain name <avivainvestorsrealassets.com> comprises the AVIVA Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the additions of “investors real assets” as suffixes, and the generic Top-Level Domain (“gTLD”) “.com”. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally, a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, citing General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

Further, WIPO Overview 3.0 states:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test” (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that the additions of “investors real assets” as suffixes, and the gTLD “.com” does not negate the confusing similarity between the disputed domain name and the AVIVA Mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein.)

According to the Complaint, Complainant is a leading British multinational insurance company, which has 30,000 employees, serving 33 million customers across 16 markets in the UK, North America, Europe, and Asia (see Annexes 7.1 and 7.2 to the Complaint). It is a publicly traded company in the UK and in the US, and in 2016, Aviva reported an operating profit of GBP 3.0 billion, up 12 per cent from the year prior (see Annex 7.4 to the Complaint). Complainant has rights in the AVIVA Mark internationally, including in China, since 2002, which long precede Respondent’s registration of the disputed domain names (in 2018).

Moreover, Respondent is not an authorized dealer of AVIVA branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to Respondent (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “aviva” and “investors real assets” in its business operations or the use of the AVIVA Mark on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the AVIVA Mark or to apply for or use any domain name incorporating the AVIVA Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Complainant has supplied a copy of Respondent’s assertion that it holds registered trademark rights in AVIVA (Annex 12 to the Complaint). The Panel finds convincing however Complainant’s argument that the asserted trademark, Chinese application number 9081734, is merely an application and has no apparent connection to Respondent. Even if Respondent actually holds a registration for AVIVA, under the circumstances of this case, the Panel finds Respondent’s actions to be pretextual and designed to circumvent the application of the UDRP or otherwise prevent Complainant’s exercise of its rights (see WIPO Overview 3.0, section 2.12.2). The disputed domain name <avivainvestorsrealassets.com> was registered on May 30, 2018, which is long after the AVIVA Mark became widely known. The disputed domain name is identical or confusingly similar to Complainant’s AVIVA Mark;

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to Complainant’s evidence and the Panel’s investigation (the Panel recently visited the website resolved by the disputed domain name <avivainvestorsrealassets.com>), Respondent is offering to sell the disputed domain name on the website, stating “Welcome to avivainvestorsrealassets.com …… the domain is for sale!” (Annex 4 to Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds, also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the AVIVA Mark with regard to its products and services. Complainant has rights in the AVIVA Mark Internationally, including in China, since 2002. Based on the information provided by Complainant, Complainant has a widespread reputation as a leading British multinational insurance company. It has 30,000 employees, serving 33 million customers across 16 markets in the UK, North America, Europe. In 2016, Aviva reported an operating profit of GBP 3.0 billion. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2018).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. By contrast, Respondent is currently using the website resolved by the disputed domain name to offer to sell the disputed domain name. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the widespread reputation of the AVIVA Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the AVIVA Mark. Moreover, Respondent did not respond formally to the Complaint. And, as mentioned above, Respondent is offering to sell the disputed domain name through the website resolved by the disputed domain name. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

Furthermore, Complainant supplied a list of domain names affiliated with Respondent which prima facie appear to target the trademarks of other well-known brands such as MARRIOTT and FULLERTON HEALTHCARE (see Annex 10 to the Complaint), which demonstrates a pattern of abusive domain name registrations and confirms the Panel’s finding of bad faith in the present case.

In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s widely-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves and the offer to sell the disputed domain name are indicative of registration and use of the disputed domain name in bad faith.

7. Decision

For all 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 <avivainvestorsrealassets.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 26, 2019