The Complainant is Apax Partners LLP, United Kingdom, represented by Mishcon de Reya, Solicitors, United Kingdom.
The Respondent is Cathy Safarik, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 verification response indicated the expiry date of the Domain Name as May 14, 2019. Accordingly, the Center requested for a confirmation regarding the status of the Domain Name during the proceedings on May 6, 2019. On the same day, the Registrar confirmed that the Domain Name would remain locked until the proceedings concluded.
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 May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 4, 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 a limited liability partnership based in the United Kingdom that is a leading private equity firm. The Complainant has operated for over 40 years and has invested in leading brands such as Travelex, Auto Trader, Orange, Sophos and Tommy Hilfiger. The Complainant operates out of offices in locations including London, New York, Hong Kong and Shanghai.
The Complainant is the owner of numerous trademark registrations for APAX (the “APAX Mark”) and APAX PARTNERS including United Kingdom Registration No 2348970 for the APAX Mark in classes 16, 35 and 36, registered on July 9, 2004.
The Domain Name was registered on May 14, 2018, by the Respondent and is presently inactive. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s APAX Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the APAX Mark, having registered the APAX Mark in numerous jurisdictions, including the United Kingdom. The Domain Name reproduces the APAX Mark along with the descriptive words/abbreviations “partners” and “llp” that merely reflect the name of the Complainant and do not distinguish the Domain Name from the APAX Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial fair use of the Domain Name or making a bona fide offering of goods and services from the Domain Name, indeed the Respondent makes no use of the Domain Name at all.
The Domain Name was registered and is being used in bad faith. The Complainant had a significant reputation at the time of registration that the Respondent must have been aware off. Furthermore, it is implausible that a third party could have registered a domain name corresponding to the full legal name of the Complainant without an awareness of the Complainant. Given the nature of the Domain Name, and the fact that the Respondent appears to have provided false contact details to the Registrar there is no plausible circumstance under which the Respondent could use the Domain Name other than in bad faith. The Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the APAX Mark, having registrations for APAX as a trademark in the United Kingdom as well as in various other jurisdictions.
The Domain Name incorporates the APAX Mark with the addition of the descriptive terms “partners” and “llp”. The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 as an individual viewing the Domain Name may be confused into thinking the Domain Name refers to the Complainant.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s APAX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the APAX Mark or a mark similar to the APAX Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).”
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the APAX Mark at the time the Respondent registered the Domain Name. The APAX Mark is a coined word with no meaning in the English language. Furthermore, there is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name not only incorporating the APAX Mark but exactly replicating the full legal name of the Complainant unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the APAX Mark.
The Domain Name is currently inactive. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 established that a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith in circumstances where a domain name is unused.
The Panel is prepared to infer, based on the nature of the Domain Name, the passive holding of the Domain Name, the absence of any plausible legitimate use of the Domain Name and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that precisely replicated the (coined) name of the Complainant, that the Domain Name is most likely being held pending use in a manner that will take advantage of the similarity between the Domain Name and the name of the Complainant and APAX Mark. As such Panel finds that the passive holding of Domain Name amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: June 6, 2019
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