The Complainant is Apax Partners LLP, United Kingdom, represented by Mishcon de Reya, Solicitors, United Kingdom.
The Respondent is Name Redacted1 . 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2019, 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 May 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. A third-party communication was received by the Center on May 27, 2019, in the form of an online submission. Accordingly, the Center informed the Parties about the communication received on the Respondent’s identity and proceeded to Panel Appointment on May 29, 2019.
The Center appointed Mladen Vukmir as the sole panelist in this matter on June 11, 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 Panel has determined the following non-contested facts:
(i) The disputed domain name was created on May 14, 2018.
(ii) The Complainant’s full name is “Apax Partners LLP” which operates as a private equity firm.
(iii) There is no information available about the Respondent except the information and claims presented in the Complaint.
(iv) The Complainant is the owner of a number of APAX trademark registrations, including:
Trademark
Trademark Office
Reg. No.
Registration Date
APAX
United Kingdom Intellectual Property Office
UK00002348970
July 9, 2004
APAX
United States Patent and Trademark Office
2923527
February 1, 2005
APAX PARTNERS
United Kingdom Intellectual Property Office
UK00003353787
April 5, 2019
APAX PARTNERS
United States Patent and Trademark Office
2705751
April 15, 2003
(v) As of the date of this decision, the disputed domain name does not resolve to any webpage.
(vi) The Complainant provided the copy of fraudulent email from May 2018, purporting to be sent by the Complainant’s co-CEO. The said email used the disputed domain name as part of the email address. 5. Parties’ Contentions A. Complainant
The Complainant essentially asserts that:
(i) it has developed a significant reputation as one of the world’s leading private equity firms which advises funds that are focused on long-term investment in large and growth companies with a typical enterprise value of between EUR 1 billion and EUR 5 billion;
(ii) the disputed domain name is confusingly similar to the Complainant’s APAX trademark, because:
- the dominant and distinctive element of the disputed domain name, , is “apax”, which is identical to the Complainant’s APAX trademarks;
- the inclusion of the word “cap” (short for capital) in the disputed domain name further adds to the confusion, giving a strong impression that the disputed domain name is connected with capital investment services and private equity, i.e. the Complainant’s core activities and the focus of its trademark specifications;
- the inclusion of the suffix “llp” (short form for limited liability partnership) in the disputed domain name also adds to the confusion, since the Complainant is a limited liability partnership and its full name includes the suffix LLP;
- the Complainant’s business is global and its reputation in connection with the Complainant’s trademarks is strong, which increases the degree of confusing similarity;
(iii) the Respondent does not have rights or legitimate interests in the disputed domain name, as:
- the Complainant has worldwide trademark rights for the names APAX and APAX PARTNERS;
- the disputed domain name is not in active use (i.e. there is no website associated with it);
- the only online use of the disputed domain name known to the Complainant relates to the fraudulent emails that were sent from the email address incorporating the disputed domain name as part of the email address;
(iv) the Respondent registered and is using the disputed domain name in bad faith, since:
- the Respondent was aware of the Complainant’s existence and its business (as well as of the Complainant’s APAX trademark registrations) at the time of registration of the disputed domain name and has therefore registered the same in bad faith;
- the word “apax” is a made-up name, and it is plain that the use of that word is not coincidental, but has been adopted in bad faith in conjunction with the descriptive word “cap” (short for capital) in an attempt to mislead Internet users into thinking that the disputed domain name refers to the Complainant;
- the disputed domain name is very similar to the structure of the Complainant’s full name “Apax Partners LLP”;
- the Respondent used the disputed domain name to set up the email address incorporating not only the disputed domain name but also the name and surname of the Complainant’s co-CEO;
- from the above email address, the Respondent sent fraudulent emails bearing the signature of the Complainant’s co-CEO;
- the Respondent provided false contact details to the Registrar for the purposes of registering the disputed domain name and attempted to conceal its true identity by employing the privacy protection services of the organization Contact Privacy Inc.
Therefore, the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
On May 27, 2019, the Center received a communication from the individual indicated to be the registrant of the disputed domain name, which communication stated that the registration of the disputed domain name was made without that person’s knowledge. No person claiming to be the registrant of the disputed domain name filed a response to the Complaint. 6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the disputed domain name is confusingly similar to a trademark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Primarily, the Panel emphasizes that under general consensus view, the fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
The Complainant has submitted evidence to show that it is the owner of the APAX trademarks. Furthermore, the Complainant’s APAX trademark is inherently highly distinctive and well-known as determined by panels in earlier UDRP cases.
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a straightforward comparison between the complainant’s trademark and the disputed domain name. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, and the addition of descriptive or geographical terms would not prevent a finding of confusing similarity under the first element. Application of the confusing similarity test under the UDRP typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, and in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see sections 1.7 and 1.8 of WIPO Overview 3.0).
After performing the side-by-side comparison of the domain name and the textual components of the relevant trademark, it is evident to the Panel that the disputed domain name incorporates the Complainant’s trademark APAX in its entirety and that the same trademark is clearly recognizable as such within the disputed domain name.
The Panel must further answer the question whether adding the descriptive word “cap” and the suffix “llp” to the Complainant’s APAX trademark in the disputed domain name is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s trademark. With respect to the above, this Panel finds that the inclusion of the descriptive word “cap”, which is an abbreviation of the word “capital” and suffix “llp” (short form for limited liability partnership), does not prevent a finding of confusing similarity. Namely, the “cap” term is widely associated with capital investment services and private equity and the Complainant’s full name includes the suffix LLP.
With respect to the applicable gTLD “.com” suffix in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).
For all the foregoing reasons, the Panel finds that the Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its APAX trademarks, or to apply for or use any domain name incorporating the same trademarks.
Also, there is no evidence that the Respondent has registered APAX trademark in its name, or that the Respondent has been commonly known by the disputed domain name.
To the contrary, from the evidence presented by the Complainant it arises that the Respondent used the disputed domain name to create an email address from which it sent emails falsely passing off as the Complainant’s co-CEO. In the Panel’s opinion, such use of the disputed domain name by the Respondent constitutes an illegal activity and cannot be considered a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with the views taken by panels in earlier UDRP cases.
Namely, panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see sections 2.13 and 3.4. of the WIPO Overview 3.0. and relevant panel decisions in UDRP cases, particularly Magna International Inc. v. Mustafa Mashari, WIPO Case No. D2015-0645; Tetra Laval Holdings & Finance S.A. v. Named Redacted, WIPO Case No. D2015-2034; and Accenture Global Services Limited v. Patel Holdings, WIPO Case No. D2016-0367).
Furthermore, section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In line with the abovementioned and due to the fact that the Complainant has established its prima facie case and the Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
For the purpose 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 the disputed domain name in bad faith:
(i) circumstances indicating that the holder 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 trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Based on the available record, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
Firstly, the fact that the Respondent provided false contact details to the Registrar for the purposes of registering the disputed domain name and used a privacy service (Contact Privacy Inc.) to conceal its true identity gives rise to an inference of bad faith use and registration.
Further, due to the distinctive nature of the trademark, it is impossible to imagine that the Respondent would register the disputed domain name without prior knowledge of the Complainant and the Complainant’s trademark. This Panel finds that the Respondent could not have been unaware of the fact that it opted for a domain name which could attract Internet users in a way that is likely to create confusion with APAX trademarks for such users. This is further supported by the fact that the Respondent incorporated “cap” and “llp” in the disputed domain name creating a likelihood of confusion with the Complainant’s mark, and it set up the email address, incorporating the disputed domain name as well as the name and surname of the Complainant’s co-CEO. The Respondent, falsely identifying itself as the Complainant’s co-CEO, sent fraudulent emails from this email address.
Utilizing the disputed domain name to send emails, bearing the signature of the Complainant’s co-CEO, for fraudulent purposes is a strong example of bad faith under the Policy and a clear indication that the Respondent intentionally attempted to attract Internet users to its own email communication, for commercial gain, by creating a likelihood of confusing with the Complainant’s APAX trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s fraudulent email.
This amounts to registration and use of the disputed domain name in bad faith. Furthermore, the Panel finds that the circumstances listed in section 3.3 of the WIPO Overview 3.0 apply in this case. Particularly, the Panel in this instance cannot think of any plausible contemplated active use of the disputed domain name by the Respondent that would not be illegitimate and/or that would not infringe the Complainant’s rights.
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: June 25, 2019
1 In view of the communication received on May 27, 2019 by the Center, the Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published except under exceptional circumstances.
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