The Complainant is Ares Management LLC, United States of America (“United States” or “US”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Company Company, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 24, 2020, 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 the Complainant on July 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 29, 2020. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on September 4, 2020. 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 New York Stock Exchange (“NYSE”) listed company that operates a global alternative asset management and investment business, with approximately USD 149 billion of assets under management and over 1,200 employees worldwide. The Complainant holds registrations for the trademark ARES and variations of it in numerous jurisdictions, including, for example, including United States trademark registration number 3,014,171 registered on November 8, 2005. The Complainant owns the domain name The Disputed Domain Name was created on March 11, 2020. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant cites trademark registrations for the mark ARES and variations of it, in 39 countries, including the US trademark registration 3,014,171 for the word ARES registered on November 8, 2005, as evidence of ownership. The Complainant has also provided details of US trademark registration 3,925,366 for mark ARES MANAGEMENT registered on March 1, 2011. The Complainant submits that the mark ARES is distinctive and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the ARES trademark and that the similarity is not removed by the additional letters “mng” which connote the word “management”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not commercialized any services or products in connection with it and registered it 22 years after the Complainant first used the word ARES as a trademark. The Complainant notes that the associated website is currently inactive and “passively held”, and contends that the Respondent, having no connection by way of commercial or other interests which could relate its business with the ARES business, has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and passive use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules, having regard to the distinctiveness and long standing prior use of the Complainant’s trademarks. The Complainant submits that the Respondent had “obvious actual” and constructive knowledge of the Complainant's rights in the trademark when the Respondent registered the Disputed Domain Name and to have proceeded with registration and passively holding it knowing of the Complainant's rights demonstrates the Respondent's bad faith, citing Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark ARES in numerous jurisdictions including the United States, the Respondent’s location. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see, Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the ARES trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark ARES; (b) followed by the letters “mng”; (c) followed by the gTLD “.com”. It is well-established that the gTLD is a technical part of a domain name and may be disregarded for the purposes of finding confusing similarity between the Disputed Domain Name and the Complainant’s trademark (see, Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “aresmng”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the addition of the letters “mng”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel finds that the addition of the letters “mng” does not in itself prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or a legitimate interest in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that once the Complainant puts forward a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to rebut that prima facie case (see, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. The Complainant has alleged, and the Respondent has failed to deny, that the Respondent has no legitimate interests in respect of the Disputed Domain Name (see, Teledesic LLC v. McDougal Design,WIPO Case No. D2000-0620; Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S.,WIPO Case No. D2000-0011). This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires the Complainant to also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of these requirements. The Panel finds that the evidence in the case shows the Respondent has registered and used the Disputed Domain Name in bad faith. On the issue of registration, in view of the composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark ARES, and had it in mind at the time of registration. Given the uncontested evidence that the Complainant is NYSE listed and has approximately USD 149 billion of assets under management, this Panel infers that the Respondent was aware of the Complainant’s use of the ARES trademark to identify its asset management business. The unlikelihood that the Disputed Domain Name registered by the Respondent would contain the Complainant’s trademark – or a version of it with the letters “mng” similar to the letters “mgmt” that the Complainant uses itself in its main domain name – was pure coincidence, and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark, such as by conducting a trademark search or search engine search, supports a finding of bad faith (see Yahoo! Inc. v. Yahoo-Asian Company Limited,WIPO Case No. D2001-0051; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, WebReg,WIPO Case No. D2006-0964; Ares Management LLC v. Ares Fcl, Ares Fcl Services Ltd,WIPO Case No. D2018-2090). Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of registration in bad faith (see, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). The panel finds that in this case, it does evidence bad faith registration of a domain name containing the Complainant’s trademark by the Respondent. On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent, displaying an error message. WIPO Overview 3.0, section 3.3 sets out a non-exhaustive list of factors that have been considered by previous UDRP panels as relevant – having regard to the totality of the circumstances in each case – in determining whether the non-use of a domain name may prevent a finding of bad faith include: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” These factors are present in this case also. Numerous previous panels, citing Telstra Corporation Limited v. Nuclear Marshmallows, supra, have held that bad faith may exist even in cases involving passive holding. However, in view of the implausibility of any good faith use to which the Disputed Domain Name may be put and absence of a Response, this Panel accepts the Complainant’s submission in relation to bad faith use. Accordingly, the Panel finds that the Complainants have satisfied the requirements of 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 Disputed Domain Name Nicholas Weston
Sole Panelist
Date: September 23, 2020
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