The Complainant is Aboitiz & Company, Inc. (“ACO”), Aboitiz Equity Ventures, Inc. (“AEV”), Philippines, [internally represented].
The Respondent is Nanci Nette, Name Management Group, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2021, 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. On March 4, 2021, the Complainant filed an amended Complaint. The Center sent an email communication to the Complainant on March 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit a further amendment to the Complaint. The Complainant filed a second amended Complaint on March 19, 2021. The Center verified that the Complaint together with the amended Complaints 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 March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2021. The Center appointed Steven A. Maier as the sole panelist in this matter on April 18, 2021. 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 Panel finds that each of the named Complainants is a proper Complainant in this case. The Complainants are associated companies within the same corporate group, each of which is the owner of registrations for the trademark ABOITIZ. As contemplated by section 4.11.1 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers that the Complainants have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to permit the consolidation. 4. Factual Background The Complainants are corporations organized under the law of the Philippines and are both part of a group of companies that trades as the Aboitiz Group. With origins in shipbuilding dating from 1920, the Complainants currently operate a diversified business portfolio, with the Complainant AEV holding investments in power, banking, financial services, food, infrastructure and real estate. The Complainants are the owners of various registrations for the trademark ABOITIZ, including for example: - Philippines trademark number 42005012408 for a combined mark ABOITIZ, registered on September 24, 2007 in International Classes 30, 36, 37, 39, 40 and 42 - International trademark number 1504418 for the mark ABOITIZ registered on January 4, 2019 in International Classes 30, 35, 36, 37, 39, 40 and 42. The disputed domain name was registered on April 17, 2019. The disputed domain name has resolved to a website at “www.aboitiz.net” offering links to services including power, shipping, cargo and homes in the Philippines. 5. Parties’ Contentions A. Complainant The Complainants state that they have used the name and trademark ABOITIZ in commerce since 1920. They state that the mark is derived from the name of their founder, Mr Paulino Aboitiz, who started the business in the late 1880s, and is unique to the Complainants’ group. The Complainants state that AEV holds major investments in 11 countries across the Asia-Pacific region, that it has a market capitalization of over USD 4 billion and recorded net income of approximately USD 457 million in 2019. The Complainants provide details of their principal website at “www.aboitiz.com” together with evidence of their business reputation and profile. The Complainants submit that their ABOITIZ mark is widely known in commerce as a result of their business activities over several decades and is synonymous with shipping in the Asia-Pacific region. The Complainants contend that the disputed domain name is confusingly similar to their ABOITIZ trademark. They submit that the disputed domain name includes the whole of that trademark together with the term “group”, which serves only to increase the likelihood of confusion between the disputed domain name and the Complainants’ group of companies. The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants state that the Respondent has not commonly been known by that name and is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainants contend that the Respondent is using the disputed domain name deliberately to target the Complainants’ ABOITIZ trademark and dishonestly to divert Internet users to a pay-per-click website. The Complainants submit that the disputed domain name was registered and is being used in bad faith. The Complainants firstly contend that bad faith is properly to be inferred from the fact alone that the disputed domain name appropriates their distinctive and widely-known ABOITIZ trademark. The Complainants further contend that the disputed domain name has clearly been registered and used with their ABOITIZ trademark in mind, which is evident not only from the disputed domain name itself, but also the fact that the Respondent’s website offers links to services including power, shipping and real estate, with which the Complainants are widely associated. The Complainants point in particular to the references to the Philippines among the links in question. The Complainants provide evidence that the links included on the Respondent’s website resolve to various suppliers who are unconnected with the Complainant. They contend that it is obvious in the circumstances that the registration of the disputed domain name is a scam, intended to mislead Internet users into visiting the Respondent’s pay-per-click website in the mistaken belief that it is sponsored by or affiliated with the Complainants’ group. The Complainants request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 The Complainants have established that they are the owners of the registered trademark ABOITIZ. The disputed domain name wholly incorporates that trademark together with the dictionary term “group”, which does not prevent the confusing similarity between the disputed domain name and the Complainants’ trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainants’ submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel accepts the Complainants’ evidence that the trademark ABOITIZ was derived from the name of the founder and is distinctive in commerce to the Complainants’ group of companies. In the light of the highly distinctive nature of the trademark, and the Respondent’s use of the disputed domain name to link to services similar to those offered by the Complainants, the Panel can only reasonably conclude that the Respondent registered the disputed domain name with the Complainants’ trademark in mind and with the intention of taking unfair advantage of the Complainants’ goodwill in that mark. The Panel further finds that the disputed domain name is inherently misleading, as inevitably implying that it is owned, operated or authorized by the Complainants, and therefore represents an impersonation of the Complainants. The Panel further accepts the Complainants’ submissions that the Respondent has used the disputed domain name dishonestly to attract Internet users to a pay-per-click website by misrepresenting a connection between the disputed domain name and the Complainants’ trademark and business. The Respondent’s misrepresentation in this regard is exacerbated by the inclusion of pay-per-click links that relate to third-party services including power, shipping and real estate, which are similar to services offered by the Complainants. The Panel concludes specifically that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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, Steven A. Maier
Sole Panelist
Date: April 20, 2021
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