The Complainant is Apax Partners LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by King & Wood Mallesons, United Kingdom.
The Respondent is Bill Salus of Orange, California, United States of America.
The disputed domain name <apaxfunds.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November.30, 2015. On November 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2015, 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 December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2016.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 14, 2016. 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 Complainant, whose history dates back 40 years, is one of the world’s leading private equity firms. The Complainant is headquartered in London, and is an independent global partnership which, in addition to London, operates out of seven other offices.
In addition to the unregistered rights that it has built up through significant use of the name “Apax”, the Complainant has numerous trademark registrations for APAX and APAX PARTNERS in the United Kingdom, the United States of America and in numerous other countries around the world. The majority of the Complainant’s trademarks cover financial services in class 36, in particular focusing on venture capital and investment funding and consultation services, and management and operations.
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s trademarks. The dominant and distinctive element of the disputed domain name, <apaxfunds.com>, is “apax”, which is identical to the Complainant’s trademark APAX. The Complainant also submits that the inclusion of the word “funds” in the disputed domain name further adds to the confusion, giving the clear impression that the disputed domain name is connected with private equity and investment fund activities, i.e., the Complainant’s core activities and the focus of its trademark specifications.
The Complainant further claims that the Respondent has no rights or legitimate interests in the disputed domain name. Searches of the US, UK, CTM and International trademark registries for APAX and APAX FUNDS did not reveal any trademarks registered to “Bill Salus”, the name of the Respondent provided by the Registrar. In addition the disputed domain name is not in active use in the sense that there is no website or other online use of the disputed domain name that the Complainant is aware of. Therefore, it is unlikely that the Respondent could seek to rely on the grounds set out in the Policy at paragraph 4(c) (or indeed any other circumstances) to demonstrate its rights and legitimate interests in the disputed domain name.
As to the registration and use of the disputed domain name in bad faith, the Complainant claims that it is clear that the Respondent in all likelihood knew of the existence of the Complainant’s trademarks. 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 “funds” in an attempt to mislead Internet users into thinking that the disputed domain name refers to the Complainant.
Regarding the issue of whether the disputed domain name has been used in bad faith, the Complainant asserts that the Policy in paragraph 4(b) sets out a number of circumstances which can be used as evidence of this but that these circumstances are “without limitation” and that the circumstances set out in Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003 all exist in the present case. There is thus no evidence whatsoever of any actual or contemplated good faith use by the Respondent of the disputed domain name. Secondly, the Respondent has taken active steps to conceal its true identity by employing the privacy protection services of the organization Whois Privacy Protection Services. Thirdly, the Respondent has provided false contact details to the Registrar.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(1) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The disputed domain name contains the Complainant’s distinctive and well-known trademark APAX with the addition of the generic term “funds”. The Panel agrees with the Complainant’s argument that the inclusion of the generic term “funds” actually adds to confusion as the term that is widely associated with private equity and investment fund activities. Since the generic Top-Level Domain (“gTLD”) suffix “.com” may be disregarded for the purposes of the first element analysis, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this by way of a formal response or otherwise and the way that the Respondent has been “using” the disputed domain name, see immediately below under C, does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use 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 Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s 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 trademark 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 the Respondent’s web site 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 web site or location or of a product or service on the Respondent’s web site or location.
Given the circumstances of the case and in particular the extent of use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name <apaxfunds.com> is not actively used. Instead, a message indicating that the webpage is unavailable appears on the site to which it resolves. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, supra, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant. Further, given the world-wide fame of the Complainant’s APAX mark, it is immediately inconceivable that the Respondent will be able to use the disputed domain name for any plausible purpose that would not be infringing the Complainant’s rights, just as the Respondent’s use of a privacy service under these circumstances gives rise to an inference of bad faith use and registration. See, e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private WhoIs Service, WIPO Case No. D2011-1753.
Noting that the disputed domain name incorporates the Complainant’s trademark, APAX, together with generic term “funds” and the gTLD “.com”, that no Response has been filed, and that there appears to be no conceivable plausible good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <apaxfunds.com> be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: February 3, 2016