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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apax Partners LLP v. WhoisGuard Protected, WhoisGuard, Inc. / Greg Tapper

Case No. D2020-0414

1. The Parties

The Complainant is Apax Partners LLP, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Greg Tapper, United States of America (the “United States”).

2. The Domain Name and Registrar

The disputed domain name <apaxcap.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 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 February 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 February 25, 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 February 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on March 20, 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 British private equity firm headquartered in London. The Complainant’s funds typically invest in large companies across four global sectors: technology and telecommunications, service industry, healthcare and consumer goods. The portfolio companies in which the Complainant’s funds invest employ revenues of over USD 23 billion.

The Complainant is the exclusive owner of registered trademarks consisting of the word “apax” in various jurisdictions throughout the world, including the following:

- the United Kingdom Trademark for the word mark APAX with registration number UK00002348970 registered as of July 9, 2004; and

- the United States Trademark for the word mark APAX with registration number 2923527 registered as of February 1, 2005.

The Complainant has registered several domain names and its main operational domain name is <apax.com>, where the Complainant’s main website is located.

The disputed domain name was registered on January 31, 2020, and at the date of the decision resolves to an error page. According to the unrebutted evidence put forward by the Complainant, at the time of filing the Complaint the disputed domain name displayed pay-per-click (“PPC”) advertising page containing third party, commercial advertising links related to the area of the Complainant’s activities.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its trademark as it only differs by the addition of the term “cap”, which is a term often used in the capital investment and private equity sectors to reference a maximum limit set by a law or agreement, or is used as an abbreviation for “capital”. The Complainant also argues that the addition of the word “cap” to the Complainant’s trademark creates further confusion and gives a strong impression that the disputed domain name relates to the Complainant’s area of activities.

With respect to the second element of the Policy, the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name as the Respondent is not commonly known by the name “Apax Cap” prior to or after the registration of the disputed domain name, the Respondent is not a licensee of the Complainant and has not received any permission from the Complainant to use its trademarks or name in association with the registration of the disputed domain name. In addition, the Complainant argues that the disputed domain name was used in a phishing attack where the Respondent attempted to assume the identity of the Complainant’s co-CEO in a correspondence to a company in which the Complainant has a majority stake and such activity cannot constitute legitimate interests in the terms of the Policy. Moreover, the Complainant argues that the PPC links on the website associated with the disputed domain name capitalize on the value of the Complainant’s trademarks.

In addition, with respect to the third element, the Complainant contends that the disputed domain name was registered and is being used in bad faith as it was used for an illegal activity in a phishing attack impersonating the Complainant’s co-CEO and targeting a company that has a business relationship with the Complainant. Moreover, the Complainant shows that the PPC advertisements displayed at the disputed domain name relate to the Complainant’s business and its activities and the Respondent cannot disclaim responsibility for the advertising being displayed on the website associated with the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the APAX trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test 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”.

Also, according to section 1.7 of the WIPO Overview 3.0, “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”.

Here the disputed domain name wholly incorporates the Complainant’s APAX trademark in addition to the term “cap”, which is associated with capital investment services and private equity, as also held in Apax Partners LLP v. Name Redacted, WIPO Case No. D2019-1016. This addition does not distinguish the disputed domain name from the Complainant’s trademark.

The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. “The addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity”, see section 1.8 of the WIPO Overview 3.0.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically disregarded when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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 the present case, the Complainant has established a prima facie case that it holds rights over the trademark APAX and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark APAX in the disputed domain name.

Furthermore, according to the unrebutted evidence adduced by the Complainant, at the date of the Complaint, the disputed domain name was used to host a parked page comprising PPC links to competing services. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” In this case, the PPC links are related to the Complainant’s trademark APAX and generate search results with competing services to those offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests on the Respondent. For a similar finding see F5 Networks, Inc. v. Domain Administrator, c/o Whois Watchdog, WIPO Case No. D2016-0043.

Additionally, the Panel finds that the phishing attack impersonating the Complainant’s co-CEO and targeting a company that has a business relationship with the Complainant can never confer rights or legitimate interests on a respondent. See section 2.13.1 of the WIPO Overview 3.0.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

According to the unrebutted assertions of the Complainant, its APAX trademark is widely used in commerce well before the registration of the disputed domain name in January 2020. The disputed domain name incorporates the Complainant’s trademark and the term “cap”, in addition to the relevant gTLD. Furthermore, from the unrebutted evidence put forward by the Complainant, the website associated with the disputed domain name contained at the date of filing the Complaint links related to the goods and/or services offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark APAX. See MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051.

Furthermore, according to the evidence submitted by the Complainant, the Respondent used the disputed domain name shortly after registration to pass itself off as the Complainant’s co-CEO, apparently as part of a phishing scam. Given such evidence, the Panel agrees with previous UDRP decisions that, “the Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a ‘social engineering’ attack or other type of scam”. For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See, e.g., Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416.

As regards the use of the disputed domain name, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.”

The conduct of the Respondent falls under the above provisions. The disputed domain name is confusingly similar to the APAX trademark of the Complainant. The Complainant argued that the Respondent is using the disputed domain name in fraudulent email communications impersonating the Complainant’s co-CEO and targeting a company that has business relationship with the Complainant. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0). See for similar findings, e.g. Apax Partners LLP v. Name Redacted, supra.

The fact that the website resolves to an error page does not have any impact on such an assessment, as the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g., Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002. Applied to this case, even if the disputed domain name does not currently resolve to an active website, the Panel notes that passive holding does not preclude a finding of bad faith (see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 <apaxcap.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: April 3, 2020

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