The Complainant is Ares Management LLC, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is 漆荣 (Qi Rong), China.
The disputed domain names <arescommercialcorp.com>, <arescommercialreal.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 7, 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 in English on December 8, 2020.
On December 7, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 8, 2020. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese, and the proceedings commenced on December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 1, 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 Complainant is a subsidiary of Ares Management, L.P., which is a publicly traded company listed on the New York Stock Exchange, and provides investment and alternative asset management services, including in real estate and corporate private equity funds. The Complainant and its parent company manage over USD 179 billion of assets and employ over 1,400 employees. The Complainant is headquartered in Los Angeles, United States, and has over 25 local offices throughout the world, in regions such as European Union, Australia and Asia, including particularly an office in Shanghai, China.
The Complainant owns a portfolio of trademark registrations for ARES, for instance Chinese trademark registration number 8537439 registered on September 20, 2011 and United States trademark registration number 3014171 registered on November 8, 2005. Furthermore, the Complainant owns trademark registrations for the mark ARES COMMERCIAL REAL ESTATE, for instance Chinese trademark registration number 11396556, registered on January 28, 2014 and United States trademark registration number 4307815, registered on March 26, 2013. The Complainant also owns a portfolio of official domain names, such as <aresmgmt.com> created on March 19, 2002 and <aresmanagement.com> created on December 29, 2011. The relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain names, which were both created on September 8, 2020.
The Complainant submits evidence that the disputed domain names both direct to inactive websites. The Complainant also provides evidence that it first attempted to resolve this dispute amicably through
cease-and-desist messages sent to the Respondent on November 5, 2020 (regarding <arescommercialcorp.com>) and on November 6, 2020 (regarding <arescommercialreal.com>), through the relevant WHOIS contact forms. The Respondent did not reply to these messages.
The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for ARES and ARES COMMERCIAL REAL ESTATE, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.
The Complainant claims that its trademarks are distinctive, famous and used intensively, and submits a printout of its official website. The Complainant particularly contends that there are no justifications for the use of its trademarks in the disputed domain names, and claims that the Respondent is passively holding the disputed domain names, which does not confer any rights or legitimate interests in respect of the disputed domain names to the Respondent. The Complainant also claims that the Respondent has engaged in a pattern of trademark-abusive registrations of domain names and that the Respondent may be using the disputed domain name <arescommercialcorp.com> for fraudulent email communications, which constitutes use in bad faith of the disputed domain names.
On the basis of the above arguments, the Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
The Complainant states that to the best of its knowledge the Registration Agreement is in English. However, on December 7, 2020, the Center notified the Parties that the language of the Registration Agreement is Chinese. Nevertheless, the Complainant has filed both the Complaint and the amended Complaint in English, and requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case in considering this request, and attaches particular relevance to the following elements: the Complainant’s request that the language of proceedings be English; the lack of comment on the language of the proceedings and the lack of response of the Respondent (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); the fact that the disputed domain names are formed by combining the Complainant’s trademark with words in English rather than in Chinese; the fact that the disputed domain name <arescommercialcorp.com> directs to a website only containing the sentence in English “this website is under construction. Come back soon.” and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the marks ARES and ARES COMMERCIAL REAL ESTATE, based on its use and registration of the same as a trademark, incidentally commencing several years prior to the registration of the disputed domain names.
As to confusing similarity of the disputed domain names with the Complainant’s trademarks, the disputed domain names consist of the combination of the Complainant’s trademark for ARES with descriptive elements. In particular, in the case of <arescommercialcorp.com>, the combination of the Complainant’s trademark ARES with the descriptive element “commercial corp”, and in the case of <arescommercialreal>, the combination of the Complainant’s trademark ARES with the descriptive element “commercial real” (which can also be seen as the Complainant’s trademark for ARES COMMERCIAL REAL ESTATE with the omission of the word “estate”).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that the disputed domain names contains the entirety of the Complainant’s trademark for ARES, which remains easily recognizable, as its sole distinctive and dominant feature. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy.
On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, that it is not a good faith provider of goods or services under the disputed domain names and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any Response or evidence in this administrative proceeding.
Moreover, upon review of the evidence provided by the Complainant, the Panel notes that the disputed domain names have not been used, and both direct to inactive webpages. The Panel finds that holding disputed domain names passively, without making any use of them, does not confer any rights or legitimate interests in the disputed domain names on the Respondent.
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
Given the reputation and fame of the Complainant’s trademarks, the registration of the disputed domain names, which incorporate the ARES trademark in its entirety, is clearly intended to mislead and divert consumers to the disputed domain names. Even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owned, and owns, trademarks protecting the mark ARES and uses these extensively, including in the Respondent’s home jurisdiction China. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the disputed domain names have not been used and link to inactive websites. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attaches particular relevance to the following elements: the disputed domain names incorporate the Complainant’s trademark for ARES in its entirety, the high degree of distinctiveness and fame of the Complainant’s trademarks, the fact that the Respondent did not react to the Complainant’s cease-and-desist messages, the fact that the Respondent seems to be targeting the Complainant’s ARES trademark with two domain name registrations, and the Complainant’s evidence that the mail exchanger (MX) records for the disputed domain name <arescommercialcorp.com> indicate that the Respondent has connected this disputed domain name to email servers, which creates a grave risk that the Respondent may be using this disputed domain name for misrepresentations and/or phishing and spamming activities (see in this sense also previous UDRP decisions such as Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533). On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith.
The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
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 names <arescommercialcorp.com> and <arescommercialreal.com>, be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: February 15, 2021