Aegon UK plc v Burak cagri karaoglu

WIPO Case No. D2022-4612

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Aegon UK plc v. Burak cagri karaoglu

Case No. D2022-4612

1. The Parties

Complainant is Aegon UK plc, United Kingdom, represented by Pinsent Masons LLP, United Kingdom.

Respondent is Burak cagri karaoglu, Türkiye.

2. The Domain Names and Registrar

The disputed domain names <aegonglobalmarkets.net> and <aegonglobalmarkets1.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2,
2022. On December 2, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On December 2, 2022, 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 Complainant on December 7, 2022, providing the registrant and
contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the

Complaint. Complainant filed an amended Complaint on December 12, 2022.

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 Respondent of the Complaint, and the proceedings commenced on December 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2023. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on January 6, 2023.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 20, 2023.

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.

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4. Factual Background

Complainant is a multinational financial services provider. It is the proprietor of several registrations for its

AEGON mark, including the following:

- International Trademark No. 536748 for AEGON (device mark), registered on March 30, 1989 for
services in classes 35 and 36 (designating, inter alia, Türkiye);

- United States Trademark No. 4327068 for AEGON (word mark), registered on April 30, 2013 for
services in class 36, claiming a date of first use in 1983.

Complainant operates its business websites at the domain names <aegon.co.uk> and <aegon.com>.

The disputed domain name <aegonglobalmarkets.net> was registered on May 23, 2022. The disputed domain name <aegonglobalmarkets1.com> was registered on May 24, 2022. Neither domain name resolves to an active website. The record contains a copy of Complainant’s cease-and-desist letter to Respondent dated November 24, 2022. The record does not reflect Respondent’s reply thereto.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it is a multi-national financial services provider offering life insurance, pension and asset management services to 31.7 million customers worldwide under the AEGON mark since 1983. In the United Kingdom, where Complainant has operated since 1831, it adopted the AEGON mark in 2009 and provides financial services to over 3.8 million individual customers. The disputed domain names reflect Complainant’s mark in its entirety, together with words that are intended to imply a connection to Complainant.

Under the second element, Complainant states that it is not aware of Respondent using the disputed domain names in connection with the offering of goods or services prior to the registration date. Respondent has no rights to be known by the disputed domain names.

Under the third element, Complainant states that, given the widespread use and reputation of Complainant’s mark, Respondent must have been aware that it was misappropriating Complainant’s intellectual property rights in registering the disputed domain names, which are not being put to any legitimate use. Complainant states that it is reasonable to conclude that the disputed domain names have been registered in bad faith for illegitimate purposes in order to infringe Complainant’s marks and to deceive consumers into believing that Respondent and Complainant are connected.

Complainant requests transfer of the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which
Complainant has rights;

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(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) Respondent has registered and is using the disputed domain names in bad faith.

Under paragraph 15(a) of the Rules, “[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”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the AEGON mark through registrations in the United States and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s marks with the disputed domain names, the Panel finds that the disputed
domain names are confusingly similar to this mark, as the AEGON mark is clearly recognizable within the
disputed domain names. Both disputed domain names additionally contain the additional term “global
markets”; one of the disputed domain names adds the numeral “1”. The Panel finds that the additional term
“global markets” is a dictionary term that does not prevent a finding of confusing similarity, nor does the
numeral “1”. UDRP panels have consistently held that, where the relevant trademark is recognizable within
the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,
meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See
WIPO Overview 3.0, sections 1.7 and 1.8.

It is the well-established view of UDRP panels that a generic Top-Level-Domain such as “.com” or “.net” is viewed as a standard registration requirement and, as such, is typically disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i)        before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the

domain names or a name corresponding to the domain names in connection with a bona fide offering of
goods or services; or

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

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

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain
names nor is using the AEGON mark with the permission of Complainant. The nature of the disputed
domain names, which reflect Complainant’s mark followed by the words “global markets” and
“global markets 1”, cannot constitute fair use since they effectively impersonate or suggest sponsorship or

endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain names.

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Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.

Respondent has not provided any rebuttal of Complainant’s prima facie case and has therefore not proved rights or legitimate interests in the disputed domain names. There is no evidence that Respondent is commonly known by the disputed domain names, nor that there are any circumstances or activities that would establish Respondent’s rights or legitimate interests therein. There is no evidence of legitimate noncommercial use or a bona fide offering of goods or services. Rather, the disputed domain names do not resolve to active websites. Such use does not establish rights or legitimate interests in these circumstances.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names.

Complainant’s rights in its AEGON mark predate the registration of the disputed domain names by more than 30 years. The disputed domain names reflect Complainant’s well-established mark in its entirety, followed by dictionary terms related to Complainant’s business. Accordingly, it is clear that Respondent had Complainant’s mark in mind when registering the disputed domain names. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity, as in this case, can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4.

The Panel finds that Respondent has, on balance of probabilities, demonstrated bad faith by passive holding of the disputed domain names. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. In particular, the disputed domain names reflect Complainant’s registered AEGON mark in its

entirety. Respondent failed to provide any evidence of a connection to a legitimate business related to registering the disputed domain names, since the mail courier was unable to deliver the Center’s written communication to the details disclosed by the Registrar. Respondent has failed to provide any evidence of actual or contemplated good-faith use of the disputed domain names. Under the circumstances, the Panel does not find any such use plausible.

The Panel finds that Complainant has established the third element under paragraph 4(a) 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 names, <aegonglobalmarkets.net> and <aegonglobalmarkets1.com>, be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: February 14, 2023