The Complainants are AKKA Technologies of Paris, France, and AKKA Technologies Developpement of Luxembourg, Luxembourg, represented by Mark & Law, France.
The Respondent is Kaustav Naskar of Kolkata, India. 2. The Domain Name(s) and Registrar(s)
The disputed domain name is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2018. On January 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2018, 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. In response to a request for clarification by the Center, the Complainant filed an amendment to the Complaint on January 26, 2018.
The Center verified that the Complaint together with the amendment to 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 January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. On January 29, 2018, the Respondent submitted an informal communication to the Center. The Respondent did not submit any substantive response. Accordingly, the Center notified the Commencement of Panel Appointment Process on February 20, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on February 26, 2018. 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 Complainants are subsidiaries of the AKKA Group, an international engineering and technology consulting company. The Complainant AKKA Technologies is the owner of French trademark registrations for AKKA and AKKA TECHNOLOGIES, applied for in 1999 and 2004 respectively, and registered for use with engineering and technology consulting, engineering services, computer program development and design, and computer programming services. AKKA Technologies also owns an Indian trademark registration for AKKA, issued on June 12, 2008. The Complainant AKKA Technologies Developpement is the owner of a European Union trademark for AKKA, issued on November 25, 2005, as well as an International trademark registration for AKKA. The Complainant's marks hereinafter are collectively referred to as the "AKKA marks."
The Respondent registered the disputed domain name on November 25, 2016, according to the concerned Registrar's WhoIs database. The Respondent has used the disputed domain name to offer web services and other computer related services. Upon becoming aware of the Respondent's registration and use of the dispute domain name, the Complainants' representative contacted the Respondent on October 2017. The Respondent in reply indicated that he would be willing to transfer the disputed domain name to the Complainants, but only in exchange for the payment of EUR 20,000. 5. Parties' Contentions A. Complainants
The Complainants submit that the disputed domain name is confusingly similar to Complainants' AKKA mark, and identical to the AKKA TECHNOLOGIES mark. The Complainants observe that the disputed domain name incorporates the AKKA mark in its entirety. The Complainants maintain that the inclusion of the word "technologies" in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainants' AKKA marks, given that the Complainants operate in the field of technology.
The Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants aver that the Respondent has not been commonly known by the disputed domain name. According to the Complainants, the Respondent's is seeking to trade on the goodwill and reputation of the Complainants' AKKA mark by using the disputed domain name to divert Internet users to the Respondent's website.
The Complainants maintain that the Respondent registered and is using the disputed domain name in bad faith. The Complainants submit that the Respondent is seeking to exploit and profit from the disputed domain name by creating a likelihood of confusion with the Complainants' AKKA marks as to source, sponsorship, affiliation, or endorsement of the Respondent's website or products and services offered thereon. The Complainants further assert that the Respondent registered the disputed domain name in order to sell the disputed domain name to the Complainants at an amount greatly in excess of the Respondent's reasonable out-of-pocket costs related to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. In his email communication of January 29, 2018, the Respondent simply stated that the disputed domain name was registered "under [his] name – Kaustav Naskar world wide", that he bought it "in a tough condition to upload [his] portfolios and it is very necessary and much important to [him]". 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainants' AKKA TECHNOLOGIES mark and confusingly similar to the Complainants' AKKA marks, in which the Complainants have demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Complainants' AKKA marks are clearly recognizable in the disputed domain name.2 Top Level Domains ("TLDs") generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3 The disputed domain name is identical to the AKKA TECHNOLOGIES mark when the TLD ".com" is disregarded.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainants' AKKA marks. The Respondent notwithstanding has registered the disputed domain name, which is identical and confusingly similar to the Complainants' AKKA marks. Further, after receiving notice from the Complainants, the Respondent's refused to transfer the disputed domain name to the Complainants without payment of the sum of EUR 20,000.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the 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 domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint and did not reply to the Complainants' contentions, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainants' distinctive AKKA and AKKA TECHNOLOGIES marks when registering the disputed domain name. The Panel finds that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainants' trademark rights. Internet users diverted to the Respondent's website could easily expect that the disputed domain name would be linked to the Complainants' website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainants. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. The record further reflects that the Respondent more likely than not registered the disputed domain name with the intention of selling the disputed domain name to the Complainants for an amount in significantly excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.
The Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainants' AKKA marks, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The record is convincing that the Respondent had the Complainants' AKKA marks in mind when registering the disputed domain name. The Panel concludes from the attendant circumstances that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainants' AKKA marks, whether by attempting to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion as to the source, sponsorship or affiliation with the Complainants, or by selling the disputed domain name to the Complainants for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 name be transferred to the Complainants.
William R. Towns
Sole Panelist
Date: March 11, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
3 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
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