Complainant is AKKA Technologies (European company), France, represented Mark & Law, France.
Respondent is Arnold Oke, Takka Technologies, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. That same day, Complainant filed an amendment to the Complaint. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. On March 7, 2021, the Respondent requested an extension to the Response filing period. On March 8, 2021, pursuant to paragraph 5(b) of the Rules, the Response due date was extended until March 11, 2021. Respondent submitted its Response on March 11, 2021. The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 18, 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. 4. Factual Background Complainant AKKA Technologies is an engineering and technology consulting company that seeks to accelerate innovation and business performance for the world’s largest industrial groups. Its consulting services cover the gamut from early innovations by way of streamlined plant and supply networks to multi-channel sales and after sales operations and include organization and agility, digital transformation, project and supply management expertise, and process reengineering. Complainant also offers training and coaching and project management instruction. Complainant owns numerous trademark registrations worldwide for the AKKA Mark (or “the Mark”). They include: French trademark registration no. 99786710, registered April 9,1999; Canadian trademark registration no. TMA892,734, registered on December 18, 2014; and, International trademark registration no. 1008290, registered on November 27, 2008. Furthermore, Complainant owns numerous domain names including, The Domain Name was registered on October 15, 2017. Respondent uses the Domain Name to resolve to a website offering for sale services such as: process optimization; digital transformation; business process outsourcing; and training or learning programs at “UTakka”. Complainant contacted Respondent by a letter and emails through its representative in March 2020, which Respondent never answered. 5. Parties’ Contentions A. Complainant The Domain Name is practically identical to the AKKA Mark. It reproduces the Mark in its entirety with the addition of the letter “t” before it. There is a high visual similarity and identical sound between the Mark and the Domain Name. Furthermore, Respondent provides its services under the trade name TAKKA TECHNOLOGIES, which is highly similar to AKKA TECHNOLOGIES. Respondent’s services listed on the home page of the website associated with the Domain Name are: process optimization (and diagnosis), help in digital transformation process (including the use of software), outsourcing, and training and teaching programs which services are complementary to those offered by Complainant. The Domain Name was registered on October 15, 2017, which is long after Complainant’s use of the AKKA Mark, its registration of the Mark, and after the Mark acquired distinctiveness. Respondent adopted the name TAKKA several years after Complainant started to use and protect the name AKKA and at a time when Complainant already had a reputation with the name AKKA in its activity fields and technology services. There is no trademark registration for the TAKKA mark. Respondent’s use of the Domain Name and associated website is made with an intent for commercial gain and can be misleading for consumers considering the close name and the identical services. Respondent registered the Domain Name to provide his services in the fields of process optimization (and diagnosis), providing help in digital transformation process (including the use of software), outsourcing, and training and teaching programs. Because the AKKA Mark is particularly distinctive for technologies and web and computer services, choosing “Takka” could only create confusion with the Mark especially in the area of assistance in digital transformation process. Furthermore, the process optimization, the outsourcing, and the training programs proposed on Respondent’s website correspond to services the AKKA Mark has been registered for. Considering the similarity between the services provided by the parties and the similarity of the Domain Name to the Mark, it is striking that Respondent chose the Domain Name with the extension “.io” that is now renown for technology activities to create a confusion with the company AKKA TECHNOLOGIES or to associate himself and his activities with Complainant that is known worldwide in the field of technology and to benefit from its good reputation. B. Respondent Respondent’ founders were born and raised in Benin (West Africa) where one of the main languages is Fongbé. In that language “ta-ka” means “skull”. This word is commonly used to designate ingenuity, smartness, and willing to find a solution. The suffix “-non” means a person who acts with ingenuity – “Takkanon(s)”. Reference to that is on Respondent’s website. Furthermore, Respondent’s logo (created by the founders around 2008-2009, before registration of the company), has the letter “t” engraved on a stylized head seen almost from the back. The “t” comes from “Takka”. The key word technologies was added to illustrate the area of activity and it is recognizable either in French or in English. The “T” of “Technologies” also resonates with the “T” of “Takka”. Furthermore, in Quebec, French is the official language and by law the company’s initial registered name must follow French grammar. Respondent uses the French version of the name Technologies Takka Inc. some time and other times the English version Takka Technologies Inc. or the short version TakkaTech or the core version Takka. Takka Technologies Inc. was initially reserved in September 10, 2012, then registered on April 26, 2013. One of the main reasons Respondent chose later the .IO as its domain name is: (a) to show its commitment to software and digital commitment as the .IO may refer to “input output” or “one and zero” which perfectly illustrates that commitment; and (b) it is short. Regarding whether the Domain Name is identical or confusingly similar to the Domain Name, Respondent posits: 1. AKKA is always written in capital letters as it seems to be single, while “Takka” is a common word. Complainant’s Canadian trademark registration issued on December 18, 2014, is one year and eight months after Respondent was registered as a company. This is inconsistent with Complainant’s statement that Takka Technologies adopted the name “Takka” several years after Complainant began using and protecting AKKA. Respondent’s website has a general description of the company and Respondent Respondent also uses the Domain Name for the associated email on a regular basis, citing to the Microsoft network and the Google cloud partner program. Respondent did not register and is not using the Domain Name in bad faith because, among other things: (1) the meaning of “Takka” to Respondent; (2) Respondent does not have a history of commercially speculating regarding the Domain Name; (3) Respondent uses the Domain Name on a regular basis especially in email accounts; (4) an average person cannot be confused in looking for AKKA Technologies regarding its services; and (5) there are other putative respondents owning domain names that are similar to the AKKA Mark. 6. Discussion and Findings A. Identical or Confusingly Similar It is uncontested that Complainant owns numerous trademark registrations worldwide for the AKKA Mark including: French trademark registration no. 99786710, registered on April 9,1999; Canadian trademark registration no. TMA892,734 registered on December 18, 2014; and, International trademark registration no. 1008290 registered on November 27, 2008. Respondent has raised the above-summarized ten points for why the Domain Name is not confusingly similar to Complainant’s Mark. In this proceeding, however, they do not support a decision in Respondent’s favor on the first element. The Panel finds that the Domain Name is confusingly similar to Complainant’s AKKA Mark, differing only by the addition of the letter “t”. In addition, the Domain Name is both visually and phonetically similar to the AKKA Mark. See, e.g., Expedia, Inc. v. Alvaro Collazo,WIPO Case No. D2003-0716 (finding the domain name Furthermore, adding the country code Top-Level Domain (“ccTLD”) such as “.io” does not distinguish the Domain Name from the Mark because the use of a ccTLD, like a generic Top-Level Domain, is required of domain name registrations. See mutatis mutandis SBC Communications v. Fred Bell aka Bell Internet,WIPO Case No. D2001-0602. For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests Complainant argues that Respondent has no rights and no legitimate interests in the domain name because it adopted the name TAKKA several years after Complainant started using and protecting the AKKA Mark and at a time when Complainant already was known by the Mark in its arena. Also, Complainant claims that it could not identify any relevant trademark for TAKKA. Complainant maintains that Respondent’s use of the Domain Name in conjunction with his website is with an intent for commercial gain and can mislead consumers or Complainant’s clients and prospective clients considering the use of the AKKA Mark and the identical services. Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Respondent argues that because Complainant’s Canadian trademark registration shows a registration date of December 18, 2014 (which is one year and eight months after it was registered as a company on April 26, 2013) it did not adopt “Takka” after Complainant starting using and protecting the AKKA Mark, rather before. That argument does not establish Respondent had prior rights or legitimate interests in the Domain Name in view of the evidence of record. As an initial matter, the record evidence establishes that Complainant had registered rights in its AKKA Mark considerably before Respondent was a registered company in April 2013. In fact, Complainant obtained its French trademark registration (no. 99786710) on April 9, 1999, as well as an International trademark registration (no. 1008290) on November 27, 2008. Furthermore, the evidence here demonstrates that Complainant was an established business under the AKKA Mark with an international presence at least as early as 2000 (exhibit graphs depicting global sales growth data since 2000; growth in stock market listing from the time Complainant went public in 2005; and the growth in the number of employees since 2008) well before Respondent registered its company name “Takka Technologies Inc.”. Respondent also maintains that in the Fongbé language (native to Respondent’s founders) “ta-ka” means “skull” and that this word is commonly used to designate ingenuity, smartness, and being willing to find a solution. He continues that the suffix “-non” means a person who acts with ingenuity – “Takkanon(s)” and that reference to that is on Respondent’s website. The Panel does not find a connection or even a suggestion of a connection on Respondent’s website between the term “ta-ka” and the concepts of ingenuity, smartness, and problem solving. Even if such a connection existed, it alone does not establish Respondent’s rights or legitimate interests under the Policy. Moreover, reference to the dictionary term “ta-ka” (or “taka”) does not explain why Respondent chose to register a domain name using the AKKA Mark which is differently spelled than “taka” and corresponds to a major player in Respondent’s business sector. Respondent also argues that it uses as its main domain name There is no evidence that Respondent had prior rights in AKKA and the little evidence of Respondent’s use of its company name “Takka Technologies” appears to be very recent, well after Complainant’s trademark registrations and its use of AKKA in commerce. Because Respondent has not rebutted Complainant’s assertions that he has not been using the Domain Name in connection with a bona fide offering of goods or services or that he is not making a legitimate noncommercial or fair use of the domain name. The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith Respondent registered the Domain Name on October 15, 2017, many years after Complainant began using the AKKA Mark (at least as early as 2000) and obtained its French trademark registration (no. 99786710) on April 9, 1999, and its International trademark registration (no. 1008290) on November 27, 2008. Given Complainant’s widespread and long-standing use of the Mark worldwide, the Panel finds it is highly unlikely Respondent – active broadly in the same technology sector – was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name is exactly the same as the AKKA Mark with the addition of a “t”, which is not persuasively explained. For example, the engraving in Respondent’s logo – a stylized head – looks more like an “x” than a “t”. And even if it were a “t” and the logo was created in the 2008-2009 timeframe (no clear evidence establishing this), it does not evidence Respondent’s legitimate interests or use of “TAKKA” under the Policy. Insofar as Respondent claims he added the “t” to the AKKA Mark to signify “technologies”, this indicates an awareness of Complainant considering Complainant’s use of the term “technologies” in its trade name. Respondent argues that he did not register and is not using the Domain Name in bad faith because, among other things: (1) the meaning of Takka to Respondent; (2) Respondent does not have a history of commercially speculating regarding the Domain Name; (3) Respondent uses the Domain Name on a regular basis especially in email accounts; (4) an average person cannot be confused in looking for AKKA Technologies regarding its services; and (5) there are other putative respondents owning domain names that are similar to the AKKA Mark. These arguments do not persuade the Panel in this proceeding on the paucity of evidence presented. The meaning of “Takka” to Respondent is unpersuasive for the reasons discussed above. And Respondent’s use of the Domain Name and email together regularly does not establish Respondent’s lack of bad faith, in fact using an email with the AKKA Mark only compounds confusion. The bottom line is that Respondent’s use of the Domain Name constitutes bad faith use because Respondent is using a confusingly similar Domain Name along with a similar email address in conjunction with a website that is offering similar products and services such as process optimization, digital transformation, and training/learning programs for commercial gain. The Panel therefore holds that Complainant has satisfied 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 Domain Name Harrie R. Samaras
2. When companies are listed, AKKA will be listed with the “A’s” while Takka will be listed in the “T’s”.
3. AKKA is a multibillion company with more than 22,000 employees, Takka has less than 10 Takkanons (presumably employees).
4. AKKA’s clients are major OEMs aerospace automotive, while Takka customers are small SMEs.
5. Complainant is in about 25 countries, while Respondent is in Quebec and certain places in Africa.
6. Complainant is a European company, while Respondent is an African company.
7. Complainant’s graphic charter is mostly grey and orange, while Respondent’s is blue.
8. Complainant has a multi-thousand [dollar] worthy website, while Respondent’s website has a single landing page with a very generic description of services in automatization offered.
9. Complainant’s main activities and revenue have always been the automotive and aerospace industries, while Respondent’s positioning has always been software especially software for digital transformation.
10. Neither Complainant nor Respondent sells consumer articles or is involved in consumer business, it is difficult to imagine a major OEM signing a contract with Respondent in error. Furthermore, in the area of services, the process of selection is quite standard and would include approval as a supplier.
Sole Panelist
Date: March 31, 2021
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