ECOM Electronic Components Trading GmbH v. Alta R., Alta R. Services
Case No. D2008-1264
1. The Parties
The Complainant is ECOM Electronic Components Trading GmbH of Germany, represented by Heisse Kursawe Evershed of Germany.
The Respondent is Alta R., Alta R. Services of Oregon, United States of America, represented by Patel & Alumit, P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <axega.com> (“the Domain Name”) is registered with eNom, Inc. (eNom).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 19, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On August 19, 2008, eNom, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant, and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2008. The Response was filed with the Center on September 18, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 6, 2008. 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.
Pursuant to paragraph 15(b) of the Rules, the due date for decision was extended until October 27, 2008.
4. Factual Background
The Complainant
The Complainant is a German Corporation. It holds German, European, and international registrations of the word mark AXEGA. The German registration, effective from July 9, 2003, covers data processing equipment and computers, computer software, electronic components (in particular transistors, microprocessors, memory modules, and storage media) all in international class 9, telecommunication services in international class 38, and the customized assembly of electronic components in international class 42. The Community Trademark was filed on July 8, 2003, and registered on September 16, 2004. The international registration (with designations for Switzerland and Liechtenstein) was registered on January 23, 2006.
The Complainant says that it has been using its trademarks at least since their registration, to promote its computer memory products.
The Complainant holds the German country code domain name <axega.de>. The Complainant registered that domain name on March 21, 2006.
The Complainant says that it has never granted the Respondent any license or other form of permission to use its AXEGA mark.
The Complainant says that “AXEGA” is a made-up word, with no meaning other than to denote the Complainant's products.
The Respondent and the Domain Name
The Domain Name was registered on December 31, 2005.
The Respondent, a domain name reseller for eNom.com, and the owner of over 1,000 domain names, says that it was not aware of the Complainant or the Complainant's alleged trademark when it registered the Domain Name. It says that it first knew of the Complainant and its claimed trademark rights when it received the Complaint in this proceeding, on or about August 18, 2008.
The Respondent says that it acquired the Domain Name “simply because it thought the Domain Name would make for a brand-worthy name in the online game and online video market”. The Respondent acknowledges that the Domain Name has no meaning, and is not an acronym, or an abbreviation for other words.
Use of the Domain Name before July 2008
The Complainant says that, until the end of July 2008, the Domain Name was parked on a server at Parked.com.
While the Domain Name was parked with Parked.com, it operated as a landing page, providing links to third party sites which were available to site visitors in the languages of their countries of origin. The Complainant says these links covered a broad range of topics, including cars, books, business, computer, dating, furniture, eating and drinking, vacations, multi-media and health and beauty information. The Complainant says that clicking on these links took the site visitor either to further commercial advertisements, or directly to websites offered by third parties.
The Respondent does not deny those allegations about its use of the Domain Name prior to July of 2008. It comments that millions of domain names reside on the website at Parked.com prior to being used, and that the owners of the individual domain names have no input regarding what types of advertisements or phrases are placed on their domain names.
Use of the Domain Name after July 2008
It is common ground that the Respondent's use of the Domain Name changed in July of 2008.
The Complainant says that the appearance of the website at the Domain Name (“the Respondent's website”) changed, and the word “axega” was added, followed by the trademark sign ™. According to the Complainant, the Respondent's website still mainly offered links to third party web content, without offering goods or services on its own, but the links were now focused on online games. There were a few online games available to be played on the Respondent's website itself, but the only way to reach those online games was to click on the small area next to the green and yellow “axega” script nameplate (an area which constantly changed in color). Clicking on the links which had been put on the Respondent's website, did not (according to the Complainant) take the site visitor to online games, but to YouTube videos of those games, or to other videos (or in the case of some links, new browser windows displaying the websites of sponsors). The Complainant says that several links on the Respondent's website that indicated a connection to online casino games or poker, in fact led to a website at “www.metcafe.com” offering video entertainment that had nothing to do with casino games.
In addition, the Complainant says that there were numerous other hyperlinks to websites of advertising partners, whether direct or through Google.
The Respondent says that, from July 16, 2008, the Domain Name has been used in connection with the offering of online games, providing information on online games, providing online video content, and offering advertising to third parties by means of sponsorships or advertisement banners.
In contrast with the Complainant's assertions, the Respondent says that the Respondent's website contains at least eighteen pages of online games, with at least ten games on each page. The Respondent says that these games are accessible by simply clicking anywhere in the banner featuring “AXEGA.COM” in the top third to half of the screen.
Contact Details for the Domain Name
The Complaint asserts that the contact details provided by the Respondent in the Whois particulars for the Domain Name are misleading, with various addresses in Portland, Oregon, Seattle, Washington, and in the State of Wisconsin. The Respondent acknowledges that its business address is in Portland, Oregon, and that its telephone number has an area code from the State of Washington. The Respondent has also arranged various changes or redirections of its email address.
The Complainant refers to an individual called Bill Said as apparently being somehow connected with the Domain Name; the Respondent explains that Mr. Said was previously associated with the server host for the domain name, <viasonic.net>, but te Respondent no longer owns that server, and the various individuals identified by the Complainant relate to a domain name previously hosted on that server. The Respondent says that, with the exception of one bona fide change in contact email address, the Whois information for the Domain Name has remained consistent. The Respondent says that anyone wanting to contact the owner of the Domain Name or the Respondent will be able to do so without difficulty.
Pre-Commencement Communications between the Parties
The Complainant says that, several months ago, it tried to enquire of the Respondent about the Domain Name. The Respondent says that this contact occurred (by email) on January 25, 2008. The email was addressed to what was then the listed email address for the registrant of the Domain Name. The Respondent responded through his own personal email address, and continued to use that personal address throughout the ensuing communications between the parties.
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is identical to the Complainant's AXEGA mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) The Complainant has never granted the Respondent a license or other form of permission to use the Complainant's AXEGA mark.
(ii) The Respondent is not registered as the holder of any AXEGA trademark, nor has it filed for registration of that expression with any major Trademark Office (including the United States Patent & Trademark office).
(iii) The Respondent is not commonly known by the Domain Name.
(iv) The Respondent does not offer, and has not offered, any original content to visitors to the Respondent's website in the form of either goods or services.
(v) The Respondent is creating a likelihood of confusion with the Complainant's trademarks.
(vi) The Respondent's use of the Domain Name has not been in connection with a bona fide offering of services. The parking of the Domain Name in the period prior to July 2008 shows that the Respondent had the intention to attract as many visitors as possible to the Respondent's website and direct them to one of its advertising partners.
(vii) By the inclusion of links on the Respondent's website to computer producers and/or suppliers, the Complainant also provided links to the Respondent's competitors.
(viii) The change to the Respondent's website effected in July of 2008 has not resulted in the use of the Domain Name for the provision of any bona fide offering of goods or services. The Respondent's website is designed to bait visitors to follow the links to websites displaying content offered by third parties.
3. The Domain Name was registered and is being used in bad faith:
(i) By offering the content of the Respondent's website to Internet users at a domain name which bears the Complainant's trademark, the Respondent has caused these Internet users to be confused and deceived into mistakenly believing that the Respondent and its activities are offered, authorized, licensed or sponsored by the Complainant, or are otherwise connected, associated or affiliated with the Complainant. Diversion of prospective customers through the use of a minimalist website constitutes bad faith. Even if a user who arrives at one of the linked Internet sites concludes that the site is not what he or she is looking for, the Respondent has already succeeded in its purpose of using the Complainant's trademark to attract the user, with a view to commercial gain.
(ii) The Respondent has deliberately concealed the contact details of a natural person responsible for the Domain Name, in the Whois particulars for the Domain Name. The Respondent has also behaved in a confusing manner with regard to its email addresses. While the Complainant cannot prove that by contacting the email address mentioned as the registrant's contact address it has not reached the correct contact person, it cannot be certain that it has. The Complainant has provided misleading contact information systematically and deliberately, in bad faith.
(iii) The Respondent has been stockpiling domain names. It owns approximately 1,117 other domain names. Such “stockpiling” calls into question the bona fides of the Respondent (citing IG Index Plc v. Fruit Group Inc.,
WIPO Case No. D2000-1413).
(iv) The Respondent's actions in changing its email address shortly after being contacted by the Complainant, and moving from the Parked.com server to the <viasonic.net> server after it, presumably, noticed increased traffic to the Respondent's website caused by the Complainant's search, are manifestations of cyberflight, and constitute further indications of the Respondent's bad faith.
B. Respondent
The Respondent contends:
1. It acknowledges the Complainant's German, European, and International trademark registrations for the mark AXEGA. However, there is no evidence of the Complainant's use of its trademarks, particularly in the period prior to the registration of the Domain Name on December 31, 2005. The validity and extent of the Complainant's trademark rights are questionable. Nor is there any evidence of consumer confusion attributable to the Respondent's use of the Domain Name. While the Domain Name may be viewed as similar to the Complainant's AXEGA designation, the AXEGA designation and the Domain Name are used in connection with entirely different goods and services. There is therefore no potential for, nor any allegations or evidence of, confusion among consumers.
2. The Respondent has rights and a legitimate interest in respect of the Domain Name, having regard to the following:
(i) Prior to receiving any notice of the dispute, the Respondent had been using the Domain Name in connection with a bona fide offering of services. That bona fide offering of services consisted in the offering of online games, providing information on online games, providing online video content, and offering advertising to third parties by means of sponsorships or advertisement banners. Those services were offered from July 16, 2008, and the first notice the Respondent had of the present dispute was when the Respondent received the Complaint on or about August 18, 2008.
(ii) The online games have been provided by the Respondent (through the Respondent's website), as a substantial, bona fide service. The links on the Respondent's website to sites providing information relating to online games, do themselves constitute the provision of a service.
(iii) The Respondent did not obtain a license from the Complainant to use its trademarks, because the Respondent had never heard of the Complainant. The Respondent chose the Domain Name simply because it thought the Domain Name would make for a brand-worthy name in the online game and online video market.
(iv) There was no need for it to obtain a license from the Complainant.
(v) The Complainant's allegations relating to the parking of the Domain Name prior to July 2008, are irrelevant, as the Respondent began using the Domain Name in connection with the provision of bona fide services prior to any notice of a dispute from the Complainant. Further, it is well known that owners of individual domain names have no input regarding the types of advertisements for phrases that are placed on their domain names when they are parked with a parking site.
(vi) Although it has not filed an application to register AXEGA as a trademark, the Respondent has acquired common law trademark rights in that expression in the United States. In the United States, common law trademark rights attach the moment a designation is used as a trademark in connection with the offering of goods or services in interstate commerce. Consequently, the Respondent's common law trademark rights in “Axega” and “Axega.com” commenced the day the Respondent's website was updated, namely July 16, 2008.
3. The Domain Name should not be considered as having been registered and used in bad faith, having regard to the following matters:
(i) The Domain Name was not registered in bad faith. There is no evidence indicating that the Complainant's products bearing the AXEGA mark have been sold in the United States, and the Respondent had no knowledge of the Complainant.
(ii) The Respondent did not register the Domain Name primarily for the purpose of disrupting the business of a competitor. The Complainant and the Respondent are not competitors, and the Respondent was not aware of the Complainant or its specialized business when the Domain Name was registered. In view of those facts, it is highly improbable that the Respondent registered the Domain Name in bad faith.
(iii) The Respondent's use of the Domain Name does not create a likelihood of confusion with the Complainant's alleged trademark. The Complainant's goods are not related to the Respondent's services, so there is no possibility of confusion among consumers.
(iv) The Complainant's characterization of the Respondent's website as minimalist, is improper and entirely inappropriate. The Respondent's website offers at least 19 pages featuring online games.
(v) There has been nothing confusing or misleading about the contact details provided by the Respondent.
(vi) The fact that the Respondent owns numerous domain names is not evidence of bad faith. The sale of domain names is a legitimate business, and there is no evidence suggesting that the Respondent has engaged in a pattern of any improper conduct. The Complainant's allegations of “stockpiling” domain names are misconceived.
(vii) The Respondent has not offered the Domain Name for sale. The Respondent expressly declined an offer to purchase from the Complainant's undercover agent.
(viii) The Complainant's allegations of cyberflight are unfounded.
6. Discussion and Findings
A. What the Complainant Must Prove – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
B. Identical or Confusingly Similar
The Complainant has clearly proved this part of the Complaint. It has established that it is the proprietor of the mark AXEGA in Germany, the European Union, and internationally under the Madrid system of International Trademark registration. The “.com” suffix is not taken into account in the comparison, and when it is put aside, the Domain Name is seen to be clearly identical to the Complainant's mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [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.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Complainant has not authorized the Respondent to use its AXEGA mark, and the Domain Name is identical to that mark. There is no suggestion of the Respondent being “commonly known by” the Domain Name, so paragraph 4(c)(ii) of the Policy could have no application. Likewise, paragraph 4(c)(iii) of the Policy could not apply – the Respondent's use of the Domain Name is clearly a business use, which could not be described as a “… noncommercial or fair use”.
Those circumstances provide sufficient prima facie proof that the Respondent has no right or legitimate interest in respect of the Domain Name. The onus therefore shifts to the Respondent to show, by plausible evidence, that it has such a right or interest.
In the Panel's view, the Respondent has failed to produce any such plausible evidence.
First, the Respondent's denial of knowledge of the Complainant, and its explanation for its choice of the Domain Name (the Respondent “thought that the Domain Name would make for a brand-worthy name in the online game and online video market”), are just not credible. “Axega” is not some commonly-used descriptive expression which anyone might think of – as the Respondent acknowledges, it is a made-up word, and the chances of the Respondent having thought of that word independently, without any knowledge of the Complainant or its mark, must be exceedingly small.
Secondly, the Respondent has not contested the Complainant's assertion that, while the Domain Name was parked with Parked.com, it contained some links to third party sites operated by the Complainant's competitors. The Respondent cannot disclaim responsibility for those links (see in that regard Grisoft, s.r.o. v. Original Web VenturesInc.,WIPO Case No. D2006-1381; Starwood Hotels & Resorts Worldwide, Inc.,Sheraton, LLC, and Sheraton International Inc. v. Jake Porter,
WIPO Case No. D2007-1254; NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ,
WIPO Case No. D2007-1079, and The Press Association Limited v. FIG Vietnam,
WIPO Case No. D2008-1269 – the registrant of a disputed domain name is “ultimately accountable for the use of the Domain Names, even if an employee (or, more likely, an algorithm) of an online affiliate advertising network selected the particular advertisements to display.”) While the Registrar may have physically provided the advertising links, the Respondent must be taken to have known and intended that links would be provided (through key words, metatags, or otherwise) to sites having connections with any fields of commercial activity in which the expression “Axega” was prominent.
Thirdly, some of the language used in the Response suggests that the Respondent's denial of knowledge is rather less than emphatic. For example, “there is no evidence indicating that the Complainant's products bearing the AXEGA mark have been sold in the United States”, and “… in view of those facts, it is highly improbable that the Respondent registered the Domain Name in bad faith” (the Panel's emphasis in each case).
Fourthly, the Respondent has not explained why, if it thought when it acquired the Domain Name on December 31, 2005 that the Domain Name “would make for a brand-worthy name in the online game and online video market”, it did nothing to advance that objective for over 2½ years. Furthermore, it seems an improbable objective – the Respondent describes its business as that of a domain name reseller, not as an operator of online game sites. As a domain name reseller, the Respondent's business presumably involves the acquisition of domain names with a view to resale at a profit, and/or deriving advertising revenue by pointing the acquired domain names to websites which contain revenue-generating advertising links. The Respondent's initial use of the Domain Name (pointing it to the Parked.com website) seems consistent with that business model. Establishing an online game website at the Domain Name, does not.
Having regard to those considerations, the Panel finds, on the balance of probabilities:
1. The Respondent knew of the Complainant and its mark when it registered the Domain Name.
2. The Respondent registered the Domain Name with knowledge that the Respondent's website would attract Internet users looking for websites owned by or associated with the Complainant.
3. The Respondent knew that this would generate increased traffic to the Respondent's website, and that at least some visitors mistakenly arriving at the Respondent's website would click on advertising links to third party websites.
4. In the absence of evidence to the contrary, the Panel infers that the Respondent was deriving pay-per-click or other revenue from permitting advertising links to be placed on the Respondent's website.
5. The Respondent acted in bad faith in registering the Domain Name, and in using the Domain Name for at least the first 2½ years after registration.
However, that is not the end of the matter. The Respondent has a second line of argument. It argues that, whatever may have been the case before July 16, 2008, from that date on it has been using the Domain Name in connection with a bona fide offering of services, namely online games, and that it had been doing that for a little over a month before it first received notice of the present dispute. It says, therefore, that it is entitled to the safe harbor protection of paragraph 4(c)(i) of the Policy.
It is an interesting issue. Certainly it is possible for a respondent who has registered a domain name in bad faith and used it in bad faith for some period, to subsequently acquire a right or legitimate interest – the right or legitimate interest need only exist at the date the complaint is filed (Lonely Planet Publications Pty Ltd v Mike Tyler,
WIPO Case No. D2004-0670). The question, then, is whether the Respondent's changes to the Respondent's website on July 16, 2008 effectively “cured” its earlier bad faith (mala fide) registration and use of the Domain Name.
In the Panel's view, the answer to that question is “no”. If it was bad faith use of the Domain Name before July 16, 2008 to trade off the Complainant's goodwill in its AXEGA mark by attempting to attract confused Internet users to the (revenue-generating) advertising links then on the Respondent's website, it was equally bad faith use to trade off the Complainant's goodwill in its AXEGA mark by attempting to attract confused Internet users to the (revenue-generating) online games (and some third party advertising links) on the Respondent's website, after July 16, 2008.
A use which constitutes bad faith use under paragraph 4(b) of the Policy can never be a use “in connection with a bona fide offering of goods or services”. Accordingly, the Panel finds that the Respondent's use of the Domain Name after July 16, 2008 does not come within paragraph 4(c)(i) of the Policy.
Finally, under the “Rights or Legitimate Interests” heading, the Respondent claims that it is entitled to common law trademark rights in the mark AXEGA in the United States, derived from its use of that expression after July 16, 2008. It asserts that its common law right accrued from its first use of the mark, namely from July 16, 2008. It acknowledges that it has made no application to register the claimed mark.
The onus of proof in this part of the proceeding is on the Respondent, and the Panel is not persuaded, on the evidence produced, that the Respondent is entitled to any such rights.
Certainly, common law trademark rights may be acquired by use in the United States of America – for a recent endorsement of that possibility, see the recent three-member panel decision in Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD. ElaineMaria Gross,
WIPO Case No. D2008-1010. But it is immediately apparent that the Respondent's “common law trademark” argument, if it were accepted, would provide the Respondent with a “back door” route around the bona fide use qualification in paragraph 4(c)(i) of the Policy. Indeed, every cybersquatter who had been using a disputed domain name mala fide, would be able to contend that, although the use was not bona fide, it nevertheless provides a sufficient basis for a claim to a right or legitimate interest. Especially in a case such as this, where the AXEGA mark appears to be inherently distinctive, and United States trademark law might not require much if anything by way of proof that the claimed mark has acquired a “secondary meaning” through extensive use, the argument raises a concern that people who register domain names abusively, with the express purpose of trading off the goodwill in a trademark owned by a party in another jurisdiction, may avoid the operation of the Policy by establishing some minimal business use of the disputed domain name, in a jurisdiction where the trademark owner does not have rights in the mark. Such a practice would not by itsef create rights or legitimate interests under the Policy.
Consistent with those concerns, panels deciding cases under the Policy have tended to regard respondents' claims to have acquired “last minute” trademark rights, with some suspicion, even where the respondent has acquired a registered trademark. This Panel reviewed some of the earlier cases on the point, in the following terms, in Uponor Oyj and Uponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd.,
WIPO Case No. D2008-0209:
“A number of Panel decisions under the Policy have considered whether a respondent's ownership of a registered trade mark corresponding to the disputed domain name, is sufficient on its own to establish a right or legitimate interest under Paragraph 4(a)(ii) of the Policy.
One of the early cases, was Madonna Ciccone p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847. In that case, the panel said:
‘It would be a mistake to conclude that mere registration of a trade mark creates a legitimate interest under the Policy … To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.'
The issue was considered in depth in the later case of BECA Inc v. CanAm Health Source Inc, WIPO Case No. D2004-0298. The Panel in that case referred to the decision in Madonna Ciccone, and also to the early Panel decision of ISL Marketing AG, and The Union des Associations Européennes de Football v. The European Unique Resources Organization 2000 B.V., WIPO Case No. D2000-0230. (The Panel in the “Euro 2000” case had come to the conclusion that, while a registration of a trade mark could show that a respondent had an interest in the disputed domain name, not all interests are “legitimate”. The Panel had noted that the respondent's United States trade mark application had been filed after it had received the complainant's cease and desist letter, and concluded that it would be dangerous to adopt any general principle that registration of a disputed domain name could be retroactively legitimatized simply by filing a fresh trademark application in a jurisdiction other than those where the complainant's mark was registered. The Panel noted that the owner of every contested domain name would always easily find at least one register where the complainant's mark was not registered.)
The Panel in BECA Inc. drew the following conclusions from the earlier cases:
1. When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a Panel can, in an appropriate case, question the legitimacy of a trade mark relied upon by a respondent. The mere fact that a trade mark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the Policy. In a case where, in the opinion of the Panel, a trade mark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trade mark can be disregarded.
2. The chronology of the relevant events is an important factor in determining whether the application to register the trade mark is bona fide, or merely a way of bolstering the Respondent's domain name registration. A trade mark application made subsequent to notice of a dispute or the domain name registration, may indicate a lack of legitimate interest.
3. The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant's rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
4. The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration, may indicate whether the trademark application or registration is “legitimate”.
5. Trademark rights are territorial in nature. National trademark laws often permit a party to obtain registered trade mark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trade mark having seen the use of that name in another jurisdiction. This is particularly so where the name in question is quasi-generic in nature. These factors may also be relevant to the question of whether an application for a trademark registration should be treated as being sought merely to bolster a domain name registration.
6. It is one thing to disregard a trade mark registration when that registration is no more than a device to bolster a registration of a domain name. It is quite another to disregard a trade mark registration where it is claimed that the registration is for some other reason not bona fide, and/or it is claimed that the registration is invalid. To do so would involve making a decision on matters that impinge on the field of competence of national courts or trade mark registries.
In Westec Interactive Security, Inc v. Express Post Limited (Westec Division), WIPO Case No. D 2005-0811, the Panel noted that there was nothing in the case before it to suggest that the respondent's trade mark registration was anything other than genuine, and that the respondent therefore had rights in respect of the disputed domain name. However, the Panel went on to say: “The Panel might well have come to a different conclusion if there were any suggestion that the Respondent had registered the trade mark after having acquired knowledge of the complainant's interest in the name …”
More recently, the Panel in Ribbel International Limited v. Ribbel Medizintechnik GmbH, WIPO Case No. D2005-1183, noted:
‘Ordinarily, provided there are no contradicting circumstances, if a respondent proves that it has a registered trade mark, it also demonstrates a legitimate interest in the domain name, and a complaint would therefore fail.'”
In this case, the Panel is satisfied that the Respondent knew of the Complainant and its AXEGA mark throughout. The Respondent has not explained why, after 2½ years of leaving the Domain Name parked with an advertising site, it (a reseller of domain names) elected to enter into an apparently new field of commercial endeavor, namely the provision of an online games website. The Respondent had been approached in January of 2008 with an offer to buy the Domain Name, and it may be that the Respondent found out, or guessed, that the Complainant was behind that offer. In any event, the Respondent appears to be an experienced operator in the field of domain name buying and selling, and it would very probably have been aware that it was exposed to the risk of losing the domain name if the Complainant were to make a complaint under the Policy.
The Panel has visited the Respondent's website, and noted that there are now a number of games which can be played online at the site. However, the Panel accepts the Complainant's submission that the focus of the Respondent's website is mostly now on links to online gambling-related websites or pages. (There are also links to third party sites, dealing with unrelated subjects, such as “Hybrid Car Reviews”, “Fashion Weekly”, and “Latino Music”). The effort employed in providing actual online games at the Respondent's website appears to have been minimal. Some of the links to games which the Panel observed when he visited the site, were in a foreign language or languages, and others were in ungrammatical, repetitive English. These links exhibited all the signs one would have expected to see on a perhaps hastily assembled website which had been designed to create at least the appearance of some apparently legitimate, independent business use (i.e. other than mere re-direction to third party websites), without serious long term commercial intent.
As the Panel has noted, the onus of proof is on the Respondent on this part of the proceeding, and it was for the Respondent to provide evidence (a) that it is entitled to claim common law trademark rights in an “Axega” mark, and (b) that it did not acquire any such rights only or substantially for the bad faith purpose of bolstering its claim to retain a domain name which it registered and has been using in bad faith.
In view of the Panel's finding that the Respondent had been acting in bad faith in the period up until July 2008, it was critically important on the second of those issues, that the Respondent provide a clear and compelling reason for the change of use of the Respondent's website in July 2008. The Respondent has offered no reason for the change.
Weighing all the factors, the Panel is not persuaded, on the balance of probabilities, that the changes made in July 2008 were not intended primarily to provide the Respondent with a defense in the event of a complaint being filed under the Policy. The Respondent has also failed to prove that any common law trademark right it may have acquired in the United States (and the Panel makes makes no finding on the existence or otherwise of any such right), has been obtained in good faith for the purpose of making a bona fide use of the mark in that country, and not for purposes of attempting to show rights or legitimate interests solely for a Policy proceeding.
Applying the principles outlined in cases such as Madonna Ciccone, Beca Inc., and Westec Interactive Security Inc. (supra), the Panel finds that the Respondent's claim to a right or legitimate interest based on a claimed common law “Axega” trademark, has not been proven.
The Respondent has not advanced any other basis for claiming a right or legitimate interest in respect of the Domain Name, so the Complainant also succeeds on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. One of those circumstances is:
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line 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 [the respondent's] website or location.
For the reasons which are set out in section 6.C. of this decision, the Panel is satisfied that the Domain Name was registered, has been, and is being used, in bad faith. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy quoted above – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's AXEGA mark, as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The Complainant having proved each of the elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <axega.com> be transferred to the Complainant.
Warwick Smith Sole Panelist
Date: October 27, 2008
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