The Complainant is Akuo Energy SAS of Paris, France, represented by Maître Stéphane Colombet, France.
The Respondent is Viktor Cherkasov of Kharkov, Ukraine, represented by Steven Rinehart, United States of America.
The disputed domain name <akuo.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 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. The Center, noting formal deficiencies with the Complainant's Complaint, sent an email communication to the Complainant on July 16, 2018, inviting the Complainant to submit an amendment to the Complaint or an amended Complaint. In response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 17, 2018.
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, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Response was filed with the Center on August 6, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 15, 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.
The Complainant is a company based in France, which owns a trademark registration for the trademark AKUO under French Registration No. 3268251 dated January 19, 2004 for a range of environmental goods and services in the field of renewable energy.
The disputed domain name <akuo.com> was registered on October 7, 2012. At the time the Complaint was filed, the disputed domain name reverted to a blank page noted to be "under construction".
The Complainant asserts that the disputed domain name replicates the Complainant's registered trademark AKUO in its entirety, except for the addition of the extension ".com". The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name. He is not commonly known by the AKUO name or mark, and has never made any demonstrable preparation to use the disputed domain name in association with a bona fide offering of goods and/or services. The Complainant also submits that the Respondent registered the confusingly similar domain name for the primary purpose of selling, renting, or otherwise transferring the domain name to the Complainant for purposes of monetary gain.
The Respondent submits that the Complainant does not have exclusive rights in the mark AKUO, identifying five other entities which have filed trademarks containing the term AKUO. The Respondent claims that he was not aware of the Complainant or the Complainant's registered trademark AKUO at the time he registered the domain name <akuo.com>. Even now the Respondent asserts that he is unaware of the nature of the Complainant's business. The Respondent asserts that he has rights and a legitimate interest in the disputed domain name, as shown in Annex C and D to the Response, wherein the Respondent submits screenshots of the development of a website in association with the disputed domain name offering travel services. The Respondent asserts that he registered the disputed domain in good faith, because of its commercial value as a generic 4-letter domain.
The Respondent also raises a laches defense because the Complainant waited six years before it filed the present UDRP Complaint.
Finally, the Respondent claims that the Complainant is engaged in Reverse Domain Name Hijacking, based on the fact that the Complainant has misrepresented the date of the French trademark registration, and put forward unfounded claims.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant does have trademark rights in the mark AKUO by virtue of its trademark registration, namely French Trademark Registration No. 33268251.
The Panel finds that the domain name <akuo.com> is confusingly similar to the Complainant's registered trademark AKUO, as the domain name replicates the single word which comprises the Complainant's registered mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
In view of the findings under paragraph 6C, the Panel need not make a finding with respect to Rights or Legitimate Interests.
Bad faith registration and use of a domain name involves intentional interference with trademark rights of a complainant; that is the essence of an abusive registration under the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 3.0 and 3.1 summarize the criteria under which bad faith may be proven.
"(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Complainant to succeed in this element of a Complaint, it must prove the Respondent was or must have been aware of the Complainant's registered trademark at the time it acquired the disputed domain name, and then used the domain name to trade on the reputation of the Complainant or otherwise interfere with the Complainant's business, as set out in the Policy.
On the basis of the evidentiary record as filed, the Panel finds that the Respondent did not register and has not used the disputed domain name in bad faith. The Respondent has asserted that he was not aware of the Complainant or the Complainant's registered trademark at the time he registered the disputed domain name. Nothing in the materials is inherently inconsistent with this assertion. The Respondent seems to reside in the Ukraine, according to his submissions, and the Complainant's place of business mainly appears to be France, based on its registered address. The Complainant has not produced any evidence to demonstrate the scope or territory of its business presence.
The Panel notes that the Complaint in these proceedings contains the briefest of arguments and virtually no evidence beyond the trademark registration. There is no supporting evidence as to the Complainant's reputation in France or elsewhere, and the extent of its business by way of sales and/or promotion or advertising figures. In the absence of any such evidence, the Panel has no tangible reason to doubt the Respondent's assertion that it was unaware of the Complainant's trademark. However, the Panel wishes to acknowledge that its decision is based on the limited evidentiary record that exists in this proceeding, and that different conclusions might be reached in a litigation context where the rights and claims of the parties could be fully explored. The Panel also notes that the Complainant's evidence shows no use of the disputed domain name in connection with an operating website, whereas the Respondent shows a travel site - which appears to be a beta version of a future website. Based on the evidence as filed, the Complainant has not made out its case. If further facts or behavior show that the Respondent knew of the Complainant or provided false evidence, a later panel may view the issues in a different light.
Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(iii) of the Policy.
The Panel notes that the Complainant did make an error in the Complaint. The Complainant's French Trademark Registration No. 3268251 was registered on January 19, 2004, not January 19, 2001. However, the Panel finds that this error (and the other inadequacies of the Complainant's evidence) do not constitute the kind of intentional misrepresentation that would support a finding of RDNH. Accordingly, the Panel concludes that a finding of Reverse Domain Name Hijacking is not warranted in this case.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: August 28, 2018
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