The Complainant is Euronext N.V. of Amsterdam, the Netherlands, represented by NLO Shieldmark B. V., Netherlands.
The Respondent is Huang tian wei of shen zhen shi, China, represented by Haiwen & Partners, China.
The disputed domain names <aex.com>, <aex-global.com> and <aex88.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018.
On July 27, 2018, the Center transmitted an email to the Complainant acknowledging receipt of the Complaint, noting that the Complaint was a refiled Complaint regarding one of the domain names (<aex.com>) and that the Complainant had not pleaded grounds that might justify entertaining the refiled Complaint, and inviting the Complainant to either re-file the Complaint, excluding the disputed domain name <aex.com>, or alternatively provide grounds to accept the re-filing on a prima facie basis, subject to the panel’s determination, on appointment.
On August 13, 2018, the Complainant’s representatives sent an email communication to the Center with grounds in support of the refiled Complaint.
On August 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 15, 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 verified that 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 proceeding commenced on August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. On September 4, 2018, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until September 13, 2018, under paragraph 5(b) of the Rules. The Response was filed with the Center on September 13, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 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.
The Complainant is a company incorporated in the Netherlands and the operator of stock markets in Amsterdam, Paris, Lisbon and Brussels. The Complainant operates the Amsterdam Stock Exchange under the trade mark AEX (the “Trade Mark”) and is the owner of registrations for the Trade Mark, including Benelux registration number 0542552, with a registration date of September 1, 1994; and international registration number 620918, with a registration date of June 21, 1994.
The Respondent is an individual resident in Shenzhen, China and appears to be a prominent individual in the field of cryptocurrency. According to the Respondent, he founded Bit Age, an assets exchange platform for cryptocurrencies such as bitcoin and ether, in China in 2013 and, in 2017, transferred the digital asset exchange business of Bit Age to an offshore company, Bit World Investments Limited (“Bit World”).
The disputed domain name <aex.com> was registered on March 25, 1998 and purchased by the Respondent in September 2017. The disputed domain names <aex-global.com> and <aex88.com> were both registered by the Respondent on the same date, March 9, 2018.
The Respondent has used the disputed domain name <aex.com> since October 2017, in respect of the website used to conduct the digital asset exchange business of Bit World (the “Website”). The disputed domain names <aex-global.com> and <aex88.com> both resolve to the Website.
The Complainant advances a number of considerations. In essence, the Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondent contends that the Complaint is a refiled complaint, as it is a subsequent complaint filed by
the same Complainant against the same Respondent in relation to the same domain name, <aex.com>. The Respondent contends that the Complainant has failed to satisfy the requirements for a refiled complaint and that the Complaint should accordingly be denied.
The Respondent also advances a number of considerations on the merits. In essence, the Respondent contends that the disputed domain names are not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have not been registered and used in bad faith.
On February 16, 2018, the Complainant filed a complaint with the Center against the Respondent (Euronext N.V. v. Huang tian wei, WIPO Case No. D2018-0348) seeking transfer of the disputed domain name <aex.com> (the “Previous Proceeding”). On April 12, 2018, the panel in WIPO Case No. D2018-0348 rendered its decision in which the complaint was denied (the “Previous Decision”). The panel found for the Complainant in respect of the first two elements in paragraph 4(a) of the Policy, but not in respect of the third element (bad faith registration and use).
Only in exceptional circumstances will panels accept refiled complaints. See the following extract from WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18:
“Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis.
In the refiling itself, a complainant must clearly indicate the grounds it believes would justify acceptance of the refiled complaint…”
The Complainant has failed to indicate express grounds in the Complaint itself in support of the refiling of the Complaint. The only, obtuse, reference to the Complaint being a refiled complaint is in the submissions regarding the language of proceeding section of the Complaint, as follows:
“In the present case, the content on the website provided under the domain name is written in the English language. Also the previous UDRP we filed against this registrant has been in the English language. The Respondent did not have any objections with regard to the language of the Proceedings.
Therefore English would be the language which both parties can apparently understand well…”
Notwithstanding the Complainant’s failure to include in the Complaint any submissions or evidence in support of the refiling of the Complainant, the Panel considers in all the circumstances it is appropriate to address the grounds in support of the refiling of the Complaint which the Complainant subsequently submitted.
The Complainant firstly contends that the panel in the Previous Decision wrongly found that the Complainant did not possess any registrations for the Trade Mark in China. The Panel has carefully reviewed the Previous Decision and is unable to find any such explicit finding; in any event, this question is immaterial to the issue of refiling.
The second ground relied upon by the Complainant is the assertion that the Respondent has only recently started using the AEX INDEX trade mark on the Website (AEX INDEX being a registered trade mark of a subsidiary of the Complainant) in a highly similar way to the manner in which the Complainant uses the AEX INDEX trade mark; and that the Respondent has also just recently started “coat tail riding” by referring to the AEX INDEX trade mark on the Website. The Complainant relies on an undated screenshot of the Website filed as an Annex to the Complaint in support of this second ground (the “Screenshot”).
The Complainant has not placed before the Panel evidence of the content of the Website prior to the filing of the Previous Proceeding; and the Screenshot relied upon by the Complaint is in any event undated. The Panel notes that the panel in the Previous Decision found that “the Respondent’s website uses the name “AEX” in several places”. However, the Panel notes that the Response appears to acknowledge that the Respondent did not start the use of the term AEX Index on the Website until after the date of the Previous Decision. The Panel notes that the Respondent also submitted evidence of the use of the Website which seems to corroborate the change in the use of the Website.
In light of the above, and notwithstanding the Complainant’s failure to comply with established UDRP precedent by including grounds in support of the refiling in the Complaint itself, the Panel finds that the Complainant has established a prima facie case that that there is new material evidence which was reasonably unavailable to the Complainant during the original case.
For the foregoing reasons, noting also the inclusion in the Complaint of the two domain names registered by the Respondent since the commencement of the Previous Proceeding, the Panel accepts the refiled Complaint.
In view of the findings made out in the Previous Decision, this Panel will only make a finding on the disputed domain name <aex.com> in the discussion concerning the third element under paragraph 4(a) of the Policy.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names <aex-global.com> and <aex88.com> incorporate the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7) together with the word “global” and the numbers “88”, respectively.
Where a relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names <aex-global.com> and <aex88.com> are confusingly similar to the Trade Mark.
The evidence demonstrates that the Respondent commenced using the Website and the disputed domain name <aex.com> prior to the filing of the Previous Proceeding. The Respondent denied prior knowledge of the Trade Mark in the Previous Proceeding.
The disputed domain names <aex-global.com> and <aex88.com> were registered after the Previous Proceeding had been filed, and shortly before the Previous Decision was rendered. Both of these domain names resolve to the Website.
The Respondent contends that it registered the disputed domain names <aex-global.com> and <aex88.com> to be used in respect of its cryptocurrency related Website, and that the additional word “global” stands for “the Respondent’s desire to create a global and professional digital assets exchange platform”; and that “88” was chosen as it is a lucky number in Chinese culture.
In any event, the Panel declines to make a finding on this element, in light of its findings under the third element below.
On the question of bad faith registration and use, the Panel would respectfully refer to and adopt the following reasoning of the panelist in the Previous Decision, both in respect of the disputed domain name <aex.com>, and in respect of the disputed domain names <aex-global.com> and <aex88.com>:
“The Complainant suggests that the Respondent was aware of the Complainant’s AEX mark and, being in a “similar” business, sought to create confusion and “subvert” the Complainant’s business. The argument is not persuasive. The three-letter string is not especially distinctive. “EX” is used as an abbreviation for a financial “exchange” in many contexts, as in “AMEX” for the American Stock Exchange and “FOREX” for foreign exchange. “AEX” could indeed be suggestive of an automated exchange, as the Respondent claims. The Complainant asserts that the color scheme of the Respondent’s website is similar to its own, but there is no obvious similarity between the two websites in color, design, or content. The Complainant’s website provides information about traditional capital markets and stock exchanges, while the Respondent’s website is a trading platform for nontraditional cryptocurrencies such as Bitcoin and Ether. More fundamentally, in the circumstances of this case it is not clear to the Panel why the operator of a Chinese cryptocurrency trading platform would think it was competing with the Amsterdam stock exchange, desire to disrupt its business, or consider its trademark so appealing to Bitcoin traders that it would be worthwhile creating confusion. The Respondent denies such intent, and the record does not cast doubt on this claim.
The Panel finds that the Complainant has not met its burden of establishing the probability that the Respondent registered and used the Domain Name in bad faith.”
The Panel has considered carefully whether the changes to the Website after the date of the Previous Decision (the Respondent’s commencement of use of the term “AEX Index” in addition to the prior (and ongoing) use of “AEX”) provide sufficient evidence for a finding of bad faith registration and use. The evidence demonstrates that the home page of the Website contains a wide range of information and a trading platform regarding non-traditional cryptocurrencies, including current market prices for various cryptocurrencies. The home page of the Website also contains, in the top right hand corner, an update regarding the “AEX Index”. There is no evidence before the Panel as to whether any of the other pages of the Website contains the “AEX Index” update. The AEX Index update does not form a prominent part of the home page. On the pleadings, it is not clear to the Panel whether this update refers to an index produced by the Respondent (as the Respondent suggests), or rather to the AEX INDEX maintained by the Complainant. For the latter event, the Panel notes that it is not uncommon for currency information and trading websites to contain updates for various stock market indices. Whilst such use arguably gives rise to licensing issues, the Panel is unable to determine, on the status of the evidence in the present proceeding, that the Respondent’s use of the AEX Index update on the home page of the Website amounts to evidence of bad faith registration and use of the disputed domain names.
In all the circumstances, the Panel is unable to conclude, on the evidence, that the Respondent has registered and used the disputed domain names in order to subvert or disrupt the business of the Complainant or to confuse Internet users, for commercial gain.
The Panel therefore finds that the Complainant has not established that the disputed domain names <aex.com>, <aex-global.com> and <aex88.com> have been registered and used in bad faith.
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”).
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Panel notes that, on the facts of the Previous Proceeding, the panelist in the Previous Decision denied the Respondent’s request for a finding of RDNH.
The Panel considers that, in all the circumstances, and in particular in light of:
(i) The Panel’s prima facie acceptance of the refiled Complaint;
(ii) The panel’s decision regarding RDNH in the Previous Decision; and
(iii) The Respondent’s admitted changed use of the Website following the Previous Decision,
it is not appropriate to make a finding of RDNH in the present proceeding.
In all the circumstances, the Panel rejects the Respondent’s request for a finding of RDNH against the Complainant.
The Panel further notes that, in light of the issues in dispute in both the present proceeding and in the Previous Proceeding, the dispute between the Parties regarding the disputed domain names might be better suited to resolution through court proceedings, if available, rather than the expedited UDRP procedure.
For the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Dated: October 31, 2018
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