WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. 于剑 (Yu Jian)
Case No. DCC2019-0012
1. The Parties
The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is 于剑 (Yu Jian), China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <axa.cc> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 12, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on the same day.
On September 12, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding and the Respondent requested that Chinese be the language of the proceeding.
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 September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Center received email communications from the Respondent on September 16, 17 and 18, 2019. On October 2, 2019, the Respondent requested an extension to the Response due date. In accordance with paragraph 5(b) of the Rules, the Response due date was extended to October 10, 2019. The Response was filed with the Center in Chinese on October 8, 2019. On October 9, 2019, the Respondent confirmed that his submission of October 8, 2019 should be regarded as his complete Response. The Complainant made an unsolicited supplemental filing on October 18, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 25, 2019. 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 Complainant provides insurance and saving and asset management services. In 1985, it adopted the name AXA because it is “a simple, unifying name that is universal, pronounceable by all and well positioned in all the world’s directories”. The Complainant’s corporate group is present in 64 countries, including China. AXA Group became the largest foreign insurer active in China through the acquisition of 50 percent of Tian Ping, a Chinese company specialised in property and casualty licenses, and a joint venture with the Industrial and Commercial Bank of China, which launched ICBC-AXA Life.
The Complainant holds multiple trademark registrations for AXA including International trademark registration number 490030, registered from December 5, 1984, designating multiple jurisdictions (China not being one of them), specifying advertising, business, insurance, financial and other services in classes 35, 36 and 39; International trademark number 1290037 registered from December 16, 2015, designating multiple jurisdictions, including China, and specifying advertising, insurance underwriting, financial and other services in classes 35 and 36. Those trademark registrations remain current.
The Complainant has also registered various domain names consisting of “axa”, including <axa.com> that it registered on October 23, 1995, and that it uses in connection with a website where it provides information about itself and its services.
The Respondent is a software developer resident in China. He registered the disputed domain name on February 23, 2010 and uses it in connection with a website in Chinese for “烁彩软件”, which can be transliterated as “Shuocai Ruanjian” and translated as “Sparkling Software” (hereinafter “Shuocai Software”). The website offers a variety of management software, including for use in the auto industry, invoicing, personnel management and other tasks. The website states that all the software is genuinely and perpetually free, without limits on number of uses, functions or time, without add-ons and with free upgrades. Buttons on the website are labelled “free download” in Chinese.
5. Parties’ Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant’s AXA trademark. The disputed domain name entirely reproduces that trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its AXA trademarks. There is no relationship whatsoever between the Parties. The Respondent has not been commonly known by the disputed domain name nor does it have a trademark or trade name corresponding to the disputed domain name. The copyright notice on the website identifies a third party as the owner, not the Respondent.
The disputed domain name was registered and is being used in bad faith. The AXA trademark has become internationally famous. Obviously, the Respondent was aware of the Complainant’s AXA trademark at the time that he acquired the disputed domain name. The Complainant’s trademark AXA is well protected and well known in numerous countries in the world, including China (where the disputed domain name has its IP location) and Australia (of which the Cocos Islands are an external territory). The Respondent is using the disputed domain name in a way which confuses people or businesses into believing that it is registered to, operated or authorized by or otherwise connected with the Complainant whereas the Respondent is using the disputed domain name in order to lead to a website offering his own management software. Although that website indicates that his software products are free, none of the “Free Download” icons functions. It is impossible to download anything from the site; the Respondent is not making a bona fide offering of goods or services. The site provided no information regarding the identity of the registrant or contact details, besides an email address. The Respondent chose not to answer three cease-and-desist emails from the Complainant. The Respondent has no business activities in the Cocos Islands. The Respondent’s lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant since it prevents the Complainant from reflecting its reputed trademarks in a corresponding “.cc” domain name. The Respondent’s email address is associated with 15 other domain names, some of them incorporating third party trademarks such as HSBC.
B. Respondent
The Respondent has developed “烁彩软件” (“Shuocai Software”) management software in his spare time since 2006. These are programs made available for free download through the Respondent’s “Acquire C/S platform”. Up until 2009, the Respondent used the domain name <socous.com>, which was an abbreviation of “so Connect us” for a Customer Relationship Management program. The program was released in 2008 and its English name is now “Advance CRM”. In 2010, the Respondent developed a platform named “Acquire C/S” to complement Advance CRM. Many users complained that <socous.com> was difficult to remember and they often typed it incorrectly. The Respondent had the idea of using “Advance CRM * Acquire C/S” but with “.cc” as an abbreviation of CRM and C/S, and the English letter “X” replacing the “*”, which cannot be included in a domain name, and that produced the disputed domain name <axa.cc>. The Respondent has used the disputed domain name since 2010, and let the <socous.com> domain name lapse in 2013. The “.cc” country or code Top-Level Domain (“ccTLD”) suffix is not only a country code but is an open domain available to registrants everywhere. In mainland China this ccTLD suffix has always been understood as an abbreviation for “commercial company” and many companies and institutions use it.
As for the Complainant, it has conducted business in mainland China since 2014 under the name “Ansheng Tianping Property Insurance Co., Ltd.”, which is a joint venture with Tianping Auto Insurance. In 2014, the <axatp.com> domain name was launched as the Complainant’s Chinese website but this insurance company is not well known in mainland China. Its business has nothing to do with the Respondent’s management software. The users of the Respondent’s software are in mainland China and there is no conflict with the Complainant’s overseas interests and business.
All the Respondent’s management software is available free without limits as to number of uses, type of function or length of time, without plug-ins and with free upgrades. Since the launch of the website at the disputed domain name in 2010, the Respondent has launched seven programs, including for warehouse management, inventory, personnel management and auto repairs. These can all be downloaded on the website of China’s largest download site. A search for “烁彩软件” in Chinese in the Baidu search engine produces 33,000 results. Shuocai Software has been downloaded from different sites nearly 530,000 times.
The disputed domain name was not registered in bad faith. At the time of registration of the disputed domain name in 2010, the Complainant did not conduct business in mainland China and the Respondent had never heard of it. Even today, many people would not know of the relationship between the three letters “axa” and Ansheng Tianping. The ccTLD suffix “.cc” has been favored by technology companies due to its open registration and it was a trend at the time. The Respondent registered the disputed domain name to capture the idea of “Advance CRM * Acquire C/S” because many Advance CRM products would be based on the Acquire C/S development platform. The “*” multiplication sign cannot be incorporated in a domain name for technical reasons so the Respondent used “X”.
The disputed domain name is not being used in bad faith. Although the Complainant alleges that the free download button on the Respondent’s website does not function, that is because the software requires greater bandwidth than the Respondent can afford. The free download is always available but, due to the popularity of Shuocai Software, the bandwidth is always inadequate. The Respondent allows feedback via a message board at “bbs.axa.cc”. Operating the BBS message board by a person is no longer allowed in China. Therefore, the Respondent registered a company in 2017 and applied for a value-added telecommunications business license in order to restore the message board function. The Respondent has provided an email contact address in the disputed domain name in the meantime. The Respondent was not aware of any cease-and-desist emails sent by the Complainant; the Complainant sent them all to the Registrar, which did not forward them to the Respondent. The first the Respondent heard of this dispute was the email sent by the Center on September 12, 2019 regarding the language of the proceeding.
In summary, the disputed domain name was not registered and is not being used in bad faith. It has been widely used in connection with the official website “Shuocai Software”. The full range of Shuocai Software has a high reputation. The release, download, upgrade, user communication and feedback of “Shuocai Software” depends on the disputed domain name.
6. Discussion and Findings
6.1 Procedural Issues
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that it sent cease-and-desist emails to the Registrar in English prior to this proceeding; that the disputed domain name includes the ccTLD suffix of the Cocos Islands which is an external territory of an English-speaking country; and that the Policy on the Registrar’s website is in English.
The Respondent requests that Chinese be the language of the proceeding. His main arguments are that the Complainant never contacted him; his English is very poor and he cannot understand the Complaint in Chinese. He questions whether the filing of a complaint without first contacting the Respondent is an abuse of procedure.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,
WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293.
The Panel observes that the Complaint and the amendment to the Complainant were filed in English whereas the Response was filed in Chinese. However, the Response contains a detailed rebuttal of the Complaint which clearly demonstrates that the Respondent has understood that submission. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting all documents as filed in English or Chinese will not cause unfairness to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents as filed, whether in English or Chinese, without a translation.
B. Supplemental Filing
The Complainant made an unsolicited supplemental filing on October 18, 2019, after receipt of the Response. The Respondent did not comment on the supplemental filing.
Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) of the Rules require the Panel to ensure that “each Party is given a fair opportunity to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the Policy is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Accordingly, the Panel will only permit the supplemental filing in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the Complaint.
The Panel observes that the Complainant did not state any reason as to why the Panel should exercise its discretion to accept the supplemental filing. The supplemental filing merely notes that the Respondent submitted a Response and then reacts to it.
The Panel notes that the supplemental filing responds to arguments made in the Response and it also annexes (i) an extract from the Center website regarding disputes in the “.cc” ccTLD; and (ii) an extract from the Chinese trademark register regarding a 1998 trademark registration owned by the Complainant.
The Panel sees no exceptional circumstances that would justify accepting the supplemental filing. The supplemental filing points out where arguments made in the Response lack supporting evidence and it also refers to annexes already filed with the Complaint and the amendment to the Complaint. The Panel finds that these arguments in the Response can be assessed on their face and that repetition of the Complaint and the amendment to the Complaint is redundant. The fact that the “.cc” ccTLD suffix is allocated to the Cocos Islands is self-evident and, moreover, unimportant on the facts of this case. Evidence of the 1998 Chinese trademark registration was available at the time of the filing of the Complaint and it was clearly relevant to the issues in dispute before a Response was filed because the Complainant already knew that the disputed domain name was registered in 2010. However, the Complainant chose to refer in the Complaint and the amendment to the Complaint only to one Chinese trademark registration dating from 2015. The Complainant, through its supplemental filing, belatedly seeks to introduce new evidence into the record that it could have submitted earlier. As the panel in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703 stated, “[a] Complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone”.
Therefore, the Panel finds that the Complainant was already given a fair opportunity to present its case in the Complaint and the amendment to the Complaint. The Panel declines to accept the Complainant’s supplemental filing as part of the record of this proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the AXA trademark.
The disputed domain name wholly incorporates the AXA trademark. Its only additional element is the “.cc” ccTLD suffix allocated to the territory of the Cocos Islands. A ccTLD suffix may be disregarded in the comparison of a domain name and a trademark for the purposes of the Policy, unless it has some impact beyond its technical function, which is not the case here.
The Respondent submits that the “.cc” ccTLD suffix is often understood to refer to “Commercial Company” in China, and provides evidence in support of that submission. However, the Panel finds that even if the ccTLD suffix is understood in that way, the ccTLD is not relevant in determining identity or confusing similarity under the first element unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use 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) [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) [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.
As regards the first and third circumstances set out above, the disputed domain name is identical to the Complainant’s AXA mark, but for the addition of a ccTLD suffix. This is very likely to be misunderstood as indicating an affiliation with the Complainant when, in fact, there is no relationship whatsoever between the Parties. The disputed domain name resolves to a website that offers software, supposedly for free download. The Complainant submits that none of the “Free Download” icons functions, that it is impossible to download anything from the site; and that the Respondent is not making a bona fide offering of goods or services. This indicates that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy, nor is he making a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance, the Respondent’s name is “Yu Jian”, his company name is “量子问道（北京）科技有限公司” (which can be translated as “Liangzi Wendao (Beijing) Technology Limited Company”) and he appears to operate under the name “烁彩软件”, which can be transliterated as “Shuocai Ruanjian” and translated as “Sparkling Software”, none of which correspond to the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent, he concedes that there are problems with the download function on his website but attributes these to bandwidth problems. He provides no evidence that he uses the disputed domain name in connection with a website that actually makes software available to the public. Although he provides evidence that his software is available on a third party online platform, the disputed domain name is not used in connection with that platform. Moreover, the Respondent does not provide evidence that he makes a noncommercial use of the disputed domain name. He claims that he produces his software in his spare time and his website states that his software is downloadable free of charge. However, even if it is downloadable from that site, he only asserts that it is free of charge to users, not that it is free of advertising and otherwise non-commercial, and in any case, his assertion is not supported by enough relevant evidence. Therefore, the Panel considers that the Respondent has failed to demonstrate that he has any rights or legitimate interests in respect of the disputed domain name, and finds that he has failed to rebut the Complainant’s case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The second, third and fourth of these are as follows:
“(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;
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] website or location.”
As regards registration, the Complainant submits that its AXA trademark is internationally famous, including in China, where the Respondent is resident. The evidence on the record includes International trademark registrations and use of the AXA trademark outside China, including on the Complainant’s own website. However, there is no evidence on the record that the Complainant’s trademark was used in China, where the Respondent is located, prior to 2010, when the disputed domain name was registered. Nor, more importantly, is there any evidence that the Respondent was otherwise exposed to use of the Complainant’s trademark prior to that time. The Respondent does not operate in the same industry as the Complainant and has had no previous dealings with the Complainant. The evidence in the Complaint regarding the registration of the AXA trademark in China, where the Respondent is resident, concerns a registration from 2015, several years after the registration of the disputed domain name. The Complaint actually makes no reference to the Complainant’s entry into the Chinese market nor any use of the AXA trademark in that country prior to 2010, beyond a brief statement that it strengthened its role in Asia, including China, in 2003. The evidence regarding the Cocos Islands is irrelevant, as there is no suggestion that the Respondent has been there or does business there.
Nevertheless, the Panel notes that AXA is a coined term, not a dictionary word, which suggests that the incorporation of that trademark in the disputed domain name, with no additional element besides a ccTLD suffix, is not coincidental. The Panel recognizes that a three-letter trademark could have many potential meanings as an acronym. However, the Respondent provides no credible explanation for his choice of the disputed domain name. The Panel finds his submission that “axa.cc” is an abbreviation of “Advance CRM * Acquire C/S” to be implausible. The Respondent fails to provide an adequate explanation as to why the “c” in each of “CRM” and “C/S” should be repeated at the end of the disputed domain name rather than appearing after each “a”. Any connection between those two product names and the disputed domain name is highly contrived and, besides, his website does not appear to make any reference to either product (although it does mention “CRM”). The more plausible explanation for the Respondent’s choice of the disputed domain name is that he was aware of the internationally famous AXA mark and chose to register it as a domain name.
Therefore, on the balance of probabilities, the Panel finds that the disputed domain name has been registered in bad faith.
As regards use, the Complainant submits that the disputed domain name prevents the Complainant from reflecting its reputed trademarks in a corresponding “.cc” domain name. However, there is no evidence that the Respondent has engaged in a pattern of such conduct, as foreseen in paragraph 4(b)(ii) of the Policy. Contrary to the Complainant’s assertion, the evidence does not show that the Respondent’s email contact address is associated with a domain name that incorporates another third party trademark (rather, one includes the letters “hsbs”).
The Complainant submits that the Respondent’s lack of bona fide use of the disputed domain name is likely to disrupt the business of the Complainant. However, this allegation is unsupported by evidence of actual disruption of the Complainant’s business even though the disputed domain name has been registered for over nine years. In any case, the Respondent is not a competitor of the Complainant, as foreseen in paragraph 4(b)(iii) of the Policy.
The Complainant also submits that the Respondent is using the disputed domain name in a way which confuses people or businesses into believing that he is registered to, operated or authorized by or otherwise connected with the Complainant whereas the Respondent is using the disputed domain name in order to lead to a website offering his own management software. The Panel notes that the disputed domain name consists of nothing more than the Complainant’s AXA trademark and a ccTLD suffix, which carries a high risk of implied affiliation with the Complainant. The Panel considers it more likely than not that this is the Respondent’s intention, for the reasons stated above. The question remains whether the Respondent makes this use of the disputed domain name for commercial gain. Commercial gain may be for himself or another party, or both. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. The evidence shows that, even if it is impossible to download anything from the Respondent’s website, that website is in effect promoting the Respondent’s software, and that software is available for download elsewhere. The results of a Baidu search for the Respondent’s software imply that it has some reputation and the screenshot of the third party platform for downloads indicates that the Respondent’s software has a popularity ranking, which implies that it has users. This indicates that the Respondent’ use of the disputed domain name is for the commercial gain of the operators of the third party platform (and any other websites) that make available his software. Even if those third parties do not charge users for downloads, the third party platform shown in the evidence is likely to monetize downloads of the Respondent’s software through advertising. The Respondent himself may also commercially benefit from the downloads in this way. Taking into account all these circumstances, on the balance of probabilities, the Panel finds that the Respondent is using the disputed domain name for commercial gain.
Therefore, on the balance of probabilities, the Panel also finds that the disputed domain name is being used in bad faith.
The Complainant also argues that the Respondent’s choice of the “.cc” ccTLD suffix when he is not operating in the Cocos Islands is further evidence of bad faith, and refers to the decision in Chopard International SA v. Feng Wang / Whois Privacy Protection Service, Inc., WIPO case DCO2014-0016. However, the Panel notes that that earlier decision was a case of typosquatting, unlike the present proceeding.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <axa.cc> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: November 5, 2019
