UDRP has been denied.
AEX.com is a domain registered 20 years ago, and in 2017 it was acquired by a Chinese domain buyer.
As it happened to many other valuable three letter .com domains, it was challenged via the UDRP process at the WIPO.
The Complainant, Euronext N.V. of Amsterdam, the Netherlands, claimed a prior right to AEX, since its mark was first registered in December 1993.
The Respondent is using AEX.com as a cryptocurrency exchange platform.
According to the UDRP:
The Respondent argues that the letters AEX are not exclusively associated with the Complainant and can have many different meanings. The Respondent contends that the Respondent’s business is known by a corresponding name and that the Respondent has a legitimate interest in using the string for the Domain Name and for Facebook and Twitter social media accounts, since the three letters are suggestive of an acronym for “asset exchange”, which describes the nature of the Respondent’s business.
The Respondent cheekily added that in the 20 years since the domain was first registered, the Complainant didn’t do anything about it, so why do they act all concerned now?
They also sought a finding of Reverse Domain Name Hijacking.
W. Scott Blackmer, found no bad faith registration for AEX.com and ordered it to remain with the respondent, but declined to deliver a RDNH finding.
Full details of this decision follow:
Copyright © 2024 DomainGang.com · All Rights Reserved.Euronext N.V. v. Huang tian wei
Case No. D2018-03481. The Parties
The Complainant is Euronext N.V. of Amsterdam, the Netherlands, represented by NLO Shieldmark B.V., the Netherlands.
The Respondent is Huang tian wei of Shenzhen, China, represented by Haiwen & Partners, China.
2. The Domain Name and Registrar
The disputed domain name <aex.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2018. On February 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 23, 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 February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. On March 15, 2019, the Respondent asked for an automatic four-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed the new deadline for the Response was March 23, 2018. The Response was filed with the Center on March 23, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 29, 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.
4. Factual Background
The Complainant is a business corporation organized under the laws of the Netherlands and headquartered in Amsterdam. It operates stock markets in Amsterdam, Paris, Brussels, and Lisbon, with a website at “www.euronext.com”. The Complainant holds the following trademark registrations for the mark AEX, which is used to designate the Amsterdam Stock Exchange, the most important Dutch stock exchange:
According to the Registrar, the Domain Name was created on March 25, 1998 and is currently registered in the name of the Respondent “huang tian wei”. The Response indicates that Huang Tianwei is an individual in Shenzhen, China who, in 2013, founded Bit Age, an online assets exchange platform for cryptocurrencies such as Bitcoin and Ether. Because of Chinese regulation of cryptocurrency trading, the Respondent transferred the assets of Bit Age to an offshore company, Bit World Investments Limited (“Bit World”). The Respondent states that it acquired the Domain Name in September 2017 and has used it since October 2017 to conduct the Respondent’s digital assets exchange business through an associated website (the “Respondent’s website”).
The Respondent’s website to which the Domain Name resolves is presented in English and Chinese versions and headed “AEX.com”. It lists market prices for various cryptocurrency assets and links to information about cryptocurrencies. The site allows users to create an account and offline wallet, accumulate rewards, and effect trades. The Respondent’s website repeatedly uses the term “AEX” to refer to the site or operator (“AEX releases …”, “LXT World Premiere on AEX”, “AEX’s security,” “AEX account”, etc.).
The Response includes evidence of a substantial volume of cryptocurrency transactions via the Respondent’s website. The Response also includes news media reports and third-party rankings of digital currency platforms, all tending to demonstrate that the Respondent has indeed been using the Domain Name in connection with this ongoing business since acquiring the Domain Name and that the Respondent is known by the name “AEX”.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is identical to its AEX mark, which the Respondent is using confusingly and without permission or other legitimate rights or interests. The Complainant claims a prior right since its mark was first registered in December 1993.
The Complainant contends that the Respondent advertises a “similar” business with a similar color scheme, supporting an inference that the Respondent means to “confuse the Complainant’s customers and potential customers and to subvert the Complainant’s business.”
B. Respondent
The Respondent argues that the letters AEX are not exclusively associated with the Complainant and can have many different meanings. The Respondent contends that the Respondent’s business is known by a corresponding name and that the Respondent has a legitimate interest in using the string for the Domain Name and for Facebook and Twitter social media accounts, since the three letters are suggestive of an acronym for “asset exchange”, which describes the nature of the Respondent’s business.
The Respondent denies prior knowledge of the Complainant’s mark and contends that the mark is not so well-known in China that it would be targeted by those operating in an entirely different industry.
The Respondent requests a finding of reverse domain name hijacking, since it is clear that the Respondent had its own legitimate, distinct business for which the acronym “aex” was appropriate. The Respondent argues that the Complainant should have discovered that the Respondent had achieved a high degree of public recognition with the name “AEX”, yet the Complainant did nothing about this Domain Name since it was created in 1998.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly SimilarThe Complainant holds registered AEX trademarks. The relevant portion of the Domain Name is identical, as the generic Top-Level Domain name “.com” is not distinctive in this instance.
The first element of a UDRP complaint “functions primarily a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant’s mark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has established a prima facie case, shifting the burden to the Respondent. The Respondent claims that its business is known by the name “AEX” although that is not the name of the Respondent’s company, which has gone by the names “Bit Age” and “Bit World”. The Respondent’s website uses the name “AEX” in several places, and there is evidence that third parties have also referred to the Respondent’s exchange services by that name. Normally, to establish that a respondent is “commonly known” by a corresponding name, it must be used apart from the domain name itself. See WIPO Overview 3.0, section 2.3. The evidence is thin in that respect, especially since the Respondent has only been using the “AEX” name and website for a few months. The Respondent also suggests that it makes generic use of the string “AEX” as an acronym for “automated exchange”, but the Response does not include evidence that this is known as a generic term. The possibility that it may be the Respondent’s intended meaning is considered in the next section, on bad faith, but the Panel does not find the argument persuasive on the second element where the burden has shifted to the Respondent to establish rights or legitimate interests in the Domain Name for purposes of the Policy.
The Panel concludes, therefore, that the Complainant prevails on the second element.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
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.
D. Reverse Domain Name Hijacking
The Respondent requested a finding of Reverse Doman Name Hijacking.
Paragraph 15(e) of the UDRP 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”.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. The Respondent’s rights or legitimate interests were not established and its good faith could be disputed. The Complainant’s claims are not so extreme and impossible as to amount to an abuse of the Policy. Accordingly, the Panel denies the request for a finding of Reverse Domain Name Hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: April 12, 2018
