WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Altice N.V. v. AXC BV
Case No. D2017-1942
1. The Parties
The Complainant is Altice N.V. of Amsterdam, the Netherlands, represented by Baker & McKenzie, France.
The Respondent is AXC BV of Leeuwarden, the Netherlands, represented by internally represented.
2. The Domain Name and Registrar
The disputed domain name <altice.com> is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2017. 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 October 6, 2017, 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 proceedings commenced on October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The Response was filed with the Center on October 30, 2017.
The Center appointed Gregor Vos as the sole panelist in this matter on November 9, 2017. 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.
On November 27, 2017 the Panel issued Procedural Order No. 1 pursuant to paragraph 12 of the Rules, in which it requested the Complainant to submit evidence as to its exclusive license with regard to the trademark ALTICE, or otherwise provide evidence of authorization to file a UDRP complaint by the trademark owner. The Complainant was given until December 6, 2017, to provide the said information. The Complainant replied to the notification on November 30, 2017 and submitted additional information. The Respondent was given until December 8, 2017 to submit any comments in relation to the Complainant’s submission. The Respondent did not submit any comments.
On December 18, 2017, the Panel issued Procedural Order No. 2 pursuant to Rule 12 of the Rules. Although the Panel found that the Complainant has provided evidence as to the license agreement between the Complainant and NEXT ALT S.a.r.l, it has not provided any information about the license between the owner of the trademark ALTICE (Next Luxembourg S.C.Sp.) and NEXT ALT S.a.r.l. Therefore, the Panel requested the Complainant to submit evidence as to NEXT ALT S.a.r.l.’s exclusive license with regard to the trademark ALTICE, or otherwise provide evidence of a corporate relationship between Next Luxembourg S.C.Sp and NEXT ALT S.a.r.l. The Complainant was given until December 23, 2017, to provide the said information. The Complainant replied to the Procedural Order No. 2 on December 22, 2017 and submitted additional information. The Respondent was given until December 26, 2017 to submit any comments in relation to the Complainant’s submission. The Respondent did not submit any comments.
4. Factual Background
The Complainant bases its complaint on the following trademark registration for the ALTICE mark (hereinafter: the “Trademark”) for telecommunications-related services:
- EU Trademark registration No. 002599793 for ALTICE, registered on October 14, 2004 in class 9, 38 and 41.
The Trademark was registered on October 14, 2004 to Mr. Patrick Drahi, claiming priority of the French trademark registration No. 3119195 for ALTICE, registered on September 3, 2001. On November 14, 2016, the Trademark was assigned by Mr. Patrick Drahi to Next Luxembourg S.C.Sp, which is the current owner of the Trademark. On November 14, 2016, Next Luxembourg S.C.Sp granted Next ALT S.a.r.l. an exclusive license for the use of the Trademark. Subsequently, Next ALT S.a.r.l. has sub-licensed the Trademark to the Complainant.
The Domain Name was first registered on January 5, 2003 and resolves to an inactive website.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical to the trademark in which it claims to have rights. The Complainant states that it is the exclusive licensee of the Trademark and, in its capacity of exclusive licensee, entitled to initiate legal proceedings in case of infringement of the Trademark. In order to substantiate its rights with regard to the Trademark, the Complainant has submitted a Brand License and Service Agreement between the trademark owner (Next Luxembourg S.C.Sp.) and Next ALT S.a.r.l. and a Brand License Agreement between Next ALT S.a.r.l. and the Complainant.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent has no connection or affiliation with the Complainant or with the Altice Group, nor has the owner of the Trademark or the Complainant authorized or permitted the Respondent to register or use the Trademark in a domain name or in any other manner. Also, to the Complainant’s knowledge, the Respondent has never been known or identified by the Domain Name. The Respondent is a professional domain name trader/wholesaler, operating under the name AXC B.V. Furthermore, the Complainant asserts that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services.
In addition, the Complainant claims that the Domain Name was registered and is being used in bad faith. According to the Complainant, the Domain Name was registered for the sole purpose of being sold for an exorbitant and disproportionate price compared to the Respondent’s costs incurred for the registration and maintenance of the Domain Name (the Respondent has made an offer of EUR 250,000). Furthermore, the Complainant states that the Trademark had a strong reputation in the telecommunication industry at the time of the registration of the Domain Name and that the Respondent must have been aware of the existence of the Trademark. Finally, the Complainant would passively use the trademark in bad faith. This would follow from the fact that the Respondent has not operated a website under the Domain Name since its creation almost 15 years ago and from the fact that the Respondent tried to sell the Domain Name for a disproportionate price.
The Respondent asserts that it has registered the Domain Name in 2013 with the purpose of setting up a business. Eventually, the plans to set up a business changed and the Domain Name remained in the Respondent’s possession without any active use.
The Respondent disputes that it has used the Domain Name in bad faith. According to the Respondent, the fact that it holds the Domain Name does not result into an infringement of the Complainant’s trademark rights. In addition, the Respondent asserts that if it was acting in bad faith, it would have approached Altice SA immediately after obtaining the Domain Name back in 2013.
Furthermore, the Respondent states that it was approached by an English company with interest to buy the Domain Name.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the 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 Domain Name; and
iii. the Domain Name has been registered and is being used in bad faith.;
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant is not the owner of the Trademark. However, the Panel finds that the Complainant has provided sufficient evidence that it is the exclusive (sub-) licensee of the Trademark owner. As the exclusive (sub-) licensee of the Trademark owner the Complainant has sufficient rights to satisfy Policy, paragraph 4(a)(i) (see, Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions., WIPO Case No. D2003-0624; Teva Pharmaceutical USA, Inc. v. US Online Pharmacies, WIPO Case No. D2007-0368).
The Panel notes that the Domain Name <altice.com> incorporates the Trademark in its entirety. Normally, the generic Top-Level Domain (“gTLD”) suffix “.com” can be ignored in the comparison between the Domain Name and the Trademarks. Therefore, the Panel considers the Domain Name to be identical to the Trademark.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
For the second requirement the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the complainant does establish a prima facie case, the burden of production shifts to the respondent (See,e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1).
Paragraph 4(c) of the Policy provides circumstances in which such rights or legitimate interests to the Domain Name may be demonstrated. These circumstances include (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; and (iii) making legitimate noncommercial or fair use of the domain name.
The Complainant has asserted that the Respondent has not met these circumstances. The Complainant states that the Respondent is not authorized or licensed to use the Trademarks. In addition, the Complainant asserts that the Respondent has never been known or identified by the Domain Name. Instead, the Respondent is known by the name AXC B.V. Furthermore, there is no evidence of the Respondent’s use of, or demonstrable preparation of use, the Domain Name in connection with a bona fide offering of goods and services.
The Panel finds that the Complainant’s prima facie case is sufficiently established. The burden of production therefore shifts to the Respondent.
The Respondent has stated that it has registered the Domain Name with the purpose of setting up a business. However, the Respondent has not provided any contemporaneous evidence of bona fide pre-complaint preparations thereof. For example, the Respondent has not provided proof of a genuine business plan utilizing the Domain Name or evidence of credible investment in website development or promotional materials. In absence of any evidence in support for the Respondent’s claim, combined with the time that has passed between the registration of the Domain Name and the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Consequently, the Panel finds that the second requirement also has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant must establish that the Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the following circumstances are relevant.
The Trademark predates the registration date of the Domain Name. In addition, the Complainant has shown that the owner of the Trademark already operated a business under the name ALTICE at the time of the registration of the Domain Name. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Trademark.
Additionally, the Respondent has not used the Domain Name for almost 15 years. When contacted by the Complainant, the Respondent conditioned the transfer of the Domain Name to the payment of valuable consideration, in excess of documented out-of-pocket costs directly related to the Domain Name. In its contact with the Complainant, the Respondent indicated that it was looking for another buyer.
These circumstances are enough in the Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
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, <altice.com> be transferred to the Complainant.
Date: January 10, 2018