DRS Reference: 1242
Aconex Limited v Zhu Xumei
Key words -
96 Flinders Street Melbourne Australia
Represented by: Cecilia Borgenstam, SILKA Law AB
Tiaoxi Jiayuan 3-502,
2. Domain Name/s
3. Procedural history
The Complaint was lodged on 27 July 2017 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 02 August 2017. The domain was locked on 28 July 2017, preventing any changes to the record until the conclusion of these proceedings.
No Response was received.
The Complainant paid Domain Name Commission Limited the appropriate fee on 13 September 2017 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy (“the Policy”).
Barry Paterson QC, the undersigned, (“the Expert”) confirmed to the DNC on 19 September 2017 that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Factual background
4.1. The Claimant is a company incorporated in Australia with its registered office in Melbourne. The factual background was taken from information provided by the Complainant in the Complaint. As the Respondent has not responded, this information is uncontested.
4.2. The Complainant’s position is that it is now the most widely used online collaboration platform in the world of construction, infrastructure, and energy and resource projects. Its shares are listed on the Australian Stock Exchange on the S & P/ASX 200 Index. It states that it has helped projects in more than 70 countries and has served over 70,000 user organisations. It has staff in more than 47 offices including offices in Wellington and Auckland and operates in 23 countries worldwide.
4.3. In New Zealand the New Zealand International Convention Centre (NZICC), under construction by Sky City, is having its design and construction information managed by accessing the Aconex platform. The NZICC is due for completion in mid-2019 and will be the largest purpose built convention centre in New Zealand.
4.4. It is a matter of public record that the Complainant is registered on the ASX with its shares currently selling at approximately $AUD4. Its published financial statements show net assets of more than $AUD100m as at 30 June 2017. The records also establish that the Aconex platform is being utilised in the construction of the NZICC.
4.5. The Complainant has registered a number of domain names containing the word “aconex” to connect its websites worldwide to inform potential customers about its products and services and its ACONEX mark. Examples are “aconex.com”, “aconex.asia”, “aconex.com.au”, and “aconex.cloud”.
4.6. The Complainant has the trade mark “aconex” registered in New Zealand. The original registration has the IP number 725262 and was registered on 18 August 2005 and has been renewed to 15 February 2025. The classes of specifications covered by that registration are:
- Class Goods and Services Descriptions
9 computer software and computer programs relating to the management and facilitation of procurement, sales, tender or auction processes and information exchange
35 professional business services relating to the management and facilitation of procurement, sales, tender or auction processes namely through the provision of e-commerce solutions
37 provision of information to the construction industry relating to products and services; facilitation of information exchange and collaboration in the construction industry
42 computer programming services, professional consulting and technical support
4.7. The Complainant has also registered the trade mark internationally under the Madrid Protocol. The international trade mark was registered in Australia in 2015 and has the international number 1258384. It has been registered in New Zealand under the Protocol under IP No. 1024620 in respect of Classes 9 and 37. The description of the goods and services in respect of these two classes in No. 1024620 differs slightly from the description in No. 725262 but both words are essentially in respect of the same services. The international trade mark is also registered in China, the residence of the Respondent in this case.
4.8. The Domain Name was registered on 7 March 2017 and post-dates both trade mark registrations. It currently resolves to a pay per click site. A screenshot of that site points to respective sites for:
- • Document Manager
• Project Management Manager
• Electronic document management
• Document manager
• Project management software
• Document control software
• Documentation management
• Project management open source
• Work flow software
• Workflow management
4.9. The screenshot also includes “The domain name is listed for sale at USD 2000” and “Pay per click links related to Aconex business”.
4.10. In support of its contentions referred to below, the Complainant has referred to four WIPO cases which it says demonstrate that the Respondent is engaged in a pattern of registrations contrary to the provisions of paragraph 5.1.3 of the Policy. These cases will be discussed below.
5. Parties’ contentions
5.1. The Complainant’s contention is that the registration of the Domain Name incorporating as it does the well-known registered trade mark Aconex in its entirety is an Unfair Registration. It is contended that there will be initial interest confusion on the basis that internet users will visit the respective sites to which the domain name is pointing either by way of using search engines or by guessing the relevant website address. In such cases the speculative visitor to the Respondent’s website will be visiting it in the hope and expectation that the website is a website operated or authorised by or otherwise connected with the Complainant. The advertising links on the parking page are in the field of the Complainant’s activities and for services under the trade mark for which the Complainant has acquired registration. In its submission there is a severe risk that internet users will be deceived into believing the site is operated or authorised by, or otherwise connected with the Complainant after which they may be diverted to a third party site offering competitive services to the Complainant. This will unfairly disrupt the Complainant’s business and the Respondent will gain an unfair commercial advantage by means of the revenue related to the pay-per-click advertising.
5.2. It is also the Complainant’s contention that the likelihood of confusion is exacerbated by the fact that the web page to which the Domain Name links also shows related links which include document management, work flow software, etc.
5.3. A further contention by the Complainant is that the registration of numerous other domain names by the respondent demonstrates that the respondent is engaged in a pattern of registration of .nz domain names which correspond to well-known names or trade marks in which the Respondent has no apparent rights and the registration of the Domain Name is part of that pattern.
5.4. The Complainant summarises its position by saying:
- “The registration and use of the Domain Name in this way not only blocks the Complainant from registering the Domain Name but also takes an unfair advantage of the Complainant’s rights and is unfairly detrimental to those rights. It does so by making a commercial gain accruing from the per-click payments which is driven by the attractive force of the Complainant’s reputation and the well-known name, ACONEX.”
5.5. Accordingly, from the Complainant’s point of view, the Respondent intentionally chose the Domain Name based on a registered and well-known trade mark in order to generate more traffic to its website and more business for itself.
5.6. The Respondent has not made a submission.
6. Discussion and findings
6.1. Under paragraph 4 of the Policy the Complainant is required to satisfy the Expert on the balance of probabilities that:
- 4.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
4.1.2 The Domain Name, in the hands of the Respondent, is an Unfair Registration.
6.2. “Rights” is defined in the Policy as including “Rights enforceable under New Zealand law”. A complainant cannot rely on Rights in a name or term which is wholly descriptive of the Complainant’s business. This latter portion of the definition has no application in this case.
6.3. The term Unfair Registration is defined in the Policy as follows:
- Unfair Registration means a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii. has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
6.4. The first requirement to be satisfied is that the Complainant has Rights in respect of a name or mark which is identical to or similar to the Domain Name (paragraph 4.1.1 of the Policy). In this case, the Complainant by virtue of the trade marks already referred to has Rights in New Zealand in the name “aconex”. When considering whether that name is identical or similar to the Domain Name, the “.co.nz” is ignored. Undoubtedly, the Claimant has Rights in respect of the name “aconex” which is identical to the Domain Name.
6.5. The Rights under the trade names were obtained before the registration of the Domain Name. The Complainant has established on the balance of probabilities that the provisions of paragraph 4.1.1 of the Policy have been satisfied.
6.6. The Complainant in support of the Complaint referred to four WIPO cases decided against the Respondent in which the Respondent had registered domain names which included well-known trade marks as part of those domain names. Trade marks which the Respondent had included in domain names were SOLVAY, bhp biliton, and ASHLEYMADISON. The references to these WIPO cases are DCO2014-0022, DCO2014-0014, DCO2014-0006 and DMX2013-0014.
6.7. In those cases as in this case, the Respondent had no apparent connection with the trade mark holders, had registered the domain names without the consent or knowledge of those trade mark holders and was obtaining a commercial benefit from the use of the domain names.
6.8. Other trade names which the Respondent has registered in domain names are Alfaromeo, Miele, Fifty, Actelion, and Haribo.
6.9. In the circumstances, the Expert is satisfied to the required standard of proof that the Complainant has demonstrated that the Respondent is engaged in the pattern of registrations where the Respondent is the registrant of domain names (under .nz or otherwise) which correspond to well-known names or trade marks in which the Respondent has no apparent Rights and the Domain Name is part of that pattern. Under paragraph 5.1.3 of the Policy, this is evidence that registration in this case was an Unfair Registration.
6.10. In addition, the facts establish in the Expert’s view that the circumstances are such that the Respondent was using the Domain Name in a way which was likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant – evidence of Unfair Registration under clause 5.1.2 of the Policy.
6.11. The Expert accepts that the evidence establishes that there has been an Unfair Registration and that the Domain Name has been or is likely to be used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights. The circumstances fall within the definition of Unfair Registration in the Policy.
6.12. It is not necessary to consider other grounds upon which there may have been an Unfair Registration. In passing however, it is noted that there may have also been an Unfair Registration within the provisions of paragraph 5.1.1(a) of the Policy as the Domain Name may have been registered for the purpose of selling. No decision is made on this point.
6.13. The Expert therefore concludes that both limbs of paragraph 4.1 of the Policy have been satisfied. The Complainant has Rights in respect of a name which is identical to the Domain Name and in the hands of the Respondent, it is an Unfair Registration.
7.1. It is directed that the Domain Name be transferred to the Complainant.
Place of decision Auckland
Date September 2017
Expert Name Hon Barry Paterson QC