WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fundação CPqD - Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam Case No. D2009-1403 1. The Parties
1.1 The Complainant is Fundação CPqD - Centro de Pesquisa e Desenvolvimento em Telecomunicações of Campinas, Brazil, represented by Maria Fernanda S. R. de Castilhos, Brazil.
1.2 The Respondent is Gary Lam of Hong Kong, SAR of the People's Republic of China. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. On October 21, 2009, the Center transmitted by email to Moniker Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2009, 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. The Center sent an email communication to the Complainant on October 22, 2009, 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 on October 26, 2009. 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”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 25, 2009. 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
4.1 The Complainant is a non-profit Brazilian corporation. It originated in 1976 as the telecom research and development centre for Telebrás, the then-incumbent public telecommunication provider in Brazil. It took on its current legal form in 1998 when Telebrás was privatized.
4.2 The Complainant's laboratories offer services in respect of various telecommunications products and services. Although based in Brazil, it has established strategic business alliances elsewhere in the world including in various Latin American countries, the United States of America, and Europe.
4.3 The Complainant is the owner of numerous trade marks that comprise or incorporate the letters “CPqD”. Those identified by the Complainant in the Complaint are primarily Brazilian marks. They include, for example, Brazilian registered trade mark no. 820935719 in class 9 dated September 25, 1998. The Complaint is also the owner of United States registered trade mark no. 3229007 in class 9. This is for the stylised word mark QPQD. The mark application was filed on August 11, 2005 and records a first use of 1998 and a first use in commerce of March 2000.
4.4 The Complainant is also the owner of large number of domain names that incorporate the letters “cpqd”. For the most part these appear to have been registered between mid 2000 and mid 2001.
4.5 According to details on the WhoIs record for the Domain Name, the Domain Name was registered in February 2000. The identity of the registrant at least until recently has been shielded by the Registrar's WhoIs privacy service. The WhoIs data page for the Domain Name displayed by the Registrar at that time contained the text “This name may be for sale – Make an unsolicited offer”.
4.6 Following the Center's request for registrar verification, the Registrar revealed the underlying registrant to be the individual “Gary Lam”. Mr. Lam's address is recorded as “XC2 P.O. Box No. 71826, KCPO Central Honk [sic] Kong 00000”. However the contact telephone and fax numbers provided for Mr. Lam are United States (or at least North American) numbers.
4.7 “XC2” and Mr Lam have been party to many UDRP proceedings in the past. XC2/ Mr Lam was the respondent in First SBF Holding, Inc. v. XC2 Case No. D2008-0409. As was recorded in that case:
“6.38 …The Panel notes that the Respondent appears to have a history of engaging in abusive registrations. The Panel refers in this respect to following WIPO UDRP decisions: Deere & Company v. XC2 (Moniker Privacy Services),WIPO Case No. D2007-1805; Scandic Hotels AB v. xc2,WIPO Case No. D2007-0810; Wal-Mart Stores, Inc. v. xc2,WIPO Case No. D2006-0811; The Belo Company, Belo Investments II, Belo Corp. v. XC2 / Internet Coordinator,WIPO Case No. D2006-0790; Laramar Group, L.L.C. v. XC2,WIPO Case No. D2006-0617; ESPN, Inc. v. XC2,WIPO Case No. D2005-0444; Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896; and, Martha Stewart Living Omnimedia, Inc. v. XC2,WIPO Case No. D2003-0944.WIPO Case No. D2004-0896 involved a finding against Respondent in relation to no less than 78 domain names.”
4.8 At least recently the web page operating from the Domain Name has borne all the signs of having been created by the Registrar's domain name “parking” and “pay per click” service. As at October 15, 2009 the most prominent sponsored links appearing on that page were “Trabalho”, “Dedicated Servers”, “Register Domain”, “Domain Name Registration”, “Domain Registration”, “Celular Sansung U600”, “Voip”, “Ecommerce”, “Internet”, and “Computador”.
4.9 A “parking” and “pay per click” web page continues to operate from the Domain Name as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant refers to four of its 45 Brazilian trade mark registrations and asserts that these comprise the letters “CPqD” alone. It therefore asserts that the Domain Name is identical to these trade marks.
5.2 It contends that no person, business or other organisation uses the letters “cpqd” in combination and makes reference to Google search results that are said to evidence this. It claims that none of the factors set out in paragraph 4(c) of the Policy apply in this case. Instead, it contends that the registration of the Domain Name “tries to take parasitically international prestige achieved by [the Complainant's trade marks] to some other purpose”. In the circumstances, it maintains that the Respondent does not have a right or legitimate interest in the Domain Name.
5.3 On the question of bad faith, the Complainant asserts that “cpqd” is not a word to be found in any dictionary (of whatever language) and “is not a fantasy composition between two or more words”. It also makes the following statement:
“The trademark CPqD is distinctive and doesn't have any secondary meaning. So why someone that doesn't have any product, service, trademark, business, enterprise or other organization identified by the phoneme would register [the Domain Name]? One can notice that coincidentally the domain name was registered just when the [Complainant] has became a private-law corporation, after privatization, being open for new target markets.”
5.4 The Complainant also makes reference to the statement on the Registrar's website inviting “unsolicited offers” for the Domain Name.
5.5 The Complainant appears to assert that the registration falls within each of the examples of bad faith set out at paragraph 4(b) of the Policy. B. Respondent
5.6 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant is the owner of various registered trade marks that comprise the letters CPQD alone. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is virtually identical to trade marks in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.5 Many panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the burden of proof passes to the respondent to show such a right or interest. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.6 It is clear in this case that the Domain Name is being used by the Respondent for use with a “domain name parking” or “pay per click” service. It is possible for use of a domain name for a parking site with advertising revenue generated by sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.7 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.8 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainant's trade marks. In the circumstances, the Panel has little difficulty in reaching a positive finding that the Respondent has no right or legitimate interest in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 As the Panel has already stated, it seems clear that the Domain Name has at least recently been used in connection with a “pay per click” or “domain name parking” service. It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.10 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.11 It is clear to the Panel that the Domain Name is being used to take advantage of confusion with the Complainant's mark. The Complainant contends that its CPQD mark is well-known worldwide and there is nothing before the Panel to suggest that this contention is not correct. More significantly, there is the claim, again uncontested, that the letters “cpqd” have no obvious meaning in any language and are not associated with any person or business other than the Complainant. The assertion is supported by a printout of search results conducted on the website in relation to the letters “cpqd”. The Panel, therefore, accepts that only credible reason why an Internet user would type the Domain Name into a browser would be that he or she was seeking information about the Complainant or its activities.
6.12 In the circumstances, there is little doubt that the Domain Name is currently being used in bad faith.
6.13 However, the question remains whether the Domain Name was registered in bad faith1. The Domain Name was registered in February 2000 and in the absence of evidence or argument that the Domain Name came into the hands of the Respondent at a later date. Therefore, prima facie it is at this date that the assessment of bad faith registration is to be judged.
6.14 In this case there is a slight difficulty in that the Complainant is a Brazilian entity and there is very little evidence before the Panel as to the extent to which its reputation and its mark extended beyond Brazil in February 2000. The Respondent gives an address in Hong Kong although he seems to have some connection with the United States. The Complainant's United States registered trade mark claims a first use in 1998 but only a first use in commerce in March 2000. In short there is far from any compelling evidence of any significant reputation in the mark either in the United States or Hong Kong at the time of registration.
6.15 Nevertheless, ultimately the Panel is of the view that it was with the Complainant's mark in mind that the Domain Name was registered. The key factor that leads to that conclusion is the nature of the Domain Name itself and the fact that there is no obvious use of the letters “cpqd” other than one that is associated with the Complainant.
6.16 There are possible parallels between this case with the recent decision of the Panel in Credit Industriel et Commercial S.A. v. Demand Domains, Inc.,WIPO Case No. D2009-1184. That case concerned the domain name and the respondent maintained that it had registered this as a “meaningless” combination of letters rather than because of the domain name's possible associations with the complainant's mark. In that decision the Panel stated:
“6.23 Further, there is the less than compelling explanation given by the [r]espondent in this case as to why the [d]omain [n]ame was chosen. It claims to have registered a meaningless combination of letters, but no real explanation is given as to why it might have decided to do this, still less is there an explanation of why this particular ‘meaningless' combination was chosen over any other. Perhaps there might be an innocent explanation for this registration. Perhaps the [d]omain [n]ame is merely one of an extensive set of registrations by the [r]espondent all of which comprise similar ‘meaningless' combinations of five letters. But no such explanation or evidence of this sort is proffered by the [r]espondent, notwithstanding the central importance of a registrant's intent and knowledge when it comes to the assessment of bad faith. In the opinion of the Panel this silence on the part of the [r]espondent is significant. Evidentially, it is the dog that did not bark.”
6.17 Here the Respondent does not even make such a claim of the registration of a meaningless combination of letters. In the circumstances, the Panel finds that it was with the Complainant's CPQD mark in mind that the Domain Name was registered and that, given the most recent use of the Domain Name, the likely intention of the Respondent was in some way (whether by sale, domain name parking use or otherwise) to take unfair advantage of the goodwill in and reputation of that mark. Registration with such an intention is registration in bad faith.
6.18 Further, as has already been recorded in this decision, the Respondent has a long track record of engaging in abusive registrations. It is not an allegation that is made in the Complaint and it is possible to reach a decision in this case on the balance of probabilities in the Complainant's favour without any reliance on this conduct. However, if the Respondent's past conduct is taken into consideration, the evidence as to the Respondent's motives for registration becomes overwhelming. The Domain Name can then be seen simply as one of a long line of registrations by the Respondent seeking to take advantage of the reputation of the marks of others.
6.19 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: November 27, 2009
1 The Panel notes that at least two recent cases have suggested an interpretation of the Policy that would mean that it might only be necessary to assess the Respondent's more recent motives and activity (see City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786). However, this is not the occasion on which to examine the reasoning in those cases further. The Complainant has not put its case in that fashion and the facts of this case are such that the adoption of a more conventional approach leads to a decision in the Complainant's favour. This is an argument and discussion to be left for another day.
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