WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Western Digital Technologies Inc. v. Chyy, jakexiao Case No. D2010-0205 1. The Parties
The Complainant is Western Digital Technologies Inc. of Lake Forest, California, United States of America, represented by Boehmert & Boehmert, Germany.
The Respondent is Chyy, jakexiao of Shenzhen, the People's Republic of China, represented by himself. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 11, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba . a request for registrar verification in connection with the disputed domain name. On February 12, 2010, Beijing Innovative Linkage Technology Ltd. dba transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. On February 16, 2010, the Center transmitted by email to the parties a communication in both Chinese and English regarding the language of the proceeding. On February 19, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Center has verified that the Complaint satisfies 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 14, 2010. The Response was filed with the Center on March 13, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on March 19, 2010. 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 March 26, 2010, the Complainant submitted an unsolicited supplemental filing, and on March 29, 2010, the Respondent submitted an email communication in response. The Panel has not considered either filing. 4. Factual Background A. The Complainant
The Complainant is a company incorporated in the United States and the owner of registrations for the WESTERN DIGITAL word and stylised word trade mark (the “Trade Mark”) in the United States, the European Union and China, where the Respondent is based. The Complainant is also the owner of several generic and country code top level domain names comprising the Trade Mark.. B. The Respondent
The Respondent is an individual resident in China.
The disputed domain name was registered on October 15, 2006. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint.
The Complainant is a wholly owned subsidiary of Western Digital Corporation (“WDC”). WDC was founded in 1970 and has become the world's second largest manufacturer of data storage products. WDC employs about 50,000 people worldwide at manufacturing facilities in California, Malaysia and Thailand, design facilities in Southern and Northern California, Colorado and Thailand, and sales offices around the world.
The Complainant markets and distributes its products world-wide to leading PC and system manufacturers, selected resellers, retailers, and individuals, using the Trade Mark.
The Respondent registered the disputed domain name shortly after the public launch of the .mobi Top-Level-Domain on September 26, 2006.
On March 19, 2007, the Respondent sent an email to the Complainant stating as follows:
“Dear friend:
I'm glad to tell you that we are saleing the mobiphone domain of
“”. If your company needs it, pls contact me , tks!
Best regards
Jake Xiao”
On August 15, 2007, the Complainant received a further email from the Respondent stating:
“Dear friend:
Nice to meet you, I have got the wapsite , now if
your company want to get back the domain of "", pls
contact me and I will quote for your company, tks !
Best Regards
Jake Xiao
13826508479”
By letter of December 14, 2009 the representatives of the Complainant contacted the Respondent and requested the transfer of the disputed domain name in exchange for payment of the Respondent's out-of-pocket costs directly related to the disputed domain name. In response to this letter, the Complainant's representatives received an email from a person named “Chyyfei” stating:
“My name is Chyyfei.The “” domain name belongs to
us now. Xiao has sold us this domain name in June of last year. We have
received your letter on 14 Dec 09. We also pay great importance to this
matter. In keeping good faith, please continue to keep in touch with us.
Chyyfei
December 18, 2009”
The Complainant strongly doubts that the domain name was in fact transferred from the Respondent to any other party. As it clearly follows from the WhoIs print out, “Jake Xiao” is still named as the owner of the disputed domain name. Moreover, “Chyyfei” or “Chyy” is not a real name; it is just a fantasy word and pseudonym. When searching with Google for this name, there are no hits for this name at all.
Following some further email correspondence between the parties, the Respondent finally requested USD400,000.00 for the disputed domain name:
“For purchasing the domain name, we have spent
much effort and resource. There are many interested buyer who are
interested in obtaining this domain name. Our asking price is 400,000
USD, Please contact your customer and reply to us. Thanks! – chyyfei
2010/01/18”
The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The disputed domain name is identical to the Trade Mark because it incorporates in its entirety the Trade Mark.
Given the reputation and renown of the Trade Mark, it is most likely that the majority of Internet users who see the disputed domain name will immediately recognise the Trade Mark, and assume that the disputed domain name is owned, endorsed or controlled by the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent registered the disputed domain name on October 15, 2006, long after the Trade Mark was registered and the Complainant had established its rights in the Trade Mark through extensive use over more than 35 years.
No relationship exists between the Complainant and the Respondent that would give rise to any license, permission, or authorisation by which the Respondent could own or use the disputed domain name, nor is the Respondent known by the disputed domain name. While the disputed domain name was registered in late 2006, it has never been used.
It is clear from the Respondent's email correspondence with the Complainant that the only purpose and reason that the Respondent had for registering and using the disputed domain name is that it knew of the Trade Mark and wanted to sell the disputed domain name to the Complainant.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain in bad faith for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant.
The Respondent never had any interest in the disputed domain name other than selling it to the Complainant. While it never used the disputed domain name, the Respondent demanded the incredible sum of USD400,000.00 for the disputed domain name. B. Respondent
The following facts are alleged by the Respondent in the Response.
The Respondent “Chen Yiyue” purchased the disputed domain name from the Respondent “Xiao Chaojiang” on June 8, 2008. The purchase price was RMB 480,000.
The Respondent intends to use the dispute domain name for free downloading of PLC training programs, although the Respondent has not used the disputed domain name since the purchase date.
The Respondent claims that the Respondent was pressured by the Complainant's attorney to sell the disputed domain name to the Complainant. The Respondent also claims that the amount the Respondent requested from the Complainant for sale of the disputed domain name was a result of the Complainant's attorney's continuing pressure. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the registration agreement for the disputed domain name is English;
(2) the Respondent originally approached and contacted the Complainant in English, offering the disputed domain name for sale, and it clearly follows from the Respondent's further correspondence with the Complainant that the Respondent is capable of using the English language;
(3) The Complainant is not able to communicate in Chinese and therefore, if it were required to submit all documents in Chinese, the administrative proceedings would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
The Respondent did not file any submissions with respect to the language of the proceeding by the due date.
On February 12, 2010, Beijing Innovative Linkage Technology Ltd. dba . transmitted by email to the Center its verification response confirming that the language of the Registration Agreement for the disputed domain name is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant's claim that the language of the Registration Agreement is English is not correct. Further, the Complainant's claim that requiring the Complainant to submit documents in Chinese would cause the proceeding to be unduly delayed as questionable merit given the Complainant has taken over 3 years to file the Complaint following registration of the disputed domain name.
The Panel nonetheless finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432), due to the Respondent's use of English language in email correspondence with the Complainant.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Moreover, the Panel notes that all of the Center's communications have been transmitted to the parties in Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) that:
1. the Panel will accept the filing of the Complaint in English;
2. the Panel will accept the filing of the Response in Chinese;
3. the decision will be rendered in English. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many years the date of registration of the disputed domain name.
It is trite that top level domains are to be discounted in determining the question of confusing similarity or identity.
The Panel finds that the disputed domain name is identical to the Trade Mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark or similar mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by many years. There is therefore a likely prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is therefore on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any legitimate trade mark rights in respect of the disputed domain name or that the disputed domain name is used, or intended to be used, in connection with a bona fide offering of goods or services.
The Respondent does not have any registered trade mark rights in China or elsewhere in respect of the wording WESTERN DIGITAL.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
This is a clear-cut and blatant case of registration of a domain name in order to sell the domain name to its rightful owner or to a third party for valuable consideration far in excess of the Respondent's out-of-pocket costs directly related to the domain name. There is clear evidence that the Respondent has offered to sell the disputed domain name to the Complainant for the substantial sum of USD 400,000.00.
The Panel finds that the assertions of the Respondent in the Response are not credible.
Furthermore, it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of the disputed domain name by the Respondent amounts to additional grounds for finding bad faith on the part of the Respondent.
The Complainant has asserted that the Respondents “Jake Xiao” and “Chyyfei” are in fact the same person, and that the purported transfer of the disputed domain name from “Jake Xiao” to “Chyyfei” is a sham transaction that did not in fact take place. The Respondent exhibited to the Response an agreement and a receipt purportedly showing the transfer of the disputed domain name from “Xiao Chaojiang” to “Chen Yiyue”. The Panel notes that, according to the WhoIs results for the disputed domain name, the owner of the disputed domain name is listed as “Chyy, jakexiao”. In any event, the Panel notes that offers to sell the disputed domain name to the Complainant were made by both “Jake Xiao” and “Chyyfei”.
The Panel makes no finding as to whether or not the disputed domain name was indeed transferred from “Jake Xiao” to “Chyy”, but would simply note that whether or not the disputed domain name was transferred from one Respondent to another subsequent to its registration has no bearing on the Panel's finding of bad faith under paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, the Panel has not hesitation in concluding that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
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.
Sebastian Hughes
Sole Panelist
Date: March 21, 2010
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