The Complainants are Gamma Master China Ltd. of Hong Kong, China, Wall Street Institute KFT and Wall Street Institute KFT Luxembourg Branch of Luxembourg, Luxembourg, represented by Oficina Ponti, S.L.P, Spain.
The Respondent is Whois Privacy Protection Service Inc. of Washington, United States of America (the “USA”) / OwnD, Li Li of Beijing, China, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2011. On October 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 24, 2011 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 27, 2011.
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”).
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 November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for a response was November 30, 2011. The Response was filed with the Center on November 28, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on December 16, 2011. 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
According to the available WhoIs information, the disputed domain name was “created” on 25 August 2002, using a privacy shield. The Complainant could only file evidence to show that the disputed domain name has been used only by the placement of a disclaimer on the first page stating “This is a nonprofit and private website. We are not connected with any other party. We do not offer any service to the public.” There is a picture of a “Wall Street” road sign and of the bull located on Wall Street in New York, USA.
The Complainants all provide services of teaching English under the brand WALL STREET INSTITUTE. The Wall Street Institute group is made up of a number of companies and the holdings of intellectual property rights around the world have been divided between various companies.
For the purposes of this case, the Panel accepts that the Complainants have rights in the trademarks Wall STREET INSTITUTE and WALL STREET ENGLISH. The first application for the trademark WALL STREET ENGLISH in China was made in 2001. The Complainant states that this mark was also registered in 2001. However, from the documents filed by both the Complainants and the Respondent this does not appear to be correct and it appears that the mark was registered in China some time after this. This mark and a subsequent 2002 application for WALL STREET ENGLISH have subsequently been assigned to the first Complainant, i.e. Gamma Master China Ltd..
The Respondent, Li Li, claims to have registered the disputed domain name through OwnD in 2002 to use it as a website to provide financial information relating to stocks and shares to friends in English. The Respondent Li Li further claims to have been using the site since the date it was registered for this purpose. No evidence (such as print outs from the website) was filed to support this. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar.
The Complainants alleges that the disputed domain name is identical to its registered trademark WALL STREET ENGLISH. The Complainants also allege that the disputed domain name is similar to their registered trademark WALL STREET INSTITUTE on the basis that similarity is not changed by the changing of one element.
The Respondent has no rights or legitimate interests.
The Complainants rely on the fact that the disputed domain name was registered only one year after the Complainants’ trademark application for WALL STREET ENGLISH was filed in China. The disputed domain name appears not to have been used for the ten (10) years since it was registered and that the “only purpose of this registration is to resell a domain name identical to a well know trademark” or for the “obstruction of a domain name.” The Complainants allege that this “passive holding” shows the disputed domain name was registered as is being used in bad faith and cites a number of UDRP cases to support this, including the following:
- LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260, where the panel found:
“Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain names”.
- Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167, where the panel found:
“that the Respondent has failed to demonstrate a legitimate right or interest for the following reasons: a) There is no proof that the Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services […]” before notice of the domain name dispute, and that the disputed domain name did not resolve to any website and that the respondent was not commonly known by the disputed domain name.
The Complainants also rely on the fact that the Respondent is not commonly known by the name “Wall Street English”.
Registered and used in bad faith.
The Complaints rely on the argument that the trademarks WALL STREET ENGLISH and WALL STREET INSTITUTE are well-known to support their argument that the Respondent registered the disputed domain name in bad faith. They further rely on the following facts:
1. There has been no indication of plans or preparation to use the disputed domain name.
2. The simple addition of “www” to WALL STREET ENGLISH is simple cybersquatting.
3. That the use of a privacy shield makes it impossible to obtain evidence about the Respondent and is additional evidence of bad faith in that it makes it more difficult to contact the registrant of the disputed domain name.
4. The Respondent only replied to one email seeking to contact them. The lack of response is an indicator of bad faith (See e.g.WIPO Case No. D2005-1130 Almadera, S.L. v. Domingo Rodriguez Martinez;WIPO Case No. D2004-0803 Soria Natural, S.A. v. Vicenc Roig Ribas andWIPO Case No. D2002-0877 Añuri, S.A. v. Armendáriz Barnechea Abogados).
In an amendment to the Complaint filed in order to name OwnD and Li Li as the Respondents (in addition to the privacy shield), the Complainants filed further evidence that the registrant contact of the disputed domain Hu Yanlin owned 4,653 domain names including , , and . The Complainants allege that these domain names cybersquat on the trademarks of other companies and produce print outs from other sites using extensions. B. Respondent
Identical or confusingly similar.
The Respondent does not deny that the disputed domain name is identical to the trademark WALL STREET ENGLISH. The respondent however challenges the rights of the Complainants over two generic words “wall street” and “English” as well as arguing that the Respondent registered the disputed domain name well before the Complainants had a trademark registration for WALL STREET ENGLISH. The Respondent in particular notes that the first Complainant, i.e. Gamma Master China Ltd., was not incorporated until 2002 so could not have applied for the trademark in 2001, as alleged by the Complainants. The Respondent also produces a print out from the Chinese Trademark Office website suggesting that the mark WALL STREET ENGLISH was at first rejected in China and was only registered in 2006. The print out also shows an assignment of the mark in 2007.
Rights or legitimate interests.
The Respondent alleges that soon after registration of the disputed domain name, the Respondent built a finance and forex website for its friends and used the email boxes and that the disclaimer mentioned above has been used from the beginning. The Respondent also states it has never sought to sell the disputed domain name nor thought to do so. The Respondent also states that it has no intention to make money from the site. The Respondent specifically denies passive holding of the site and questions why the Complainants have taken ten (10) years to make a claim.
No evidence was filed to show the operation of the finance and forex website used for friends.
Registered and used in bad faith.
The Respondent says the disputed domain name was registered with OwnD as a domain reseller for eNom and it knows nothing about other domain names mentioned in the Complaint.
The Respondent also says that the Complaints are “Wall Street Institute” not “Wall Street English” and that “Wall Street” belongs to the USA and that is its legal domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
There is no dispute that the disputed domain name is identical to the Complainants registered trademark WALL STREET ENGLISH. The fact that it may have been formally registered after the disputed domain name was registered is not a relevant issue under the first element of the Policy. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4).
The Panel therefore finds that the disputed domain name is identical to the Complainants registered trademark WALL STREET ENGLISH. It is not necessary to consider whether the trademark WALL STREET INSTITUTE is confusingly similar to the disputed domain name. B. & C. Rights or Legitimate Interests / Registered and Used in Bad Faith
The real issue in this case is whether the Respondent has rights or legitimate interests and whether it has registered and used the disputed domain name in bad faith.
The Panel has given the case a great amount of thought and has determined, somewhat reluctantly, that the Complainant has not established that the Respondent has used the disputed domain name in bad faith. In the circumstances of this case where:
1) the disputed domain name has been registered for almost ten (10) years with no evidence of bad faith use arising;
2) the Respondent when contacted by the Complainant made no suggestion that it was willing to sell or transfer the disputed domain name;
3) the disclaimer of the webpage resolving to the disputed domain name makes it clear there is no link to the Complainants.
The UDRP resolution procedure is designed to resolve relatively uncomplicated domain name disputes. The Panel cannot therefore on the facts before it, and with the procedures available to it, reach a conclusion that the Respondent has been using the disputed domain name in bad faith. The Panel finds it must therefore deny the Complaint.
This determination is made without prejudice to the Complainants bringing another UDRP complaint should it obtain evidence of use in bad faith of the disputed domain name.1 Given this, and so as to not to cause conflicting decisions, the Panel declines to make findings as to whether the Respondent has rights or legitimate interests in the disputed domain name or registered the disputed domain name in bad faith. The Panel rather bases its decision on the grounds that there is insufficient evidence of use in bad faith of the disputed domain name as set out above. This should not be interpreted to mean that the Panel considers the Respondent does not have rights or legitimate interests or that it registered the disputed domain in bad faith (or vice versa). The issue as to whether there has been use in bad faith is decisive on the current evidence and accordingly the Panel has elected to only consider this part of the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas Clark
Sole Panelist
Dated: December 28, 2011
1 Naturally, the present determination under the Policy in no way precludes the Complainant from pursuing the matter further via the courts either, should it choose to do so.
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