The Complainant is True Corporation Public Company Limited of Bangkok, Thailand, represented by Tilleke & Gibbins International Ltd., Thailand.
The Respondent is zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi/Grand Successful Technology Development Co. Ltd. of Qinhuangdao, Hebei, China, 2. The Domain Names and Registrars
The disputed domain names and are registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2013. On November 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 21, 2013, 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. In the process, it was discovered that the information on the WhoIs public record was different from the information provided by the Registrar. The Registrar confirmed the registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2013 providing the registrant and contact information disclosed by the Registrar which differs from the Respondent as stated in the Complaint, and inviting the Complainant to submit an amendment to the Complaint. In response, the Complainant filed assertions and evidence submitting that “the name of the Respondent at the time of submission of the Complaint was correct, and that the Complaint is sufficient and an administrative proceeding should be initiated”. In an email dated November 27, 2013, the Center responded by saying that it will proceed on a provisional basis in the administration of this proceeding, subject to the administrative panel’s final determination (upon appointment) as to Respondent identity and the issue of cyberflight, and including any procedural steps the panel may deem necessary in this regard.
On November 20, 2013, the Center transmitted an email to the parties in both English and Chinese regarding the language of proceedings. On November 20, 2013, the Respondent submitted its request that Chinese be the language of proceedings to the Center by email. On November 28, 2013, the Complainant submitted a Chinese translated Complaint to the Center by email.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2013. The Response was filed with the Center on December 19, 2013.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 3, 2014. 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 January 23, 2014, the Center notified the parties the Administrative Panel Order No.1, requesting the Respondent to provide evidence to prove the exact dates the disputed domain names were transferred to the Respondent. On January 24, 2014, the Respondent submitted its response in regard of the Panel Order to the Center by email. On January 28, 2014, the Complainant submitted its comments to the Center by email. 4. Factual Background
The Complainant is the largest and the leading service provider of integrated telecommunications solutions and television broadcasting in Thailand. It is also the registered owner of trademark and service mark TRUE. In the last decade, the Complainant has been using TRUE as its trademark designating its goods and services in Thailand and around the world.
The Complainant is the owner of the registered trademarks TRUE, TRUEMOVE, TRUELIFE, ON TRUELIFE, PLAY TRUELIFE, TRUE CLICK LIFE, TRUEMONEY, TRUE COFFEE, TRUESELECT, TRUEYOU, TOUCH SIM BY TRUEMOVE, and TOUCH BY TRUEMONEY covering goods and services in International Classes 9, 7, 14, 16, 18, 19, 21, 25, 26, 28, 29, 30, 32, 35, 36, 38, 41, 42, and 43 in Thailand. The trademark TRUE is also registered as a well-known mark with the Thai Department of Intellectual Property.
The Complainant is also the owner of the trademark and service mark TRUEMOVE H, and has been using the mark for its services since the commercial launch of 3G+ services since March 1, 2011. The trademark was created based on the Complainant’s registered trademark TRUEMOVE, along with the use of the logo “H,” for which the logo “H” is intended to be related to the HSPA technology that the Complainant uses for its 3G+ services. Although the mark TRUEMOVE H is not yet registered in Thailand, the trademark TRUEMOVE H with the 3G services is well-known among mobile users in Thailand and has been recognized as associated with the Complainant’s services since its inception.
In terms of Internet presence, the Complainant has been active on the Internet for some years, and has operated the Internet website “” since March 31, 2004 and “” since March 18, 2011. These websites include information on the Complainant’s businesses in all categories, together with information about the Complainant’s history.
The disputed domain names and were first created on March 8, 2011 and March 6, 2000 respectively. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In terms of the disputed domain name the reasons are as follows;
1. The Complainant is the proprietary owner of the registered trademarks TRUE, TRUEMOVE, TRUELIFE, ON TRUELIFE, PLAY TRUELIFE, TRUE CLICK LIFE, TRUEMONEY, TRUE COFFEE, TRUESELECT, TRUEYOU, TOUCH SIM BY TRUEMOVE, and TOUCH BY TRUEMONEY covering goods and services in International Classes 9, 7, 14, 16, 18, 19, 21, 25, 26, 28, 29, 30, 32, 35, 36, 38, 41, 42, and 43 in Thailand. The trademark TRUE is also registered as a well-known mark with the Thai Department of Intellectual Property.
2. The initial name of each of the trademarks and service marks under these registrations is comprised of “true,” as the mark “true” is intended to be mainly used worldwide and to be related to its company name, and also be related to the security symbol “TRUE” that the Complainant adopted in 2004.
3. The disputed domain name consists of the trademark TRUE as a key element of the disputed domain name, which is confusingly similar to the Complainant’s well-known mark. It is a fact that the disputed domain name using the word “true” as the predominant and first part of the disputed domain name followed by the generic corporate identifier word “corp” has also caused confusion due to the similarity to the Complainant’s trademarks.
In terms of the disputed domain name , the reasons are as follows:
1. The Complainant is also the owner of the trademark and service mark TRUEMOVE H, and has been using the mark for its services since the commercial launch of 3G+ services since March 1, 2011. Although the trademark TRUEMOVE H is not yet registered in Thailand, the trademark TRUEMOVE H with the 3G services is well-known among mobile users in Thailand and has been recognized as associated with the Complainant’s services since its inception.
2. The disputed domain name is identical to the Complainant’s trademark, as it incorporates the trademark TRUEMOVE H entirely. The addition of the generic Top-Level Domain (gTLD) “.com” is inconsequential.
3. In addition, the disputed domain name , which consists of the trademark TRUEMOVE, is also confusingly similar to the Complainant’s registered trademark and service mark TRUEMOVE. The term “truemove” used as the initial part of the disputed domain name is the essential element, which is confusingly similar to the registered trademark TRUEMOVE, regardless of the other term, i.e. the Roman character “h” in the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:
1. There is no evidence to support a determination that the Respondent owns any trademarks that reflect any such legitimate right in the disputed domain names and . The WhoIs information associated with the disputed domain names identifies the Respondent as “zuopan,” showing no connection to the disputed domain names. The Respondent is not commonly known by either of the disputed domain names, and , themselves, or by any part of such domain names. There is no evidence in the WhoIs information suggesting that the Respondent is commonly known as the disputed domain names or any part of such domain names, pursuant to Policy paragraph 4(c)(ii).
2. The Respondent uses the disputed domain names to display unauthorized information regarding the Complainant’s goods and services, including confidential information, such as purchase orders, monthly cost center reports, which were stolen by the Respondent, who hacked into the Complainant’s computer system and computer data, which has specific security measures, to steal this confidential information, and also provided links to the Complainant’s confidential information on the Respondent’s disputed domain names and . Both of the Respondent’s disputed domain names contain identical contents.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The disputed domain names were registered in bad faith on the following grounds:
1. On March 8, 2011, the Respondent registered the disputed domain name only seven days after the Complainant’s first use of TRUEMOVE H as its brand and trademark. After the registration of the disputed domain name, the Respondent had not used the disputed domain name for either commercial or noncommercial purposes. The purpose of the registration of the disputed domain name was to sell it at a high price. This is evident in the Respondent’s notice for sale of the disputed domain name on the homepage of the disputed domain name on January 1, 2012, only seven months after the registration of the disputed domain name . The notice of sale did not provide a sale price for the disputed domain name. However, on April 16, 2013, a new notice for sale of the disputed domain name for USD 100,000 (one hundred thousand US dollars) was offered on the homepage of the disputed domain name. This demonstrates the Respondent’s bad faith in registering the disputed domain name for the purpose of sale, pursuant to paragraph 4(b)(i) of the Policy.
2. At the beginning of June 2013, the Respondent redirected the traffic of the disputed domain name to the website of the Complainant’s competitor “dtac”, in order to obstruct the Complainant from operating its business by causing confusion to and misleading millions of the Complainant’s customers. This forced the Complainant to contact the Respondent to purchase the disputed domain name in order to stop the Respondent from continuing to damage the Complainant. However, attempts were made to purchase the disputed domain name from the Respondent on June 13, 2013, which ended up being unsuccessful, after several negotiations with the Respondent to reduce the sale price to USD 75,000 (seventy-five thousand US dollars). The redirecting of the disputed domain name to the Complainant’s competitor demonstrates that the Respondent is aware of the business operations of the Complainant.
3. The disputed domain name was transferred to the Respondent on June 20, 2013. Based on the Domain Report for provided by DomainTools on September 12, 2013, was originally registered with the registrar R on March 6, 2000 by Tijhuis. On June 20, 2013, Tijhuis, the registrant, transferred the disputed domain name to the Respondent. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the transfer of a domain name to a third party is treated as a new registration. The date of registration of the disputed domain name is therefore June 20, 2013. The Respondent had the disputed domain name transferred to it on June 20, 2013, which is very close to the period of time that the Complainant was in the process of negotiating to purchase the disputed domain name from the Respondent. This demonstrates that the Respondent was aware of the Complainant at the time of registering the disputed domain name .
The disputed domain names are being used in bad faith on the following grounds:
1. After the Respondent had registered both of the disputed domain names, and , and because of the unsuccessful negotiations to sell the disputed domain name to the Complainant, the Respondent tried other ways to force the Complainant to renegotiate with the Respondent. The Respondent illegally accessed the Complainant’s computer system and computer data, which has specific security measures, and stole the Complainant’s information, user data, and customer ID cards, including confidential information. On July 20, 2013, the Respondent disseminated the stolen confidential information on the disputed domain names and . Both of the disputed domain names and exhibited identical contents, i.e. the stolen confidential information. The act of the Respondent occurred one month after the disputed domain name was transferred to it. Such act is clear proof of the Respondent’s bad faith to target the Complainant as a victim, which is considered cyber-squatting.
2. After having found that the Complainant’s computer system and computer data had been hacked and the stolen confidential information disseminated on the Respondent’s disputed domain names and , the Complainant filed a criminal complaint against the domain name holder of for offenses under the Thai Computer Crime Act B.E. 2550 (2007) with the Economic Cybercrime Division of the Royal Thai Police.
3. In order to prevent the Respondent’s continual posting of the Complainant’s confidential information on the disputed domain names and , which has caused damage to the Complainant, the Complainant requested service providers in Thailand to temporarily block Internet users in Thailand from accessing both disputed domain names and .
4. However, after the service providers blocked Internet users from accessing the Respondent’s disputed domain names, the Respondent redirected traffic to its disputed domain names to the Complainant’s business competitor “Total Access Communication PCL,” which operates its business under the “dtac” brand. The homepages of and as of September 9, 2013 show an advertisement placed by dtac, one of the Complainant’s competitors. B. Respondent
The Respondent contends that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. The Respondent contends that based on the evidence adduced by the Complainant in its Complaint, it is not possible to conclude that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. The Respondent further contends that the language of the present administrative proceeding should be Chinese and consequently, the Complainant should provide a Chinese version of all the evidence adduced in the Complaint. Given that the documentation adduced by the Complainant to prove that the Complainant has rights in certain trade and or service marks is not in Chinese, the Respondent is unable to conclude that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds.
The Respondent contends that it has rights or legitimate interests in respect of the disputed domain names on the following grounds:
1. The Respondent contends that it is the registered owner of the trademark TRUEMOVE H / 真动 in China and to register the disputed domain name which corresponds with a registered trademark is completely legitimate.
2. In terms of the other disputed domain name , the Respondent contends that it comprises of common English words “true” and “corp” to which anyone is free to register. The fact that the Complainant has obtained registration of a trademark which comprises of common English words is not a legitimate ground to oppose the registration by another of a domain name which corresponds with this registered trademark.
The Respondent contends that the domain names were not registered and are not being used in bad faith on the following grounds:
1. The Respondent contends that it has registered the disputed domain names legitimately. The Respondent contends that the Complainant has its place of business in Thailand and whilst the Respondent operates in China, the Complainant has no operations in China. Therefore, the Respondent has no knowledge of the Complainant and its business.
2. The Respondent contends that it has acquired the disputed domain names through a transfer from the original registrants. The Respondent has acquired the disputed domain name for its business operations, in particular to complement the registration of the trademark TRUEMOVE H / 真动in China. As for , the word “true” in “truecorp” is also found in the mark TRUEMOVE H / 真动 and means “真” in the Chinese trademark 真动.
3. The Respondent contends that the disputed domain names were inactive since September 2013.
4. The Respondent contends that all the evidence of bad faith registration and use adduced by the Complainant cannot be used against the Respondent as the Respondent was not the registrant of the disputed domain names at the critical times.
5. The Respondent asserts that as it has limited knowledge of the Internet, it is thus not able to show the exact time and date on which it has acquired the disputed domain names. The most the Respondent could establish is that the disputed domain names were inactive and has remained inactive since September 2013.
6. The Respondent contends that the burden is on the Complainant to establish that the Respondent has registered and is using the disputed domain names in bad faith and to do so, the Complainant must adduce evidence which establish that the Respondent is responsible for such conduct not that of a third party who is completely unrelated to the Respondent. The Respondent contends that the evidence as adduced by the Complainant is unable to establish bad faith on the part of the Respondent after the Respondent has acquired the disputed domain names. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreemenst for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or 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 case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English on the following grounds:
1. That it is apparent from the written communications exchanged between the Complainant’s employee and the Respondent with respect to a possible purchase of the disputed domain names, the Respondent has no difficulties communicating in the English language;
2. The disputed domain names are in English;
3. The Complainant is not able to communicate in Chinese, and if the Complaint were to be translated in Chinese, the proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Having submitted their request for the proceeding to be conducted in English, the Complainant has nevertheless agreed to submit a translation of the Complaint in Chinese to the Center.
The Panel also notes that the Respondent has objected to English being the language of the present proceeding on the following grounds:
1. That the language of the proceeding should correspond with the language of the registration agreement with the registrar;
2. That the Respondent has not entered into any agreement with the Complainant with respect to the issue of English being the language of the present proceeding;
3. That the Respondent is not conversant in the English language and if English is the language of the proceeding the Respondent is disadvantaged in its ability to articulate arguments in mounting its defense.
After considering the circumstances of the present case and the submission of the Complainant’s request as well as the objections from the Respondent, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the websites to which the disputed domain names were pointed were in English which suggests that the Respondent understands English; (c) prior communications between the Complainant and the Respondent in respect of a sale of the disputed domain names demonstrates the Respondent’s ability to understand and communicate in English; (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Respondent has responded in Chinese. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to show that it is the largest and the leading service provider of integrated telecommunications solutions and television broadcasting in Thailand. It is also the registered owner of trademark and service mark TRUE. In the last decade, the Complainant has been using TRUE as its trademark designating its goods and services in Thailand and around the world. The Panel finds that the Complainant is the registered owner of trademarks and service marks consisting of the word “true” and has trademark rights in them, TRUE, TRUEMOVE, TRUELIFE, ON TRUELIFE, PLAY TRUELIFE, TRUE CLICK LIFE, TRUEMONEY, TRUE COFFEE, TRUESELECT, TRUEYOU, TOUCH SIM BY TRUEMOVE, and TOUCH BY TRUEMONEY covering goods and services in International Classes 9, 7, 14, 16, 18, 19, 21, 25, 26, 28, 29, 30, 32, 35, 36, 38, 41, 42, and 43 in Thailand. The Panel also accepts that the trademark TRUE is also registered as a well-known mark with the Thai Department of Intellectual Property.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s trademark TRUE in its entirety, the English word “corp” and the gTLD suffix “.com”. The Panel is of the view that a straightforward visual or aural comparison of the trademark with the alphanumeric string in the disputed domain name yields the conclusion that the disputed domain name is confusingly similar to the family of trade or service marks consisting of the word “true”. The addition of suffixes such as “.com” being the gTLD is not a typically distinguishing factor.
The Panel finds for the Complainant on the first part of the test in respect of the disputed domain name .
Further to its trademark registration for the term TRUEMOVE, the Complainant is also the owner of the trademark and service mark TRUEMOVE H, and has been using the mark for its services since the commercial launch of 3G+ services since March 1, 2011. It should be noted that the mark TRUEMOVE H is not yet registered in Thailand but the Complainant has adduced evidence to show that the mark TRUEMOVE H with the 3G services is well-known among mobile users in Thailand and has been recognized as associated with the Complainant’s services since its inception. Prior UDRP panels have held that for unregistered trade or service marks the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. The Panel finds that through substantial usage, the Complainant has common law rights in the trademark TRUEMOVE H.
The disputed domain name consists of the Complainant’s trademark TRUEMOVE H in its entirety. The Panel is of the view that a straightforward visual or aural comparison of the trademark TRUEMOVE H with the alphanumeric string in the disputed domain name yields the conclusion that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which it has rights. The addition of the gTLD suffix “.com” is not a distinguishing factor.
Thus, the Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
(1) There is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms “truecorp” and “truemoveh” in its business operations.
(2) The Respondent has contended that it has registered the disputed domain name for its business operations, in particular to complement the registration of the trademark TRUEMOVE H / 真动 in China. As for , the word “true” in “truecorp” is also found in the mark TRUEMOVE H / 真动and means “真” in the Chinese trade mark “真动”. However, the Panel finds in the particular circumstances of this case that the mere registration of a trade or service mark by the Respondent does not per se demonstrate that the Respondent has rights or legitimate interests in the disputed domain names. The Respondent did not adduce evidence such as the nature of its business; certificates of incorporation of its company; sales and advertisements of its products or services to establish that it is using the disputed domain names in a bona fide offering of goods or services on the Internet.
(3) The Respondent has further contended that it has filed court proceedings in the Province of Fujian, China in respect of alleged violation of its registered trademark TRUEMOVE H / 真动. However, what the Respondent has adduced before the Panel is an acknowledgement that such a court proceeding has been filed. The Panel did not have sight as to any court papers such as the Statement of Claim or Complaint filed by the Respondent detailing the merits of the Respondent’s claims or allegations. The Panel is of the view that a bare assertion on the part of the Respondent to take court proceedings against the Complainant without substantive evidence does not demonstrate or establish that the Respondent has legitimate interests or rights in the disputed domain names.
(4) There is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the TRUE and TRUEMOVEH trademarks.
(5) There is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview 2.0, paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent appears to be unable to adduce evidence of rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service of the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
A critical issue that has to be resolved in this proceeding is the purported change in the registrant of the disputed domain names. At the time the Complaint was filed, the Respondent named in the Complaint was “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi”. Subsequently, it transpired that the registrant as stated in the WhoIs public records is “Grand Successful Technology Development Co. Ltd”. The Complainant was invited by the Center to amend the Complaint but the Complainant has submitted that “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi” and “Grand Successful Technology Development Co. Ltd” are essentially the same entity. On the other hand, the Respondent contends that all the evidence of bad faith registration and use adduced by the Complainant cannot be used against the Respondent as the Respondent was not the registrant of the disputed domain names at the critical times, that is “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi” is not the same person/entity as “Grand Successful Technology Development Co. Ltd”. In view of the complexity of the matter, the Panel has ordered that the Respondent provides the Panel with evidence to prove the exact date the disputed domain names and were transferred to the Respondent, including but not limited to copy of invoice, or email communications with the concerned registrar, etc.
The Respondent was unable to provide any of the evidence as requested by the Panel. The explanation provided by the Respondent was that the Respondent and the previous registrant “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi” knew each other as they are all from the same city in China. The acquisition process was completed in an informal manner with cash changing hands between them. The Respondent also contends that there were no other formalities necessary on the part of the Registrar to effect the transfer of the disputed domain names from the previous registrant “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi” to the Respondent. The Respondent claims he is unable to produce any documentary proof but that the change of the registrant of the disputed domain names to the Respondent occurred sometime in October 2013.
After considering the submissions from the Respondent and the comments from Complainant, the Panel is of the view that the Respondent has not provided sufficient evidence to show that there had in fact been a transfer of the disputed domain names from the previous registrant “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi” to the Respondent. It should be noted that the Respondent Grand Successful Technology Development Co. Ltd is the English translation of “Qinhangdao Hongshun Keji Kaifa Youxian Gongsi”. This is confirmed by the Registrar eName service in its email response to the Center’s queries dated November 19, 2013. Therefore, except for the term “zuopan”, the rest of the contact information of the previous registrant and the Respondent is virtually the same. This is again evidenced in the Registrar’s email response to the Center dated November 21, 2013. In the absence of substantive evidence from the Respondent to prove that there was in fact an actual transfer of the disputed domain names from a previous registrant to it, the Panel finds that the identity of the registrant of the disputed domain names has not changed and that the Respondent Grand Successful Technology Development Co. Ltd is “zuopan, Qinhangdao Hongshun Keji Kaifa Youxian Gongsi”.
Having arrived at this conclusion, the Panel moves on to consider the evidence adduced by the Complainant on the issue of bad faith registration and use.
One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders.
On the weight of the evidence adduced by the Complainant, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Furthermore, the Complainant has had a substantive Internet presence via its official websites “” since March 31, 2004 and “” since March 18, 2011. These websites include information on the Complainant’s businesses in all categories, together with information about the Complainant’s history. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its products and services.
The burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a heavy one. There is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Complainant has adduced evidence to show that confidential information belonging to the Complainant has been stolen and displayed on the Respondent’s websites. This gives the perception that the websites are either owned by the Complainant or that the Respondent is affiliated with or authorized by the Complainant when this is not true. Now, the disputed domain names are inactive. It should be noted that previous UDRP panels have held that the apparent lack of active use of the disputed domain names does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. In this proceeding, the Panel takes into consideration the conduct of the Respondent in its attempt to sell the disputed domain names to the Complainant and the display of confidential information belonging to the Complainant on the Respondent’s websites which has been surreptitiously obtained. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites under paragraph 4(b)(iv) of the Policy.
Thus, the Panel finds for the Complainant on the third part of the test. 7. Decision
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 names and be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: February 13, 2014
Full & Egal Universal Law Academy