The Complainant is Glykka LLC of San Francisco, California, United States of America (“US”).
The Respondent is Fortop Design & Scheme Co., Ltd., Ye Churun of Jiangmen, Guangdong, China, represented by Norton Rose Fulbright IP Service Limited, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2014. On June 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Fortop Design & Scheme Co., Ltd. is listed as the registrant and providing the contact details. On June 6, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 7, 2014, the Complainant confirmed its request that English be the language of the proceeding. On June 11, 2014, the Respondent submitted a request that Chinese be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2014. The Response was filed with the Center on July 2, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 9, 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. 4. Factual Background A. Complainant
The Complainant is a company incorporated in the US and the owner of a registration in the US for the trade mark SignEasy, with a filing date of March 8, 2013 and a registration date of July 30, 2013 (the “Trade Mark”). B. Respondent
The Respondent Ye Churun is an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on October 7, 2005. D. The Website at the Disputed Domain Name
At the time of the Complaint, the website at the disputed domain name (the “Website”) featured prominently the Trade Mark (albeit in a different font to the font used for the Trade Mark on the Complainant’s “www.get” website (the “Complainant’s Website”)) and depicted a photograph of a tablet device with a signature application similar to the application offered by the Complainant under the Trade Mark and featured on the Complainant’s Website. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Trade Mark was first used in commerce on June 6, 2012. The Complainant uses the Trade Mark in respect of downloadable software applications for desktops and mobile computers, which provide a simple and easy way to sign and send documents electronically. The Complainant’s application is currently one of the top 10 downloaded applications in the business category on Apple’s AppStore. It is also available for download and use on Android and Blackberry. It has been downloaded at least 2 million times as of the date of the Complaint.
The Complainant’s SignEasy software application has had a lot of exposure in the media, and has been discussed in widely-read traditional media and technology blogs, such as Forbes, Engadget, PandoDaily, CNBC, TheNextWeb and The Boston Globe.
The disputed domain name is identical to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name has never been used in connection with a bona fide offering of goods or services.
The Respondent has been using the disputed domain name since creation as an advertising billboard for the sole purpose of selling the disputed domain name. The Website is an almost identical replica of the Complainant’s Website which completely mimics the Complainant’s Website, making it seem that the Website is offering a software product identical to the Complainant’s SignEasy product, when it fact the Website is simply being used to indicate the disputed domain name is for sale.
The Respondent has never been commonly known by the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name
The disputed domain name has been registered and used in bad faith, for the purpose of offering it for sale. The Respondent engaged in correspondence with the Complainant’s representatives in May/June 2012 and also in March 2014, which demonstrates the Respondent’s sole purpose for registration of the disputed domain name was illegitimate speculation. B. Respondent
The Respondent made the following submissions in the Response.
Although the disputed domain name is similar to the Trade Mark, there is no likelihood of confusion, as the Complainant has always been using and is known by the domain name .
The Respondent initially registered the disputed domain name in 2002, as the Respondent considered the disputed domain name had very high commercial value. The Respondent’s initial registration for the disputed domain name was inadvertently not renewed and was cancelled in 2005. The Respondent registered the disputed domain name again in October 2005, although, for personal reasons, the Respondent did not commence commercial use of the disputed domain name.
When the Respondent registered the disputed domain name the Complainant did not have any rights in respect of the Trade Mark.
The Respondent did not register the disputed domain name for the purpose of selling it. The Respondent never took the initiative to contact the Complainant. On two separate occasions the Complainant contacted the Respondent to ask whether the Respondent was willing to sell the disputed domain name. Although the Website contains a “buy now” link, this was simply an inactive template link.
The Respondent has prepared a business plan and is intending to use the disputed domain name in respect of a Word Press template website, which is however still in the production stage.
As soon as the Complaint was filed, the Respondent immediately shut down the Website and replaced it with a Chinese language page disclaiming any relationship between the disputed domain name and the Complainant.
The Respondent seeks a finding that the Complainant has engaged in reverse domain name hijacking, on the grounds it was the Complainant who twice initiated contact with the Respondent in order to offer to buy the disputed domain name, there are obvious material errors in the Complaint, the Respondent’s registration and use of the disputed domain name is legitimate, and in all the circumstances therefore the proceeding against the Respondent is defamatory. 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 the 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.
Paragraph 11(a) of the Rules 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.
The Complainant has requested that English be the language of the proceeding, for the following reasons:
(1) The Respondent is clearly familiar with English, having communicated with the Complainant in English prior to the filing of the Complaint;
(2) The Complainant is unable to communicate in Chinese and would be prejudiced by having the proceeding take place in Chinese.
The Respondent has requested that Chinese be the language of the proceeding, for the following reasons:
(1) The Respondent is not proficient in English and enlisted the assistance of a friend to draft the pre-Complaint email correspondence with the Complainant;
(2) The first pre-Complaint email from the Complainant’s representatives to the Respondent was in fact in Chinese;
(3) The Complainant is unable to communicate effectively in English and would be prejudiced by having the proceeding take place in English.
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.
Notwithstanding the Respondent’s assertions that it cannot understand English, in addition to the evidence of the Respondent’s pre-Complaint English language email correspondence with the Complainant’s representatives, the Panel notes that both the Website and the Respondent’s proposed Word Press website are entirely in English. The Panel therefore finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. It will accept the filing of the Complaint in English;
2. It will accept the filing of the Response in Chinese; and
3. It will render its Decision in English. 6.2 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
Although the disputed domain name was registered more than seven years before the date of registration of the Trade Mark and almost seven years before the date of first use of the Trade Mark, the consensus view in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition) (“WIPO Overview 2.0”) in relation to this issue is as follows:
“Registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.
The disputed domain name contains the Trade Mark in its entirety. The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
The Panel therefore holds that the Complaint fulfills 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 non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed 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. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Panel concludes that the Respondent has failed to establish that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. The Respondent is not the owner of any registered trade mark rights in respect of the disputed domain name.
The Panel finds the Respondent’s evidence as to its proposed use of the disputed domain name in respect of a Word Press template business unconvincing. The evidence suggests the disputed domain name was dormant for many years, before being opportunistically linked to the Complainant and the Trade Mark via the Website. In all the circumstances, the Panel is unable to conclude that the use of, or demonstrable preparations to use, the disputed domain name is in connection with a genuine bona fide commercial purpose. The Panel also notes, for the record, that the Respondent has failed to adduce any evidence to support its claim that it first registered the disputed domain name as early as 2002.
The Respondent has adduced no evidence to show that the Respondent has been commonly known by the disputed domain name.
The evidence does not support the conclusion that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish 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
Under paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
Circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name.
Paragraph 4(b)(iv) of the Policy provides as follows:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Although, in all the circumstances, in the Panel’s view there is a strong likelihood of confusion between the Website and the Trade Mark, there has been no evidence adduced, nor is it contended by the Complainant, that the Respondent has been using the Website for commercial gain in accordance with the parameters of paragraph 4(b)(iv). To the contrary, the Complainant submits, and the evidence suggests, that the Website has been used solely in order to offer the disputed domain name for sale, or otherwise in order to facilitate the Respondent’s opportunistic objective of selling the disputed domain name. Such a conclusion is fortified by the Respondent’s conduct in offering to sell the disputed domain name to the Complainant’s representatives for as much as USD 80,000.
There can be no doubt, on the evidence, that the Respondent has registered the disputed domain name for opportunistic reasons. It appears that the disputed domain name was dormant for many years and that, upon finding out about the Complainant and its business, the Respondent set up the Website, which features prominently the Trade Mark (albeit in a font different to the font used by the Complainant) and, at first glance, mimics the look and feel of the Complainant’s Website1 . Furthermore, upon being contacted by the Complainant’s representatives, the Respondent has clearly offered to sell the disputed domain name for as much as USD 80,000.
The difficulty faced by the Complainant, however, is that paragraph 4(b)(i) of the Policy is expressly linked with the first limb under paragraph 4(a) of the Policy, and requires that the Respondent targeted the Complainant or its Trade Mark at the time it registered or acquired the disputed domain name. On the facts, the Complainant is unable to establish that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant, as the Respondent could not have contemplated the Complainant’s then non-existent trade mark (see paragraph 3.1 of the WIPO Overview 2.0).
The panel is aware of the approach of a minority of UDRP panels which suggests panels should look at the totality of the circumstances of a case and assess the concept of bad faith registration and use as a unitary concept. The Panel is also aware of the Octogen line of authorities, also supported by a minority of UDRP panels. However, the Panel is of the view that the Complainant is unable to avail itself of such approaches in the present case and agrees with the majority of UDRP panels that, in particular in cases such as the present proceeding where complainants seek to rely on paragraph 4(b)(i) of the Policy to establish bad faith registration and use, a complainant must prove that the respondent has both registered and used the domain name in bad faith in order to succeed under paragraph 4(a)(ii) of the Policy.
In all the circumstances of this proceeding, in accordance with the parties’ submissions, and on the evidence filed, the Panel therefore finds that the requisite element of bad faith has not been satisfied. Accordingly, the third condition of paragraph 4(a) of the Policy has not been made out. D. Reverse Domain Name Hijacking
In seeking a finding against the Complainant of reverse domain name hijacking, the burden of proof is usually on the Respondent.
It is trite that the Complainant’s mere lack of success does not of itself suffice. The Respondent must show that the Complainant knew it lacked relevant trade mark rights, the Complainant knew the Respondent had rights or legitimate interests, or the Complainant knew there was a lack of bad faith on the part of the Respondent; or otherwise that the proceeding has been brought to unreasonably harass the Respondent. This is a high evidential burden.
In all the circumstances, the Panel concludes the Complainant was entitled to file its Complaint, particularly given the unitary approach adopted by a minority of UDRP panelists and the Octogen line of authorities.
The Panel is therefore unable to conclude that this is a case where the Complainant in fact knew, or clearly should have known, at the time that it filed the Complaint that it could not prove one of the essential elements required by the Policy.
The Panel also rejects the Respondent’s assertion that the proceeding is defamatory.
Accordingly, the request for a finding of reverse domain name hijacking is denied. 7. Decision
For the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Sole Panelist
Dated: July 23, 2014
1 Contrary to the submissions of the Complainant, however, the Website is most certainly not a replica of the Complainant’s Website.
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