Complainant is Chinesepod Limited of London, United Kingdom of Great Britain and Northern Ireland (United Kingdom), represented by Marco Notarnicola, United Kingdom.
Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines; Privacy Protection Service INC of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2015. On March 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2015, the Registrar 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 Complainant on March 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 16, 2015.
The Center verified that the Complaint together with the amended 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 W IPO 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 Respondent of the Complaint, and the proceedings commenced on March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 7, 2015.
The Center appointed Maxim H. W aldbaum as the sole panelist in this matter on April 14, 2015. 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
Complainant is a private limited company incorporated in the United Kingdom and it’s an organization providing web-based Chinese language-learning service. It started operations since 2005.
Complainant has rights over the trademarks CHINESEPOD or “ChinesePod”, for which it holds several registrations, including, among others: registration No. 007172919 in the European Union, registered in November 2009, class 41; registration No. 77312858 in the United States, registered in May 2010, class 41; and registration No. 5265301, in Japan registered in September 2009, class 9.
The disputed domain name was created on February 10, 2006. 5. Parties’ Contentions A. Complainant
Complainant’s assertions are summarized as follows:
Firstly, Complainant contends that Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s trademarks in which the Complainant has rights because the Disputed Domain Name is only differentiated by the letter “t” instead of the letter “d” from Complainant’s domain, . It is also asserted that Complainant’s business name is a distinctive and well- reputed identifier associated with his service through a list of evidences attached such as a result of Google search, a Wikipedia article and a Facebook page.
Secondly, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent has not, and cannot, show that the use of the Disputed Domain Name , or preparations to use the Disputed Domain Name is in connection with a bona fide offering of goods or services after the domain was first registered in 2006. It further contends that Respondent’s page remains a blank and unused page, in the form of a blank screen and a listing of online advertisements where the links consist of advertisements related to dubious language learning services. In result, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
Thirdly, Complainant contends that the Disputed Domain Name was allegedly registered and is being used in bad faith by Respondent because:
1) A Google search for “Chinesepot” returns results such as Chinese porcelains and cooking recipes, which is allegedly a proof that Respondent registered the Disputed Domain Name, , in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
2) Respondent has not attempted to make any bona fide offering of goods or services using the Disputed Domain Name since 2006, and has hidden its identity through a “privacy service” provider, “”.
3) Respondent knew, or should have known, that the subject name was the distinctive name and unregistered mark of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel notes that the Disputed Domain Name is differentiated by the letter “t” instead of the letter “d” from the Complainant’s domain. The domain name with the letter “d” - Chinesepod is naturally associated with other words such as podcast. However, the domain name with the letter “t” - Chinesepot will lead people to a different image - a container, typically rounded or cylindrical and of ceramic ware or metal, used for storage or cooking, which is a definition derived from the Oxford dictionary as well.
It is clear that Complainant has rights in the trademark CHINESEPOD or “ChinesePod”, however the Panel need not determine whether the Disputed Domain Name is confusingly similar to Complainant’s mark because of its findings in the third element. B. Rights or Legitimate Interests
The Panel disagrees with Complainant’s contention that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant contends that Respondent has not, and cannot, show that the use of the Disputed Domain Name , or preparations to use the Disputed Domain Name is in connection with a bona fide offering of goods or services after the domain was first registered in 2006
Complainant contends that Respondent’s domain page remains a blank and unused page, in the form of a blank screen and a listing of online advertisements where the links on the spurious website consist of advertisements related to dubious language learning services. The Panel notes in Annex 6 to the Complaint on the side and bottom column of this page, several related links regarding learning Chinese are listed. This is, the Panel believes, minimal evidence to prove that improper commercial gain may potentially result from this kind of online advertisement. Nevertheless, there is no need for further discussion on this issue since the third element is not met. C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have not been sufficiently made out by Complainant and that Respondent’s bad faith registration and use of the Disputed Domain Name have not been proven.
Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
(i) circumstances indicating that you have registered or you have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trade mark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you have registered the Disputed Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Disputed Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with 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 your location.
Complainant failed to develop its reasons for the assertion of bad faith.
1) The Panel disagrees that a Google search for “Chinesepot” that returns a list of results such as Chinese porcelains and cooking recipes will be considered as a proof of bad faith, i.e., that the mere purpose of Respondent’s registration of the Disputed Domain Name is to prevent Complainant’s trade mark or service mark from reflecting the mark in a corresponding domain name. To the contrary, as the Panel sees it, this does not support Complainant’s case in any way.
2) The Panel disagrees that the fact that Respondent has hidden its identity through a “privacy service” provider-“” will by itself be considered an evidence of bad faith. As a matter of fact, such “hiding” is deemed as common practice. It is an option provided where a registrant may choose to pay for such service. Besides, there are multiple reasons for a registrant to make such choice and Complainant failed to develop its reasons for its conclusion of bad faith.
3) The Panel disagrees with the assertion made by Complainant that Respondent knew, or should have known, that the subject name was the distinctive name and unregistered mark of Complainant. Perhaps today Complainant might establish its current popularity or awareness, yet it is unclear about the situation in the year 2006. Complainant registered the trademark CHINESEPOD in 2009 and 2010, which in fact are dated later than Respondent’s registration. As a result, Complainant has failed to establish that Respondent had any actual or should have had constructive awareness when Respondent registered the disputed domain name. The Annex 6 to the Complaint does not raise enough proof to show bad faith. There is no substantial evidence presented by Complainant to satisfactorily lead to a sustainable conclusion of bad faith at the time of registration by Respondent. The evidence presented is not sufficient to achieve a successful demonstration of bad faith.
Thus, Complainant has failed to establish the third element of bad faith. 7. Decision
For the foregoing reasons, the relief requested by Complainant is denied.
Maxim H. Waldbaum
Sole Panelist
Date: April 17, 2015
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