The Complainants are Provent Holdings Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“BVI”), and Harmony Park International Inc. of Belize City, Belize, represented by Tay Leng Kian, Malaysia.
The Respondent is chenxiaoyan of Shantou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is 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 July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2015, 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.
On July 8, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 13, 2015, the Complainant confirmed its 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 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 proceeding commenced on July 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2015. The Respondent did not submit any formal Response, save for two email communications dated July 30, 2015 and August 7, 2015 which are not substantive. The Center notified the Respondent’s default on August 6, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 21, 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.
On September 1, 2015, the Panel issued a Panel Order requesting the Complainant to submit, by September 4, 2015:
(1) Evidence showing its first use of the relevant trade mark, and specifically evidence regarding its reputation and goodwill at the time of the registration of the disputed domain name; and
(2) Any relevant specific evidence (eg, a Domain Tools report) to enable the Panel to assess the history of the disputed domain name, including the history of relevant IP addresses, WhoIs records and registrar records, and specifically the date upon which the Respondent became the Registrant of the disputed domain name.
On September 3, 2015, in response to the Complainant’s request for an extension of time to respond to the Panel Order, the Panel instructed the Center to notify the parties that the due date for the Complainant’s further submissions would be extended until September 11, 2015, and that the Respondent would have until September 17, 2015 to file any additional submissions in response.
On September 10, 2015, the Complainant files its further submissions in response to the Panel Order. The Respondent did not make any submissions in response. 4. Factual Background A. Complainants
The Complainants (henceforth, the “Complainant”) are companies incorporated in BVI and Belize, respectively, and the owner and licensee of registrations for the trade marks M88, M88.COM and M Device & M88.COM (the “Trade Mark(s)”) in numerous jurisdictions worldwide, the earliest dating from August 2012. B. Respondent
The Respondent is apparently an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on January 9, 2002. D. The Website at the Disputed Domain Name
Prior to the filing of the Complaint, the disputed domain name was resolved to a Chinese and English language website apparently providing online gambling services (the “Website”). As at the date of this decision, the Website has been taken down and the disputed domain name is not being used. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent stated in its email of July 30, 2015 that the Website was under revision, and asked for the Complaint to be withdrawn.
The Respondent re-asserted in its email of August 7, 2015 that the Website was under revision, and requested that the disputed domain name be released from Registry block. 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 order 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 made the following submissions in support of its request that English be the language of the proceeding:
(1) The Registration Agreement is available in both English and Chinese;
(2) The Website is available in English and has content which is aimed at English-speaking consumers;
(3) Translation costs are prohibitive and it would be unduly onerous and prohibitive on the Complainant to conduct the proceeding in Chinese. This is particularly so given the fact the Respondent has demonstrated proficiency in the English language, and would therefore not be prejudiced by the proceeding being conducted in English.
The Respondent did not file a formal Response and did not file any submissions with respect to the language of the proceeding.
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.
The Panel finds there is sufficient evidence to suggest the likely possibility 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.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Substantive Elements of the Policy
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 Marks acquired through use and registration.
Although the date of registration of the disputed domain name apparently pre-dates the dates of first use and of registration of the Trade Marks, this does not prevent a finding of identity or confusing similarity under the Policy, as the Policy makes no specific reference to the date on which the holder of the trade mark or service mark acquired rights (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In respect of the M88 and M88.COM Trade Marks, the addition of the letter “m” in the disputed domain name does not serve to distinguish the disputed domain name from these Trade Marks in any significant way.
Moreover, the disputed domain name is almost identical to the M Device & M88.COM Trade Mark (the only pertinent differences being the stylised fonts used by the Complainant in the M Device & M88.COM Trade Mark). 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 the Respondent has rights or legitimate interests in the 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 organization) 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 Marks. 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 Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which apparently provided online gambling services in direct competition with those provided by the Complainant under the Trade Marks.
The disputed domain name was apparently registered several years before the Complainant first obtained rights in the Trade Marks. However, as further discussed under the third element, the Respondent appears to have acquired the disputed domain name in 2014. Moreover, there is no evidence on the record as to when the Respondent first commenced use of the Website. In particular, the Respondent has failed to adduce any evidence to demonstrate any genuine and bona fide use of the disputed domain name and of the Website which pre-dates the dates upon which the Complainant obtained rights in the Trade Marks.
Furthermore, the Panel considers the Respondent’s act of taking down the Website after the date of filing of the Complaint is inconsistent with the Respondent having any rights or legitimate interests in the disputed domain name.
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 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. C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Complainant’s uncontested submissions filed in response to the Panel Order demonstrate that:
1. The Complainant has used the Trade Marks in relation to online gambling services since February 2010;
2. The earliest available evidence of use of the Trade Marks (by the Complainant’s predecessor in title) in relation to online gambling services dates from 2009;
3. The Respondent acquired the disputed domain name in the last quarter of 2014; and
4. The disputed domain name was not used in relation to online gambling services until 2015.
The finding of bad faith is fortified by the Respondent’s act of taking down the Website after the filing of the Complaint.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: September 25, 2015
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