The Complainant is Testbirds GmbH of Munich, Germany, represented by Ullrich & Naumann, Germany.
The Respondent is li wei, TestBird / Chengdu Zhong Yun Ce Technology Co., Ltd, Chengdu Zhong Yun Tian Xia Technology Co., Ltd. of Chengdu, Sichuan, China, represented by Beijing Lusheng (Shanghai) Law Firm of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2016. On February 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2016, 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 February 5, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On February 6, 2016, the Complainant submitted its request that English be language of the proceeding. On February 23, 2016, the Respondent submitted a late request that Chinese be 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2016. The Response was filed in Chinese with the Center on March 12, 2016. The Respondent stated that even though the language of proceedings should be Chinese, the Respondent would within 3 days file an English translation of the Response. The Respondent subsequently on March 15, 2016 filed an English translation of the Response. The Respondent requested that a three-member panel be appointed.
The Center appointed Douglas Clark, Dietrich Beier and William Law as panelists in this matter on April 7, 2016. The Panel finds that it was properly constituted. Each member of 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.
The Complainant filed an unsolicited supplemental filing on April 12, 2016. This was a Reply to the Response which attached a declaration setting out the market relevance of Testbirds GmBH dated March 10, 2016. 4. Factual Background
The Complainant is a German company established in 2011 in Munich, Germany. Its business is cloud testing of mobile phone applications especially for mobile games. The Complainant is the proprietor of the Community Trade Mark TESTBIRDS in international classes 9, 35 and 42 applied for on July 9, 2012 and registered on December 7, 2012.
The disputed domain name was registered on September 18, 2013.
The Respondents are Chinese companies established in 2013 and 2014 in China. Their business is also the cloud testing of mobile phone applications. The Respondents have, in addition to their Chinese language website, an English language website and attended the European Game Connection Europe in October 2015.
On November 13, 2014, the Respondents filed a trademark application in China for the mark “Testbird” and device. The device mark was a picture of a bird to the left of the word Testbird. The application was rejected on the basis of a similarity of the device mark to the mark owned by another company. On November 6, 2015, the Respondents filed an application for “Testbird” alone in China. Also in November 2015, the Respondent filed an application for “Testbird” with the United States Patent and Trademark Office. Both applications are pending.
The Respondents have also registered two subsidiaries, Testbird Limited in the Cayman Islands on July 8, 2014 and Testbird HK Ltd in Hong Kong on September 8, 2014.
In their short period of existence, both the Complainant and Respondents have developed a number of large well-known companies as clients. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark TESTBIRDS are nearly identical.
No Rights or Legitimate Interests
The Complainant asserts that is has prior rights to the trade mark TESTBIRDS and any use made by the Respondents was after the registration of the Respondents’ trade mark and cannot give rise to rights or legitimate interests. The Complainant asserts that identical graphics to those on the Complainant’s website are being used on the Respondent’s website.
Registration and use in bad faith
The Complainant asserted in its Complaint that the disputed domain name was registered and used in bad faith on the basis that the Complainant is well known in Europe; it has over 100,000 testers and many well known customers; it is active not only in Germany but also through subsidiaries in the Netherlands, Hungary, the United Kingdom of Great Britain and Norther Ireland and Sweden; the Complainant made a complaint to the Respondent in January 2016 but it refused to change its name; and, that the use of the name could leave to consumers being mistakenly attracted to the Respondents’ website.
In its Reply, the Complainant further asserted that at the time the disputed domain name was registered in 2013 the Complainant was already well known through its attendance at and presentations made at various conferences and trade shows. Because of this, the Complainant asserts that the Complainant and its name must have come to the attention of the Respondents’ founders on the basis that the Respondents’ founders were typically present at such fairs. No evidence was filed to show the Respondents’ founders had attended such fairs or had any interaction with the Complainant. B. Respondent
Identical of Confusingly Similar
The Respondent did not seek to argue the Complainant’s trademark TESTBIRDS and the disputed domain name is not identical or confusingly similar.
Rights or Legitimate Interests
The Respondents asserted that they had been using the trade mark TESTBIRD from the commencement of their business in 2013. They further asserted that the mark was not so distinctive that they were not entitled to register and use the trade mark in China when the Complainant only did business and had rights in Europe. Based on their own use of the mark TESTBIRD they were entitled to register the disputed domain name.
Registered and Used in Bad Faith
The Respondents further denied that they had registered and used the domain name in bad faith. They had not registered it or used it to attract business by creating confusion with the Complainant. They challenged the Complainant’s assertion to be well known in Europe. They pointed out that there was a difference in their names: the Complainant’s was TESTBIRDS; whereas, the Respondents’ was TESTBIRD. The Respondent denied the webpages contained similar logos or material and pointed to differences. The Respondents further relied on its own substantial use of the trade mark TESTBIRD since its incorporation pointing to its large number of clients. They denied trade mark infringement, stating they did not do business in Europe under the name TESTBIRD and that had told the Complainant they would not use TESTBIRD in Europe.
Finally, the Respondents relied on paragraphs 4(c)(i) and (ii) of the Policy and argued that before notice of the proceeding they had offered bona fide services under the disputed domain name since their incorporation and had developed a large business with many customers. Further they argued they had commonly been known by the name, using TESTBIRD at conferences and on TV since their incorporation and before any notice of dispute was given. 6. Discussion and Findings A. Language of Proceeding
The language of the Registration Agreements is Chinese. Paragraph 11(a) of the Rules provides that:
“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.”
The Complainant requested the language of the proceeding be English on the grounds that the Registration Agreement of the disputed domain name required English to be used; and that the Respondent was doing business in English and promoting itself in English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondents have through their attorneys filed a Response in Chinese and English. Given that the Complaint is in English and the Respondents have responded to it in both Chinese and English, the Panel will render its decision in English. B. Filing of English Translation of Response and Supplemental Filing of Reply
The English translation of the Response was filed after the time for filing of the Response. As the Response was filed in time and the filing of the translation causes no prejudice (and indeed was most likely beneficial) to the Complainant, the Panel permits the filing of English translation of the Response even though it was technically out of time.
The Reply was filed without permission of the Panel and was unsolicited. The general consensus of panelists is that supplemental filings should only be accepted if there are “exceptional circumstances” which explain why the party submitting the filing was not able to present the evidence in the first place. Further, where a panel decides to accept the filing, the panel should give the other party a chance to respond. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.2)
The Panel has considered the Reply and the evidence attached to it. The Reply did not provide any evidence that could not have been filed with the Complaint. However, so that the Complainant may feel satisfied that all its arguments and evidence has been considered, the Panel will accept the Reply and admit the evidence. Given the decision that the Panel has come to, the Panel did not consider it necessary to provide the Respondent an opportunity to respond. C. Identical or Confusingly Similar
The disputed domain name is other than the generic Top-Level (gTLD) “.com” confusingly similar to the Complainant’s trademark TESTBIRDS. The only difference is the removal of the letter “s”.
The first part of paragraph 4(a) of the Policy is therefore satisfied. D. 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 in the disputed domain name and whether it has registered and used the disputed domain name in bad faith.
The Panel has considered all the evidence and after deliberation and discussion determined that the Complainant has not satisfied its burden of proving that the Respondent registered the disputed domain name in bad faith.
The evidence the Complainant relies on to establish the disputed domain name was registered in bad faith on September 18, 2013 is:
1. that before this date the founders of the Respondents attended trade shows at which the Complainant made presentations and that the Respondents either knew of or were willfully blind to the Complainant’s rights in the name TESTBIRDS.
2. that graphics used on certain pages of the Complainant’s and Respondents’ websites are identical. (This argument was advanced by the Complainant to prove the Respondents had no rights or legitimate interests; however, it could also be used to show bad faith. The Respondents responded to the argument as if it was an allegation of bad faith.)
No evidence was provided to show that the founders of the Respondent were present at the trade shows or that there was any interaction between the founders of the Respondents and representatives of the Complainant. The graphics on the website do not appear to be identical, nor are they similar enough to support and inference that the Complainant’s graphics must have been seen or referred to when designing the Respondents’ website.
There is, therefore, insufficient evidence for the Panel to determine the Respondent knew of the Complainant when it registered the disputed domain name in 2013. Nor is the Panel prepared to make a finding of bad faith on the basis of willful blindness. Willful blindness has not generally been accepted by panelists as satisfying the test of bad faith registration. (See WIPO Overview 2.0, paragraph 3.4). While not decisive, the fact that the Complainant took more than two years from the registration of the disputed domain name and after the Respondents had commenced business to make a complaint bolsters the view that the co-existence of companies with similar names and domain names may not immediately come to the attention of a competitor even though in identical lines of business.
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 Respondents registered the disputed domain name in bad faith. The Panel finds it must therefore deny the Complaint.
This determination is made without prejudice to the Complainant bringing another UDRP complaint should it obtain new evidence (not available at the time of the filing of the present Complaint) of registration 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 Respondents have rights or legitimate interests in the disputed domain name or have used the disputed domain name in bad faith. This should not be interpreted to mean that the Panel considers the Respondents do not have rights or legitimate interests or that they used the disputed domain in bad faith (or vice versa). The Panel makes its decision solely on the basis that the current evidence does not support a finding that the disputed domain name was registered in bad faith and accordingly the Panel has elected to consider only this part of the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas Clark
Presiding Panelist
Dietrich Beier
Panelist
William Law
Panelist
Date: April 20, 2016
1 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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