The Complainant is Solink Corporation of Ottawa, Ontario, Canada, represented by Smart & Biggar, Canada.
The Respondent is lijibiao of Guangzhou, Guangdong, China / Information Privacy Protection Services Limited of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 22net, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2016, 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 the Complainant on May 31, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 1, 2016.
On May 31, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 1, 2016, the Complainant confirmed its request that English be the language of the proceeding. On June 3, 2016, the Respondent requested that Chinese be the language of the proceeding. On the same day, the Complainant again requested that English be the language of the proceeding.
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 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 in both Chinese and English of the Complaint, and the proceeding commenced on June 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2016. The (Chinese language) Response was filed with the Center on June 26, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 5, 2016. 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 July 11, 2016, the Complainant filed supplemental submissions in reply to the Response.
On July 13, 2016, the Panel issued a Panel Order requesting the Complainant to file further evidence in support of its submissions regarding the Baidu search results put into evidence by the Respondent, and giving the Respondent the right to file submissions in reply (if any).
On July 14, 2016, the Complainant filed submissions in response to the Panel Order.
The Respondent did not file any submissions in reply. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Canada on July 28, 2009 and the developer of fraud prevention software used by customers of the Complainant (including restaurants, retail and convenience stores, and financial institutions) in Canada, as well as other countries around the world including Australia, Costa Rica, Panama, Qatar, Singapore, the United Arab Emirates, and the United States of America. The Complainant claims common law rights in the trade mark SOLINK (the “Trade Mark”) by virtue of the Complainant’s continuous use, since 2009, of the Trade Mark in relation to the marketing and sale of its computer software. B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on March 28, 2010. D. The Website at the Disputed Domain Name
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 Mark, 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 contends that the Complainant does not possess any registered trade mark rights in respect of the Trade Mark, the Respondent has rights and legitimate interests in respect of the disputed domain name, and the disputed domain name was not registered and has not been used in bad faith. The Respondent also requests that the Panel make a finding against the Complainant of reverse domain name hijacking. 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 has requested that English be the language of the proceeding for the following reasons:
(1) Nearly all of the email communications that have taken place between the Complainant and the Respondent have been in English. Therefore, it is clear that the Respondent can and does communicate in English;
(2) In contrast, the Complainant and its counsel cannot speak or write in Chinese, and it would therefore be unduly onerous to place such requirements on the Complainant; and
(3) Given the conduct of the Respondent, the Respondent should not receive the benefit of having the proceeding conducted in Chinese. Additionally, the Complainant should not be disadvantaged and burdened by the increased costs associated with translating the necessary documents, if the proceeding is heard in Chinese.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(1) The language of the Registration Agreement is Chinese; and
(2) The Respondent does not understand English and communicated with the Complainant using translation software.
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 has carefully reviewed the not insubstantial history of email communications between the parties. The emails sent by the Respondent to the Complainant demonstrate a high proficiency in English and do not appear to have been generated using translation software. 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 filings herein on behalf of the Complainant in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English. 6.2. Complainant’s Supplemental Filing
UDRP panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
The Complainant’s reply submissions deal primarily with the Respondent’s assertion in the Response that the search results of searches conducted under the Trade Mark via the Baidu search engine make no reference to the Complainant.
In all the circumstances, as this issue is directly relevant to the question of bad faith, the Panel determines that it will admit the Complainant’s supplemental filings. 6.3. 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
It is trite that, under the UDRP, complainants can rely on common law or unregistered trade mark rights (see paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
It is also well-established that, at least for the purposes of the first limb under paragraph 4(a) of the Policy, the location of the Complainant’s relevant trade mark rights is irrelevant, and it is not necessary for the Complainant to demonstrate any relevant trade mark rights in the jurisdiction in which the Respondent is based. See paragraph 1.1 Of the WIPO Overview 2.0, which provides as follows:
“Consensus view: If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The Panel finds that the Complainant has provided sufficient evidence of use of the Trade Mark in order to establish common law or unregistered trade mark rights in the Trade Mark.
The disputed domain name comprises the Trade Mark in its entirety. The Panel therefore finds that the disputed domain name is identical to the 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 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 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.
The Complainant has not 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.
In light of the Panel’s findings below on the question of bad faith, it is not strictly necessary for the Panel to make any findings under this element. The Panel would however note that, although the evidence submitted by the parties demonstrates that the disputed domain name has not been used for several years, the Respondent has however submitted evidence to suggest that, at least at the time of registration of the disputed domain name in 2010, the Respondent did appear to make bona fide preparations to use the disputed domain name in respect of the Respondent’s planned “Link Trading Platform” (“链接交易平台” in Chinese). Such evidence includes a “ 链接交易平台” logo apparently commissioned by the Respondent in May 2010, and Google search results under the search term “solink 李继标” (solink plus the name of the Respondent) which suggest that there was some limited Internet activity conducted in relation to the disputed domain name even if in 2010 only. The Respondent also attempted to rely on a single page of a search conducted using the Wayback Machine to suggest previous use of the disputed domain name, but did not produce details of such use. 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.”
The Complainant relies on lengthy email communications between the Complainant and the Respondent, and also between domain name brokers commissioned by the Complainant and the Respondent, over a period of almost a year commencing in October 2014, to assert bad faith under paragraph 4(b)(i) of the Policy. At the conclusion of these email communications, the parties were unable to agree on a price for the purchase of the disputed domain name by the Complainant. The Respondent’s last offer was USD 20,000 and the Complainant’s last offer was USD 12,500.
In the course of these email communications, the Complainant stated that it is “a very small company”, and this statement would appear to be borne out by the submissions in the Complaint that the Complainant’s sales for the years 2012 to 2015 were roughly CAD$375,000.
The Complainant also submitted evidence of its use of a Twitter account to promote the Trade Mark from 2012, and of one award received by the Complainant for its SOLINK branded software in 2014, and three awards in 2015.
The Complainant also provided a WhoIs search to show its ownership of the domain name since September 10, 2009 and asserted that it has advertised its business and computer software through its website located at “www.” for the past six years.
The screenshots of the Complainant’s website submitted with the Complaint were undated, but bore a 2016 copyright notice.
The Complainant also submitted a screenshot of the Complainant’s software dated November 10, 2014 showing use of the Complainant’s composite mark comprising an “S” logo and a stylized rendering of the Trade Mark.
On the Complainant’s own evidence, it does not sell its software in China.
The Respondent asserted (without evidence) that more than 90% of Internet users in China prefer to use the Baidu search engine, and relied upon a recent search result for “SOLINK” using Baidu to assert that the Complainant and its Trade Mark are unknown in China. The Complainant’s reply submissions and the Complainant’s submissions filed in response to the Panel Order demonstrate that, in fact, the first search result in the search history relied upon by the Respondent does in fact refer to the Complainant and to its computer software.
The Respondent nonetheless asserts that, at the time of the Respondent’s registration of the disputed domain name in 2010, the Respondent was not aware of the Complainant or of its rights in the Trade Mark. Although the Respondent’s plans appear to have fallen by the wayside, the Respondent also produced evidence of the Respondent’s preparations to commence use of the disputed domain name in 2010 in respect of the putative “链接交易平台” link trading platform.
There is no direct evidence, apart from bare assertion, to establish that, at the time of the registration of the disputed domain name (exactly eight months after the date of incorporation of the Complainant), the Complainant possessed any goodwill or reputation in the Trade Mark.
The evidence of the email negotiations between the parties establishes that the Respondent has sought to sell the disputed domain name to the Complainant for an amount in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name. However, in all the circumstances, the Panel is unable to conclude that, at the time of the Respondent’s registration of the disputed domain name in March 2010, the Respondent was aware of the Complainant and of the Trade Mark. Furthermore, whilst it may be the case that, by March 2010, the Complainant had made sufficient use of the Trade Mark in order to establish common law or unregistered trade mark rights in the Trade Mark in Canada, the evidence does not suggest that, at the time of registration of the disputed domain name, the Complainant possessed such rights to an extent that the Respondent would necessarily be expected to be aware of such nascent rights. In drawing this conclusion the Panel relies in particular on the Complainant’s own case that it is a small company that has not sold its products in a more global context.
For all the foregoing reasons, the Panel concludes that the disputed domain name has not been registered and used in bad faith. D. Reverse Domain Name Hijacking
In seeking a finding against the Complainant of reverse domain name hijacking, the burden of proof is 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.
The Respondent relies in particular on the email negotiations between the parties and contends that the negotiations were conducted in order to harass the Respondent and to produce evidence to support this proceeding. The Panel is unable to agree with the Respondent in this regard. The email negotiations clearly demonstrate a bona fide attempt by the Complainant to negotiate in good faith for the purchase of the disputed domain name from the Respondent, and in circumstances where the evidence clearly demonstrated that the disputed domain name had not been used since at least 2011.
In all the circumstances, the Panel concludes the Complainant was entitled to test whether the facts supported a finding of bad faith.
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.
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 22, 2016
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