The Complainant is WeWork Companies Inc. of New York, New York, United States of America ("United States"), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Dunhe Xigu(Wuhan)Investment Co., Ltd. of Wuhan, Hubei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2017, 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 3, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 9, 2017. 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
The Complainant was founded in 2009 and provides co-working and private workspaces, infrastructure, support, event and technical services. Complainant's members include entrepreneurs, freelancers, startups, small businesses and even Fortune 500 companies.
The Complainant is the owner of several registered trademarks for mark WEWORK. For example:
United States Trademark Registration No. 4015942, with the registration date of August 23, 2011, International Trademark Registration No. 1212432, with a designated extension for China with a registration date of November 18, 2013, and Chinese Trademark Registration No. 14644013, with the registration date of August 14, 2015.
As of December 2016, the Complainant has more than 147 locations in 35 cities in 13 countries spread across North America, Europe, the Middle East, Asia and Australia. Among these, two existing locations are in Shanghai, China, the first of which opened in March 2016.
The Complainant maintains a presence on the Internet under its domain name, other domain names and under its Facebook, Instagram and Twitter accounts.
The disputed domain name was created on April 15, 2015. At the time of the Complaint the disputed domain name resolves to an inactive landing page. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its WEWORK trademark. The disputed domain name incorporates the WEWORK trademark with the additional of the letters "cn" which is a common geographic abbreviation for China, and it is clear that the dominant component of the disputed domain name is the Complainant's WEWORK trademark.
The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant further argues that the Respondent is not known by the name Wework, and the Complainant did not grant a license nor any authorization to the Respondent to make any use of the Complainant's trademark WEWORK.
The Respondent is the sole shareholder in a company founded on March 17, 2015, under the name Wuhan Wei Wo Ke Business Co., Ltd., but which uses the Chinese characters "微沃客" (Wei Wo Ke) and the term "very-worker" for its business. The owner of the Respondent was a member of the Complainant in the United States and upon establishing its business in China began providing business services similar to those provided by the Complainant.
The Complainant further argues that the Respondent's use of the disputed domain name cannot be bona fide as it is clear that the Respondent intends to infringe the Complainant's trademark and take advantage of the notoriety associated with the WEWORK mark. The Complainant also argues that the Respondent admits that it has taken the Complainant's trademark and business model following its owner's experience as the Complainant's member.
The Complainant further argues that disputed domain name was registered in bad faith.
The Complainant registered the disputed domain name after the Complainant had obtained its trademark registration for the WEWORK trademark is evidence of bad faith. The Complainant further argues that given the notoriety of its trademark any use by the Complainant of the disputed domain name would mislead consumer and would be in bad faith.
The Complainant further argues that the Respondent's use of the disputed domain name can only be intended to create a false association with the Complainant and to attract consumers to the Respondent's business. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin-script letters, rather than Chinese characters;
b) The disputed domain name includes the Complainant's mark, as well as the English geographical abbreviation of the country China;
c) The owner of the Respondent previously lived in the United States where he pursued his studies and it is assumed that he is well familiar with the English language;
d) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
e) The Center has sent all communications in both Chinese and English, yet the Respondent has not participated in the present proceedings in any way.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of several registered trademarks for mark WEWORK. For example: United States Trademark Registration No. 4015942, with the registration date of August 23, 2011; United States trademark registration no. 4453874, with the registration date of December 24, 2013; Chinese Trademark Registration No. 14644013, with the registration date of August 14, 2015, and more.
The disputed domain name is identical to the registered trademark WEWORK apart from the addition of the geographical term "cn". The disputed domain name integrates the Complainant's trademark WEWORK in its entirety, as a dominant element.
The addition of the geographical term "cn" does not serve to distinguish or differentiate the disputed domain name from the Complainant's WEWORK trademark. It is clear that the most prominent element in the disputed domain name is the term "wework". Consequently, this Panel finds that the disputed domain name is confusingly similar to the Complainant's WEWORK trademark.
The addition of the generic Top-Level Domain ("gTLD") suffix ".com" does not typically distinguish the disputed domain name from the Complainant's registered trademark and is disregarded when comparing the disputed domain name with the Complainant's trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; LEGO Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the WEWORK trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the WEWORK trademark, or a variation thereof.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
In the circumstances of this case, and in light of the Respondent's use of the disputed domain name set out in more detail below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the WEWROK trademark in the United States since at least the year 2011. The Respondent's owner lived in the United States and was a member of the Complainant. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). Such bad faith is compounded when it is clear from the evidence that the Respondent was very familiar with the Complainant's trademark.
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Indeed, "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Based on the Complainant's evidence presented to the Panel, it appears that the Respondent is operating a business competing with the Respondent under a different name ("微沃客" (Wei Wo Ke) and the term "very-worker") while holding the disputed domain name under a landing page. The evidence further shows that the Respondent is using the disputed domain name on its advertising materials next to the "微沃客" (Wei Wo Ke) and the "very-worker" terms, without the Complainant's authorization and for commercial gain. Thus, the Panel finds clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name has been to trade off the value of the good will associated with the Complainant's mark. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".
The evidence presented to the Panel also shows that the Respondent was contacted by the Complainant and that the Respondent failed to respond to the Complainant cease and desist letters. Failure to respond to the cease and desist letters issued by the Complainant to the Respondent is further suggestive of bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the evidence of reputation of the Complainant's trademark and the Respondent's use of the disputed domain name, and the failure of the Respondent to respond to the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: March 20, 2017
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