The Complainant is Expo 2020 Dubai of Dubai, United Arab Emirates (“UAE”), represented by Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
The Respondent is yanji yong, yan ji yong of Qingdao, Shandong, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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 July 12, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On July 13, 2017, the Complainant submitted an amended Complaint which included a request that English be the language of the proceeding. On July 17, 2017, the Respondent requested that Chinese 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 July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. The Response in Chinese was filed with the Center on August 8, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 15, 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 A. Complainant
The Complainant is an entity organised and existing under the laws of the UAE and the official organiser of EXPO 2020 Dubai. The Complainant is the owner of several national registrations for the word and device trade mark EXPO 2020 (the “Trade Mark”), including UAE registration number 177616 dating from August 6, 2012. B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on March 26, 2009. D. Use of the Disputed Domain Name
The disputed domain name has been used in relation to an English and Chinese language website which provides fitness and weight loss tips and promotes related diet pill products (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered and used in bad faith. 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) The disputed domain name is an English language domain name using Latin script;
(2) The Website is predominantly an English language website;
(3) The Respondent is the owner of another domain name which is resolved to an English language website;
(4) Accordingly, it would not be unfair to proceed in a language other than that of the Registration Agreement; and
(5) It would be unfair and would cause delay if the Complaint were to be translated into Chinese.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(1) The Registrar for the disputed domain name is located in China;
(2) The Respondent’s ability to understand English is limited;
(3) The Website was produced by a website production company and the content and language of the Website was decided by the website production company; and
(4) The Complainant has engaged in fraud or deception, as the Complainant only provided the English language version of the Registration Agreement, and not the Chinese language version; and the Complainant knows that the Website only provides Chinese language services.
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.
From the evidence before the Panel, the Website is predominantly an English language website. There is no evidence to support the Respondent’s assertion that the Website only provides Chinese language services. The Panel does not find the Respondent’s bare assertion that the Website was produced by a website production company convincing. The Respondent has not adduced any evidence to support this assertion. In any event, the Panel considers that, if the content of the Website was determined by a website production company engaged by the Respondent, the Respondent, as the owner of the disputed domain name and the person who engaged the website production company, is the person ultimately responsible for the content of the Website. The Panel also rejects the serious allegation that the Complainant has somehow engaged in fraud or deception in filing the Complaint in English and in requesting that the language of the proceeding be English.
The Panel finds that, in all the circumstances, there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. 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 the language of the proceeding be English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in 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 Mark acquired through use and registration, and the disputed domain name is identical to the Trade Mark.
Although the disputed domain name was registered before the Trade Mark was registered by the Complainant, this is immaterial for the purposes of the first limb under paragraph 4(a) – see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3:
“The fact that a domain name may have been registered before a complainant has acquired trade mark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.”
The Respondent asserts that the Trade Mark is a graphic mark, the Complainant does not have any registrations for the Trade Mark in China, where the Respondent is based, and, accordingly the disputed domain name is not confusingly similar to the Trade Mark, and the use of the disputed domain name will not harm the Complainant’s goodwill in the Trade Mark.
Design elements are largely disregarded when assessing identity or confusing similarity under the first element of paragraph 4(a) (see WIPO Overview 3.0, section 1.10).
The jurisdiction(s) where the Trade Mark is registered is not considered relevant to panel assessment under the first element (see WIPO Overview 3.0, section 1.1.2).
For the above reasons, the Panel finds that the first element under paragraph 4(a) of the Policy has been made out. 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.
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.
The Respondent contends that it has been using the disputed domain name since 2009 in respect of the Website, the main business of which is the promotion of weight loss knowledge, and which website, although not perfect, has good traffic and visibility. There has however been no explanation forthcoming from the Respondent as to why it needed to register the disputed domain name in order to promote the services provided on the Website. There is no correlation between the disputed domain name (which is identical to the Trade Mark) and the wholly unrelated weight loss related services promoted on the Website.
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.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent asserts that he or she has publicly used the disputed domain name in good faith.
The Complainant asserts that, by virtue of the notoriety of the EXPO event that is held internationally every five years, and in particular the success of EXPO 2010 in Shanghai, which drew some 73 million visitors, the Respondent must have been aware that a domain name such as the disputed domain name would be the most obvious domain name to represent any city that would win the EXPO 2020 bid. The Complainant asserts that the Respondent must have registered the disputed domain name for “blocking purposes”.
The Panel agrees that, in all the circumstances, including in particular the fact the disputed domain name is identical to the Trade Mark, and the fact the weight loss services promoted on the Website have nothing to do with the Trade Mark and the disputed domain name, the facts of this case demonstrate that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent (as yet unregistered) trade mark rights. See WIPO Overview 3.0, section 3.8.2.
For 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 1, 2017
Full & Egal Universal Law Academy