The Complainant is Samuel Hubbard Shoe Company LLC of Mill Valley, California, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Zhao Hao of Kunming, Yunnan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on January 10, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2018, 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 January 18, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On January 19, 2018, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the 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 in English and Chinese of the Complaint, and the proceedings commenced on January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 19, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 1, 2018. 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 is a shoe company that sells its shoes online and through shipments to stores. Its corporate name includes the words "Samuel Hubbard". The Complainant owns multiple trademark registrations for SAMUEL HUBBARD including international trademark registration number 1182303, registered from October 17, 2013, designating multiple jurisdictions including China, and specifying goods and services in classes 18, 25 and 35, including shoes. That trademark registration remains current. The Complainant also registered the domain name on September 17, 2013, that it uses in connection with its online store.
The Respondent is an individual located in China. The Respondent's contact email address is associated with 126 domain names, many of which incorporate third party trademarks.
The disputed domain name was registered on September 12, 2017. It is parked at a landing page displaying links to websites for shoes, including those of the Complainant's competitors' brands. The landing page displays a notice that reads "Buy this domain The owner of is offering it for sale for an asking price of 9999 USD!". The landing page was generated using a domain parking service. The website of the domain parking service also offers the disputed domain name for sale at the same price of USD 9,999 but it also allows bidders to offer another price.
The Complainant's legal representative sent a cease-and-desist letter dated December 4, 2017 to the Respondent, to which the Respondent replied on the same day with the figure "$6000 USD". The following day, after the Complainant offered an amount to cover the Respondent's expenses to transfer the disputed domain name, the Respondent replied "最少 $3,999 USD" (translation: at least 3,999 USD). 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complainant's SAMUEL HUBBARD trademark. The suffix ".net" can be omitted for the purposes of the comparison as it is a technical requirement of registration.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not registered any trademark for the term "Samuel Hubbard". The disputed domain name resolves to a pay-per-click landing page displaying advertising links to shoes sales from some of the Complainant's competitors. The landing page is based on the trademark value of the disputed domain name. Consequently, this does not constitute a bona fide offering of goods or services. The Respondent has never been commonly known by the disputed domain name. The pay-per-click landing page shows that the Respondent is making a commercial gain out of the disputed domain name, either directly or indirectly via the advertising links. The disputed domain name is also offered for sale on the landing page.
The disputed domain name was registered and is being used in bad faith. The Complainant's trademark registration predates the disputed domain name. A search on popular search engines shows that the Complainant is the first hit. The Respondent advertises the sale of the disputed domain name on the landing page itself and on aftermarket websites for USD 9,999 which shows that the Respondent acquired the disputed domain name with a view to selling it back for valuable consideration in excess of out-of-pocket costs. The Respondent replied to a cease-and-desist letter from the Complainant with the figure "6000 USD" and later reduced that figure to at least USD 3,999. The Respondent has registered 126 domain names, several of which include well-known marks. The Respondent's registration of the disputed domain name creates a likelihood of confusion with the Complainant's mark for Internet users and the Respondent is responsible for the content on the landing page. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent is competent in English, as evidenced by the Respondent's domain name portfolio, the fact that the links on the landing page to which the disputed domain name resolves are in English and the fact that the offer to sell the disputed domain name is in English, while translation of the Complaint into Chinese would create unnecessary costs and delay commencement of the proceeding. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293).
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the SAMUEL HUBBARD trademark.
The disputed domain name wholly incorporates the Complainant's SAMUEL HUBBARD trademark, but for the space between the words which is omitted for technical reasons. The only additional element is the generic Top-Level Domain ("gTLD") suffix ".net". A gTLD suffix may generally be disregarded in the comparison between a disputed domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate non commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to the first circumstance above, the disputed domain name resolves to a landing page that displays links to websites that sell shoes. The links are generated based on the trademark value of the Complainant's mark. That does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
With respect to the second circumstance above, the Respondent's name is shown in the Registrar's WhoIs database as "Zhao Hao", not "Samuel Hubbard". There is no evidence that the Respondent has been commonly known by the disputed domain name.
With respect to the third circumstance above, the disputed domain name resolves to a landing page that offers the disputed domain name for sale. That is not a noncommercial or fair use of the disputed domain name.
In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complainant's contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows:
"(i) 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 trademark 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 [disputed] domain name;" and
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] website or location or of a product or service on [the Respondent's] website or location."
The Respondent registered the disputed domain name in 2017, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. SAMUEL HUBBARD is a proper name, not a dictionary word. The Complainant has made extensive use of its SAMUEL HUBBARD trademark. The top search result for the term "samuel hubbard" in the Baidu Internet search engine is the Complainant's official website. The disputed domain name incorporates the Complainant's SAMUEL HUBBARD trademark as its only element besides the gTLD suffix. The disputed domain name is used to attract Internet users to a landing page displaying links to other websites, where many of the links are based on the trademark value of the Complainant's mark. This all gives the Panel reason to believe that the Respondent was aware of the Complainant and its SAMUEL HUBBARD trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The disputed domain name is used to attract Internet users to a landing page that offers the disputed domain name for sale for USD 9,999. The disputed domain name is also offered for sale at that price at the website of the domain parking service. The Respondent sent that figure directly to the Complainant, as well as a lower figure of at least USD 3,999 which, in the context in which the figures were sent, were offers to sell the disputed domain name. These circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy.
Further, the landing page to which the disputed domain name resolves displays links to other websites, where many of the links are based on the trademark value of the Complainant's mark. The disputed domain name operates by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the landing page. This use was intentional and either for the Respondent's own commercial gain, if he was paid to direct traffic to the other websites, or for the commercial gain of the operators of the linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: March 5, 2018
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