The Complainant is Chisholm Chisholm & Kilpatrick LTD of Providence, Rhode Island, United States of America (“United States”), represented by Hinckley, Allen & Snyder, LLP, United States.
The Respondent is SuZhi Hong of Xiamen, Fujian, 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 was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 21, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent requested that Chinese be the language of the proceeding on June 25, 2018.
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 June 28, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2018. On July 17, 2018, the Respondent submitted an email requesting an extension of the due date for Response. In accordance with the Rules, paragraph 5(b), the Center informed the Parties that the due date for Response was extended to July 22, 2018. The Response was filed in Chinese with the Center on July 21, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 26, 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 law firm headquartered in the United States which focuses on personal injury, wrongful death, appeal of veterans’ benefits, disability claims, business disputes and other types of civil litigation. The Complainant has registered the domain names and that it uses in connection with its official website. The homepage on that website displays a banner featuring the name “Chisholm Chisholm & Kilpatrick” alongside a square logo containing the letters CCK. The homepage provides information and news in which the firm is referred to on several occasions as “CCK”.
The Respondent is an individual resident in China. He is an authorized officer or employee of厦门巨虎网络技术有限公司 (Xiamen Giant Tiger Network Technology Co. Ltd). That company operates a website that offers domain names for sale.
The disputed domain name was created on October 16, 1996. According to evidence provided by both Parties, the registrant was a pharmaceutical company as recently as April, 2017. According to evidence provided by the Respondent, the Respondent’s company authorized a third party to acquire the disputed domain name on its behalf in May, 2017 and the Respondent himself became the registrant in January, 2018. For the reasons set out below, it is not necessary to determine the exact date on which the Respondent acquired the disputed domain name.
At the time of the Complaint, the disputed domain name resolved to the Respondent’s company website, where it was offered for sale for CNY 580,000. On April 4 and 5, 2018, the Complainant corresponded in English with a domain broker who worked for the Registrar regarding a possible transfer of the disputed domain name. That broker set a minimum price of USD 100,000. At the time of this decision, the disputed domain name does not resolve to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical to the Complainant’s CCK mark. The Complainant has used the CCK mark since at least as early January 1, 1999 in connection with the provision of legal services. As a result of continuous and exclusive use, the Complainant has established a strong customer base and has built up value and goodwill in the CCK mark. The Complainant has spent substantial amounts of time and money in advertising and promoting its legal services offered under the CCK mark. The Complainant is also the registrant of the domain names and that it uses in connection with its official website where it makes information available, in particular to veterans. Additionally, the disputed domain name is confusingly similar to the Complainant’s domain in that it begins with the same letters and differs only in that it lacks the generic “-law” element.
The Respondent has no rights or legitimate interests in the disputed domain name. Upon information and belief, the Respondent acquired the disputed domain name sometime after April 4, 2018, when it was still registered in the name of a different and unrelated entity. The Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the Complainant’s CCK mark for any purpose. Upon information and belief, the Respondent is not commonly known as “CCK”. The Respondent uses the disputed domain name for no commercial purpose and has not made a legitimate noncommercial or fair use of the disputed domain name, but instead merely offers the disputed domain name for sale.
The disputed domain name was registered and is being used in bad faith. The Respondent did not acquire the disputed domain name until well after the Complainant’s first use of the CCK mark. Even if the Respondent did not acquire the disputed domain name in bad faith, its subsequent use of the disputed domain name in bad faith can satisfy the third element of the Policy. The Respondent is using the disputed domain name in bad faith, primarily because (a) it acquired the disputed domain name primarily for the purposes of selling it for an amount in excess of the Respondent’s out-of-pocket costs, (b) the Respondent is preventing the Complainant from reflecting its CCK mark in the domain name and the Respondent is engaged in a pattern of similar behaviour involving other trademarks, and (c) the Respondent is not using the disputed domain name in conjunction with a business.
The Complainant submits that the Respondent is in the business of registering and passively holding thousands of domain names, presumably with the intent to monetize those domain names. The Complainant provides copies of emails from a domain broker employee of the Registrar offering to sell the disputed domain name for at least USD 100,000. The Complainant also provides a reverse WhoIs report regarding the name of the Respondent and the abuse contact email of the Registrar identifying over 1,000 domain names, ninety-eight percent of which are undeveloped. Some of these domain names incorporate the trademark of third parties. B. Respondent
Prior to receiving the Complaint, the Respondent had never heard of the Complainant. Internet searches in the Baidu, 360 and Bing search engines do not indicate any connection between “CCK” or “C C K” and the Complainant. The disputed domain name is very brief and registered in a global Top-Level Domain (“TLD”); it has many uses and is an abbreviation with many meanings such as “猜猜看 (cai cai kan)”, “查查看 (cha cha kan)” and “尝尝看 (chang chang kan)”.1 As there is only a limited number of such domain names in the “.com” TLD, the disputed domain name is very valuable.
The Complainant provides no evidence of trademark rights. A search of the China Trademark Office does not indicate that the Complainant has applied for any trademark incorporating “CCK” or specifying the relevant services. The Complaint alleges that the Complainant has spent substantial amounts of time and money in advertising its services offered under the CCK mark but provides no evidence. A screenshot of the Complainant’s website does not demonstrate that it is very well-known and, besides, the website is not accessible in China.
According to the Registrar’s WhoIs database, the disputed domain name was registered in 1996, long before the Complainant’s company was formed. In twenty years, the Complainant has never applied for a domain name incorporating “cck” or “cck-law” in the “.cn” country-code TLD. Clearly, the Complainant does not require the disputed domain name for business in China.
The Respondent’s company authorized another party to spend over CNY 300,000 (USD 44,000) to acquire lawfully the disputed domain name through an escrow service. The disputed domain name was repurchased to develop the Respondent’s company website business and the Respondent has managed it for his company. He has continuously used it in China since it was re-purchased and has no business or interest outside China. On January 11, 2018, the Respondent’s company entered into a contract with another company to provide designs for three websites, one of them being at the disputed domain name. On February 5, 2018, the Respondent’s company entered into a contract with a different company to provide technical support for the promotion and administration of two websites, one of them at the disputed domain name.
The Respondent states that he has acquired all his domain names through legal channels and has never harmed the Complainant’s interests. During the time that the Respondent has been the registrant of the disputed domain name, he has never used it for illegal personal gain or to mislead the public, much less in an attempt to trade on the Complainant’s reputation. The Complainant alleges that the Respondent has harmed its interests but provides no evidence. The Respondent states that he has never delegated authority to the Registrar or any other organization to negotiate the sale of the disputed domain name, and they do not represent him. The Respondent believes that the Complainant has engaged in reverse domain name hijacking. 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 a domain broker engaged in correspondence with the Complainant in English prior to the Complaint; the disputed domain name is registered in Latin script; the Complainant cannot communicate in Chinese hence proceeding in Chinese would lead to delay and increased costs.
The Respondent requests that the language of the proceeding be Chinese. His main arguments are that he is Chinese and does not understand any language other than Chinese, and that the Registration Agreement is in Chinese.
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 in this proceeding the Complaint was filed in English while the Response was filed mostly in Chinese. It is clear from the content of the Response that the Respondent has indeed understood the Complaint. Four of the annexes to the Response are themselves in English. In these circumstances, the Panel considers that requiring either Party to translate its submission would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept all documents as filed in their original language without translation. 6.2 Substantive Issues
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.
The burden of proof of each element is borne by the Complainant. A. Identical or Confusingly Similar
The Complaint is based on an assertion of rights in the unregistered service mark “CCK”. The letters CCK are the initials of the three surnames in the Complainant’s name “Chisholm Chisholm & Kilpatrick”. The Complainant does not assert any registered rights.
The Complainant makes a series of allegations of its unregistered rights: that it has used the service mark CCK in connection with the provision of legal services, that it has used the service mark continuously and exclusively since at least January 1, 1999, that it has established a strong customer base and built up value and goodwill in the CCK mark, and that it has spent substantial amounts of time and money in advertising and promoting its legal services under the CCK mark.
In support, the Complainant provides a copy of its homepage.
The Panel considers this evidence inadequate to demonstrate that the letters CCK have become a distinctive identifier that consumers associate with the Complainant’s services. There is no evidence that anyone outside the firm refers to the Complainant by the initials CCK. There is no evidence regarding the duration of use, only a conclusory allegation. There is no information on the number of clients or the time and money that the Complainant has spent in advertising and promoting its services under the CCK mark. While there are some logos on the Complainant’s homepage indicating that the firm has been included in surveys of law firms and places to work, they do not indicate whether the firm was recognized as “CCK” or rather as “Chisholm Chisholm & Kilpatrick”. Much of the information on the homepage is news that does not refer to the firm at all. The evidence is particularly inadequate given that the asserted mark is composed solely of three letters, which are not inherently distinctive. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3; Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross,WIPO Case No. D2008-1010; Kitchens To Go, LLC v. KTG.COM, Whoisguard Protected / HUKU LLC,WIPO Case No. D2017-2241.
Based on the evidence provided, the Panel is unable to find that the Complainant has rights in a trademark or service mark.
The Complainant also asserts that the disputed domain name is confusingly similar to one of the Complainant’s domain names. However, the first element of the Policy requires identity or confusing similarity with a trademark or service mark, not with another domain name.
Therefore, the Panel does not find that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has not satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Given the Panel’s finding under the first element of paragraph 4(a) of the Policy, there is no need to consider the second element. C. Registered and Used in Bad Faith
Given the Panel’s finding under the first element of paragraph 4(a) of the Policy, there is no need to consider the third element. However, given the nature of the mark in which the Complainant claims rights, which consists of three letters, the Complainant would have had difficulty showing bad faith registration and use on the present record. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent alleges that the Complainant has engaged in reverse domain name hijacking.
The Complainant certified that the information contained in the Complaint was to the best of the Complainant’s knowledge complete and accurate. However, the Panel considers the submission of a series of conclusory allegations together with a copy of the Complainant’s homepage to be no more than a token effort to substantiate trademark rights. Further, the Complaint alleges that the Respondent has engaged in “a pattern of bad faith registrations” when the Complainant is unable to identify even one domain name held by the Respondent that incorporates the trademark of a third party, mentioning only “shijiebei” as a translation of “world cup”. The Complaint also alleges that the registrant of the disputed domain name was an unrelated entity as of April 4, 2018 but simultaneously alleges that the Respondent offered to sell the disputed domain name in email correspondence sent on April 4 and 5, 2018.
After due consideration of the evidence, the Panel considers that the Complainant has been careless in filing its Complaint but the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: July 29, 2018
1 Translations: “make a guess”, “take a look”, “have a taste”, respectively.
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