The Complainant is Gula Gula Refeições S.A. of Rio de Janeiro, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
The Respondent is Liao Qiang Heng of Xiangfan, Hubei, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2018, 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. On the same day, the Center sent an email communication to the Complainant 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 amendment to the Complaint on October 2, 2018.
On September 25, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 28, 2018 and October 4, 2018, the Respondent requested that Chinese be the language of the proceeding. On October 2, 2018, the Complainant confirmed and supplemented its request that English be the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 of the Complaint, in English and Chinese, and the proceedings commenced on October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent sent two informal communications to the Center on October 5 and 22, 2018. Later, on October 22, 2018, the Respondent requested an extension of the due date for Response. In accordance with paragraph 5(b) of the Rules, the due date for Response was extended to October 29, 2018. The Response was filed with the Center on October 27 and 29, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 8, 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 Brazilian restaurant chain that was founded in 1984 and is now a public company. The Complainant holds multiple registrations including Brazilian trademark registration 815940220 for GULA GULA, specifying food services, registered on November 17, 1992. That trademark registration remains in effect. The Complainant has made extensive use of its GULA GULA trademark in connection with its restaurant services in Brazil, which has received extensive online media coverage. The Complainant has also registered the domain name that it uses in connection with its official website, where it provides information about itself and its services.
The Respondent is an individual resident in China. Since at least as early as 2013, he has acquired various domain names, including the disputed domain name, via auction from a domain name provider.
The disputed domain name was created on March 27, 2014. It resolves to a parking page hosted by the domain name provider from whom the Respondent acquired it (the “hosting company”). Previously, the parking page merely advised in English that “Auction is not available”. After the Complainant’s legal representative sent the hosting company a cease and desist letter in February 2017 notifying it of the Complainant’s trademark rights, the page was changed and offered the disputed domain name for sale in English with an “appraisal price” of USD 8,000. The disputed domain name continues to be offered for sale at the parking page but now with all contact details in Chinese and without a price. On October 11, 2017, the Complainant contacted the Respondent via the information displayed on the parking page regarding a possible transfer of the disputed domain name and made an offer. The Parties then corresponded by email in English regarding the price. On October 12, 2017, the Respondent stated that his lowest price was USD 6,000 but on October 17, 2017 he stated that he could not accept a price lower than USD 5,000. The Complainant later initiated this proceeding. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s GULA GULA trademark. The disputed domain name reproduces the entirety of that mark with the mere addition of the generic Top‑Level Domain (“gTLD”) suffix “.com”, which is insufficient to escape a finding of confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no trademark registration or application. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the disputed domain name or any other domain name reproducing its GULA GULA mark. The Respondent is not commonly known or identified by the expression “Gula Gula”. The Respondent does not make a legitimate use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. A quick online search in Google or another search engine would have revealed the existence of the Complainant and its prior rights over the GULA GULA mark. The Respondent registered the disputed domain name through a privacy shield service to hide his identity and contact details. The Complainant contacted the owner of the page where the disputed domain name was parked; at that time the page merely stated “Auction is not available”. Right after the Complainant placed the previous domain name registrant on notice of the Complainant’s trademark rights, the disputed domain name was put up for sale. B. Respondent
The Complainant’s trademark rights are limited to Brazil. To date, the Complainant has not registered or used any GULA GULA trademark in China and, therefore, does not enjoy any trademark rights in China. The Complainant’s GULA GULA and GULA-GULA trademarks are not completely identical to the disputed domain name and can easily be distinguished without any confusing similarity.
The Complainant only provides evidence of Brazilian and other international trademark registrations and does not provide evidence that it has exclusive rights to its trademark in other countries and territories. The Complainant’s trademark is not commonly known. No-one that the Respondent asked had heard of the “Gulagula” restaurant. The Complainant has no rights to GULA GULA as a famous mark in China. The Respondent lawfully purchased the disputed domain name and has priority rights to it. The Respondent’s rights to the disputed domain name are effective according to the first-come first-served principle.
The Complainant’s Google search results are irrelevant because that search engine does not work in China. The cases of bad faith registration and use cited by the Complainant are dissimilar to the present case because the Complainant merely relies on Brazilian trademark registrations to claim worldwide rights, which is unreasonable, and the trademark is not well known. The Respondent never actively contacted the Complainant; on the contrary, the Complainant sent an email offering to purchase the disputed domain name and, after receiving a counter-offer, it initiated this proceeding, which constitutes reverse domain name hijacking. The Respondent bought the disputed domain name, like many other domain names, at auction from a domain name provider that now hosts the page where it is parked. That party is unrelated to the Respondent and its actions cannot support a finding of bad faith on the part of the Respondent. At the time when the Respondent bought the disputed domain name, he did not know of the existence of the Respondent or its trademark. “Gulagula” is a transcription of “古拉古拉”, in the same way that “Balabala”, the famous brand of Chinese children’s wear, is a transcription of “巴拉巴拉”. The pronunciation is simple and easy to remember and it has a wide range of uses. The Respondent holds or has held many such domain names, including , , and . Many Chinese people like this kind of domain name, as does the Respondent, and it has no connection with the Complainant’s trademark. The use of a privacy shield service is not evidence of bad faith. The page where is parked provides the Respondent’s contact details. The Respondent did not deliberately conceal his identity or contact information. Further, the information on the parking page is all in Chinese and targets the Chinese customer; it does not affect the Complainant’s business or have any competitive relationship with it. Therefore, there is no evidence of bad faith registration or use. 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 Registrar has a domain name services agreement in English and that the Parties used English in pre‑Complaint correspondence.
The Respondent requests that the language of the proceeding be Chinese. His arguments are that he did not communicate with the Complainant prior to the Complaint; he never agreed to the use of English in the Complaint; the Registration Agreement is in Chinese; the Respondent uses Chinese and is very unfamiliar with English; the Respondent cannot understand the Complaint or respond if the Complaint is not in Chinese; he is an individual and cannot find a translator and this would be unfair.
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 and the Response was filed mostly in Chinese. However, the Complainant has submitted evidence of pre-Complaint correspondence between the Parties in English regarding a possible transfer of the disputed domain name. The Respondent has also submitted an annex to the Response in English, showing the backorders from his account with a domain name provider. This evidence indicates that the Respondent is familiar with English. The Panel is familiar with both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both parties have been able to present their respective views of the matter in dispute in detail. Therefore, the Panel does not consider that accepting the original version of any document on file causes prejudice to 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 it will accept the communications filed in Chinese without a translation. 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 GULA GULA trademark.
The Respondent points out that the Complainant has not demonstrated any trademark rights in China. However, due to the global nature of the Internet and Domain Name System, the Panel finds that the jurisdiction where the trademark is valid is not relevant to the assessment of the first element of the Policy, which operates as a standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2.
The disputed domain name incorporates the GULA GULA trademark, omitting only the space between the words. Spaces cannot form part of a domain name for technical reasons and this difference does not prevent a finding of confusing similarity.
The disputed domain name also contains the gTLD suffix “.com”. However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of a comparison under the Policy. See 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.
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 noncommercial 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.”
The disputed domain name resolves to a parking page that offers it for sale. The disputed domain name does not contain a dictionary word. The Complainant submits that it has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the disputed domain name. These circumstances do not constitute a bona fide offering of goods or services that would create a right or legitimate interest in the disputed domain name for the purposes of the Policy. Nor is this a legitimate noncommercial or fair use of the disputed domain name. The Panel does not find that the Respondent’s use falls within the first or third circumstance of paragraph 4(c) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is “Liao Qiang Heng”, not “Gulagula”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, he asserts that he lawfully purchased the disputed domain name and has priority rights to it. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. Accordingly, the Panel finds that the Respondent did not rebut the Complainant’s prima facie case.
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 shall be evidence of the registration and use of a domain name in bad faith. The first of these is 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 domain name.”
With respect to registration, the disputed domain name incorporates the Complainant’s GULA GULA trademark, omitting only the space between the words and adding only a gTLD suffix. The Panel recalls that “gulagula” is not a dictionary word. The Respondent registered the disputed domain name years after the Complainant registered its trademark in Brazil and acquired a reputation through promotion and use in connection with its restaurant services in Brazil. The Respondent is resident in China, not Brazil but, due to the global nature of the Internet, he may still have been aware of the Complainant’s mark at the time of registration of the disputed domain name, even without Google. The Respondent denies that he knew of the existence of the Complainant or its mark prior to this dispute. He submits that he chose the disputed domain name because of its pronunciation, which is a transcription of two Chinese characters, repeated. The Respondent submits evidence that purports to show that he has registered three other such domain names. While the Respondent may be right that many Chinese customers like this kind of domain name, the Panel observes that the parking page to which the disputed domain name resolved was in English, even before the Complainant’s legal representative contacted the hosting company, which indicates that the Respondent anticipated communication with a non-Chinese customer. As the registrant, the Respondent was responsible for the use made of the disputed domain name. The fact that the Respondent changed all the contact details on the parking page to Chinese after corresponding with the Complainant’s legal representative and that he now seeks to rely on that fact to deny targeting a non-Chinese mark is an indicator of bad faith. Although the Respondent’s evidence purports to show that he sold another domain name that contained a Chinese trademark (BALABALA), this would not imply that the Respondent did not target a foreign trademark (GULA GULA) in the disputed domain name. Further, the Respondent misled the Panel when he stated that there was no pre-Complaint correspondence between the Parties, which further undermines his credibility. The Panel has considered all the evidence carefully and finds, on balance, that it is more likely than not that the Respondent registered the disputed domain name because he was aware of the Complainant’s trademark.
With respect to use, the Panel notes that the disputed domain name resolves to a parking page that merely offers the disputed domain name for sale. The Respondent offered to sell the disputed domain name to the Complainant for USD 6,000 and later USD 5,000. Although these offers were made in the course of a negotiation initiated by the Complainant’s representative, the Respondent was not obliged to engage in the negotiation. These circumstances indicate that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to 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. Consequently, the Panel finds that the facts of this case fall within the circumstances set out in paragraph 4(b)(i) of the Policy.
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. 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 Panel does not find that the Complaint was brought in bad faith. On the contrary, the Panel has upheld the Complaint. 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: November 14, 2018
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