The Complainant is Operation Smile, Inc. of Atlanta, Georgia, United States of America (“USA” or “United States”), represented by Troutman Sanders, LLP, USA.
The Respondent is Xiuyin Cai of Hangzhou, Zhejiang, China. 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 January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2019, 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. The Center sent an email communication to the Complainant on January 29, 2019 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 amended Complaint on the same day.
On January 29, 2019, 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 did not comment on the language of the proceeding by the specified due date.
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 English and Chinese of the Complaint, and the proceeding commenced on February 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 6, 2019. 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 a company incorporated in the State of Virginia in the USA and the operator of an international medical charity that has provided hundreds of thousands of free surgeries for children and young adults in developing countries who are born with cleft lip, cleft palate, or other dental and facial conditions. The Complainant first commenced operations under the trade mark OPERATION SMILE (the “Trade Mark”) in 1982, and has since then extended its international operations under the Trade Mark to more than 60 countries.
The Complainant is the owner of registrations in jurisdictions worldwide for the Trade Mark, including United States registration No. 1,978,212 with a registration date of June 4, 1996; and Chinese registration No. 7186486 with a registration date of November 21, 2010. B. Respondent
The Respondent is an individual resident of China and a former employee of a subsidiary of the Complainant’s former licensee of the Trade Mark in China (the “Licensee”). C. The Disputed Domain Name
The disputed domain name was registered on August 21, 2001. D. The Website at the Disputed Domain Name
The disputed domain name does not presently resolve to an active website. It was previously resolved to the website of the Licensee. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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. However, 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 the language of the proceeding be English, on the grounds:
1. Substantial additional expense and delay would be incurred if the Complaint had to be translated into Chinese;
2. The disputed domain name is based on the Top-Level Domain (“TLD”) “.org” — an English language formative;
3. The Trade Mark is owned by the Complainant (a United States corporation) and is an English language mark associated only with the Complainant. Because the Complainant’s primary advertising and promotional literature and website are in English, the Trade Mark is recognised as English;
4. The disputed domain name is a near exact copy of the Trade Mark in the English language, using the TLD“.org”;
5. It is reasonable to infer that the Respondent is able to understand and communicate in English; and
6. The Respondent’s failure to participate in this proceeding is a strong factor to allow the Panel to decide to proceed in English.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
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.
The Panel notes that:
1. The Respondent is a former employee of a subsidiary of the Complainant’s former Licensee in China;
2. The Licensee is (or was at the material time) a company incorporated in Hong Kong, China;
3. One of the official languages of Hong Kong, China is English;
4. On November 30, 2017, the Complainant obtained summary judgment (handed down in English language) against the Licensee in trade mark infringement and passing off proceedings in the High Court of the Hong Kong Special Administrative Region of China (the “Judgment”); and
5. The website of the Licensee previously contained some English language content.
In light of the above, the Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English.
The Panel also notes that the Respondent has chosen to take no part in this proceeding.
In all the circumstances, the Panel therefore finds it not foreseeable that the Respondent would be prejudiced should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be 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.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “China”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. 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 the Respondent 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. To the contrary, in its Judgment handed down on November 30, 2017, the High Court of the Hong Kong Special Administrative Region of China:
1. Adjudged and declared that the Trade Mark is a well-known mark entitled to protection under the Paris Convention; and
2. Ordered that the Licensee, whether acting by itself or its directors, servants, agents, employees or any other persons, be restrained from (A) passing off the Licensee as the Complainant or an entity affiliated, connected or associated with, or authorised, sponsored, licensed or approved by, the Complainant; (B) infringing the Complainant’s Hong Kong registration for the Trade Mark; and (C) registering or maintaining the registration of any domain names confusingly similar to the Trade Mark.
The uncontested evidence submitted on behalf of the Complainant is that the Respondent is a rogue former employee of a subsidiary of the Licensee.
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
In all the circumstances, and given in particular the notoriety of the Complainant and of its Trade Mark, the Judgment obtained by the Complainant against the Licensee, and the fact the Respondent is a former employee of a subsidiary of the Licensee, 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: March 15, 2019
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