The Complainant is Union of Catholic Asian News Limited, China, represented by Mayer Brown LLP, China.
The Respondent is Registration Private, Domains By Proxy, LLC / Anucha Chaiyadej (the “First Respondent”) / WhoisGuard, Inc / Rachada Monthienvichienchai (the “Second Respondent”), Thailand, self-represented. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2019. On November 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4, 2019, the Registrar Name Cheap, Inc. 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 November 5, 2019, the Registrar GoDaddy.com, LLC 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 November 8, 2019, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 13, 2019. 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 Respondents of the Complaint, and the proceedings commenced on November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. On December 4, 2019, the Respondents requested the automatic response extension pursuant to paragraph 5(b) of the Rules, making the new Response due date December 8, 2019. A Response was filed with the Center on December 4, 2019 by the Second Respondent, Rachada Monthienvichienchai.1 On December 5 and 9 2019, the Center received two email communications from the Complainant. On December 13, 2019, the Complainant submitted to the Center a supplemental filing. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 20, 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 In 1979, one Maryknowl Father Robert Francis Astorino founded a news service under the name “Union of Catholic Asian News”. It used that name and a “logo” or “masthead” in the form of “UCA News”. Father Astorino continued to operate that service until about February 2009 when the Complainant was incorporated in Hong Kong and took over the running and publication of the service. Father Astorino was the founding member and director of the Complainant. According to its Annual Return, as at February 2019, Michael Hedley Kelly SJ is the sole director of the Complainant. Father Kelly and William John Grimm each hold one of the two shares in the Complainant. Over time, the Complainant developed the service to include newsletters, publications, and a website. According to the Complaint, the Complainant has more than 30 reporters and bureaus in various countries including Bangladesh, Cambodia, China, East Timor, Hong Kong, India, Indonesia, South Korea, Malaysia, Myanmar, Nepal, Pakistan, the Philippines, Sri Lanka, Taiwan, Thailand, and Vietnam. The Complainant’s service has some 10,000 subscribers. According to its audited accounts, it had over HKD 1.7 million in revenue in the previous financial year. The Complainant has generated between USD 1.35 million and USD 1.77 million in donations in each of the last five years. Throughout this period, the Complainant, or its service, has used “UCA News” and variations thereof (including, for example “UCAN” and “ucanews.com”) to identify itself. At least since 2011, the forms of usage have included a “masthead” or “logo” form which features “UCAnews” separated from “com” by a device of stylized fish, the body of which is the wi-fi “vector” and, since at least 2015, a tag line “There for the Voiceless”. The letters “UCA” are in bright, light blue. The Complainant, or its service, is often referred to by other news publications as “UCA News”, usually when referencing stories reported by it. Father Kelly registered the first disputed domain name in November 1996. The registration was transferred to the Complainant after it assumed the operation of the news service. It appears that the first disputed domain name has resolved to some form of active website, until recently, since at least 1998. At some point (possibly in May 2018), the Second Respondent became the Complainant’s executive director, based in Thailand. In June 2019, two other domain names held by the Complainant fell due for renewal. The Second Respondent directed that one be renewed and the other allowed to lapse. The Second Respondent also directed that “Privacy & Business Protection” be purchased for the renewing domain name and, as well, the first disputed domain name. The employee executing these instructions inquired whether the domain names should be renewed in the Complainant’s name or the Second Respondent’s. The Second Respondent directed that both the domain name to be renewed and the first disputed domain name should be registered in his name. According to the Registrar, the Second Respondent registered the second disputed domain name on July 30, 2019. On August 28, 2019, a company was incorporated in Thailand under the name UCANEWS Company Limited. One of its three directors has the same initials as the Second Respondent. The LinkedIn pages of both the Second Respondent and UCANEWS Company Limited state that the Second Respondent is the founder of “UCA News”. The Second Respondent’s engagement with the Complainant was terminated with effect from September 30, 2019. There is a dispute about when and how the Second Respondent was notified about the termination of his employment, but there does not appear to be any dispute about the date of termination. According to the letter of termination provided to him, this was due to “a recent funding crisis” in the Complainant making it necessary to scale down its operations in Thailand. On September 18, 2019, the Archdiocese of Bangkok sent a circular letter to all donors to “UCANews” (the Archdiocese letter). The Archdiocese letter advised recipients that, with the approval of the Archdiocese, a Mr Daopiset (who was described as the Chairman of the Complainant) and the Second Respondent had decided to transfer operation of “UCA News” from the Complainant to UCANEWS Company Limited in Bangkok. Accordingly, the circular letter advised that all donations in future should be made into the Bangkok company’s bank account, In the first week of October 2019, the first disputed domain name resolved to a website which displayed the message: “UCA News: We are undergoing a major upgrade. Our enhanced website will be online Thursday 10 October 2019.” The second disputed domain name has resolved to an active website since at least October 11, 2019. Since October 11, 2019, the first disputed domain name has redirected to the website hosted at the second disputed domain name also. The website operates under the name “UCA News” and is published by “UCANEWS Company Limited”, the Bangkok company. It provides news information about topics likely to be of interest to the Catholic community. The “About Us” page of the website states that it has been established by the Catholic Communications Office of the Archdiocese of Bangkok. At some point, UCANEWS Company Limited was appointed the official news agency for Pope Francis tour of Thailand in November 2019. This website includes a “masthead” which features a device of a stylized fish with a wi-fi “vector” superimposed over the body; a stylized form of “UCAnews” and the strapline “There for the Voiceless”. The fish device (but not the wi-fi “vector”) and the letters “UCA” are in blue, but a royal blue; the fish device points in the opposite direction to the device in the Complainant’s logo and the stylized letter “A” features a bright red dot at the foot of the right leg. At some point between June 24, 2019 and October 4, 2019 (when the Registrar’s records show the WhoIs information was last updated) the registration of the first disputed domain name was transferred into the name of the Respondent, Anucha Chaiyadej, (the First Respondent). According to the Response provided by the Second Respondent, Father Chaiyadei is from the Catholic Office of Social Communication of Thailand, Catholic Bishops Conference of Thailand (the CBCT). The Second Respondent’s father acted as the spokesman for that organization at least in connection with the visit of Pope Francis to Thailand in November 2019. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. To the extent that the Response filed by the Second Respondent is not also the response of the First Respondent, the Complaint has been sent to the physical and electronic coordinates for the First Respondent confirmed as correct and current by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the First Respondent has been given a fair opportunity to present his case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. There are no exceptional circumstances in the present case, not least because the Second Respondent has submitted a Response and confirmed that he has been in communication with the First Respondent about the dispute. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Admissibility of Complainant’s Supplemental Filing As noted above, the Complainant has submitted a supplemental filing addressing matters raised in the Response. Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. As the supplemental filing is essentially responsive to matters raised in the Response and the Second Respondent has not raised any objection to or prejudice arising from the supplemental filing, the Panel admits the supplemental filing into the record of the proceeding. B. Consolidation of Complaints The disputed domain names are registered in the names of different persons. Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case. In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11. In the present case, the Panel considers that consolidation is appropriate, having regard to the circumstances outlined in section 4 above. First, the Panel notes that the first disputed domain name redirects to the website at the second disputed domain name. Secondly, both disputed domain names and the Complainant’s objections to them are based on the same sign “UCA News”. Thirdly, while it does not appear that the Second Respondent is a member of or employed by the CBCT, there are obviously close connections between the Second Respondent and the CBCT and the Archdiocese of Bangkok. The Second Respondent disputes that it is appropriate for the complaints against each domain name to be joined in the one proceeding. The First Respondent has not filed a Response. The Second Respondent says the First Respondent is wholly independent of him and he has no control over what use the First Respondent makes of the first disputed domain name. Secondly, the Second Respondent states that, after the Complaint was filed, he asked the First Respondent to cease directing the first disputed domain name to the Second Respondent’s website. According to the Second Respondent, the First Respondent agreed to this, but was unable to implement the request because the first disputed domain name is in “registrar lockdown”. Against these matters, the Panel notes that there has not been a proper explanation of when the transfer of the first disputed domain name from the Second Respondent to the First Respondent occurred. The circumstances outlined in section 4 above suggest a plan to transfer the Complainant’s business to an operation. Secondly, the website to which the first disputed domain name resolved early in October 2019 stated that a new website was to be launched on October 10, 2019 after a major upgrade. Shortly after that date – on October 11 – the first disputed domain name resolved to the website at the second disputed domain name. The clear inference from these events is that the new website at the second disputed domain name held by the Second Respondent is the “new website” foreshadowed in the announcement on October 4, 2019. Thirdly, the Archdiocese of Bangkok sent out the Archdiocese letter dated September 18, 2019 to “Donors of UCANews” directing them that any future donations to UCA News should sent to UCANews Company Limited’s bank in Thailand. Taking all these matters into account, it appears therefore that both disputed domain names are being operated in close co-operation. Moreover, the Second Respondent has not identified any prejudice he suffers from the joinder of the Complaints against both disputed domain names. Nor does there appear to be any prejudice to the First Respondent resulting from joinder. The First Respondent has been given a fair opportunity to defend the registration of the first disputed domain name in its name, but appears to have been content to rely on the Response submitted by the Second Respondent. Accordingly, the Panel finds it is appropriate for the dispute against each of the disputed domain names to be consolidated into the one proceeding. C. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has not identified any registered trademarks of which it is the owner. However, the requirement of trademark rights under the Policy may be satisfied by rights in an unregistered trademark arising from use and promotion and reputation. See WIPO Overview 3.0, section 1.3. In the present case, the Panel is satisfied that the length and extent of use of “UCA News” demonstrated in the Complaint qualifies the Complainant as owning trademark rights in that expression under the Policy. The Panel notes that the Complainant’s use has included use of the expression in plain type, and with the letters “U”, “C”, “A”, and “N” emphasised as well as in the masthead or logo form described above. The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the case of the first disputed domain name to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. On that basis, both disputed domain names are identical to the Complainant’s trademark. The Second Respondent contends that this requirement is not satisfied. The Second Respondent points out that the Complainant has no registered trademarks in Thailand and says that his operation has the endorsement of the Catholic Church in Thailand. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law, however, are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See, e.g., WIPO Overview 3.0, sections 1.7 and 1.11. The Second Respondent says that the Complainant does not have exclusive rights over the words “Catholic”, “Asia”, “Asian”, or “News”, and “U” sounds like the pronoun “you”. The Panel accepts those points. The issue here, however, is the resemblance of the particular combination of elements in the disputed domain names to the Complainant’s trademark. The Second Respondent also points out that there are a number of other services such as In addition, the Second Respondent further contends that there are significant graphical differences between the logos of, respectively, the Complainant’s masthead and the Second Respondent’s masthead, noting that the fish symbol is a universal symbol used by Christians, the wi-fi “vector” is a “public domain” symbol, the lettering is distinguished by the presence of the red dot in the Second Respondent’s logo and the colouring is different so that, according to the Second Respondent, the Complainant’s logo “is more dated in appearance”. First, what is in issue here is the resemblance of the Respondents’ domain names to the Complainant’s trademark, not the resemblance of the respective logos. As already noted, both disputed domain names are, for the purposes of the Policy, identical to the Complainant’s trademark (in its plain verbal forms). Insofar as the Complainant’s trademark takes the logo form, the graphic element of such trademarks is usually disregarded unless it is so dominating that the verbal element is overborn or insignificant. See WIPO Overview 3.0, section 1.10. In the present case, the graphic element is a significant visual component of the Complainant’s logo form. The textual element “UCAnews” is nonetheless prominent and distinct. It is an important, if not the key, element identifying the “trade” source of the services provided under its aegis. Finally, the Second Respondent points out that in one month of operation (November 2019) his website reached 2.6 million people around the world with more than 1.3 million people actively engaging with his company’s social media presence. This contrasts with the Complainant’s Facebook engagement number in the same period of only 8,400. One might expect that the entity appointed as the official news agency for the papal visit to Thailand would attract a very high level of attention, particularly during and in anticipation of that visit. However, the Complainant has not delayed nor acquiesced in the Respondents’ conduct in these circumstances; the issue is not whether the Respondents have built up a reputation of their own in the face of the Complainant’s rights, but whether the Complainant had developed rights in “UCA News” even though it had not registered that expression as a trademark. Accordingly, the Panel finds that the Complainant has established that both disputed domain names are identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. D. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the 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 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. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1. Noting that the Second Respondent’s company, UCANEWS Company Limited, was incorporated many years after the adoption and use of “UCA News” by the Complainant and its predecessor, the required prima facie case is easily established in respect of both disputed domain names by the circumstances outlined above. The Response, however, contends that the Respondents are both entitled to their respective disputed domain names. The sequence of events was that the first disputed domain name was registered in the Complainant’s name. It was then transferred into the Second Respondent’s name behind the shield of the Registrar’s privacy proxy service. At some point after that (the Response does not provide a precise date), the registration was transferred from the Second Respondent to the First Respondent (still behind the shield of the Registrar’s privacy proxy service). The Second Respondent states that in his capacity as Executive Director of the Complainant he had full authority to deal with its assets including the first disputed domain name. In that capacity, the Second Respondent, in consultation with Mr Daopiset and with the approval of the Catholic Church in Thailand, decided to transfer the news agency from Hong Kong to Thailand and consequently the first disputed domain name to the First Respondent since, as the Executive Director of the Complainant at the time “he did not wish to personally be the owner of the first disputed domain name”. As the Complainant points out, this explanation does not appear to be consistent with the Second Respondent’s claims that the First Respondent is acting wholly independently of the Second Respondent. The Second Respondent and the Archdiocese letter describe Mr Daopiset as the Chairman of the Complainant. The Complainant’s supplemental filing disputes this, stating that Mr Daopiset is merely chairman of the Complainant’s advisory board. This advisory board, according to the Complainant, has an advisory function only and does not have any authority to bind or act for the company. Support for the Complainant’s contention lies in its Annual Return, which shows that Father Kelly is (and was at February 2019) the Complainant’s sole director. The Second Respondent states that the first disputed domain name became registered in his name at the suggestion of another employee of the Complainant. The printouts of the communications between the employee and the Second Respondent do bear out that she asked him whether the registrations of the then expiring domain names should be renewed in the name of the Complainant or the Second Respondent. It is not clear from these documents why the employee raised the two alternatives. However, it was the Second Respondent’s choice which of the alternatives was taken. Except in very unusual circumstances, an officer of a corporation vested with full authority to deal with the corporation’s assets is nonetheless subject to the constraint that his or her dealings with the company’s assets must be dealings which the officer considers are for the benefit of the corporation and not his, or someone else’s benefit. It is to be recalled that the first disputed domain name began redirecting to the website maintained by UCANEWS Company Ltd, a company of which the Second Respondent is described as the founder and which was appointed by the CBCT as their official news agency for the purposes of the papal visit to Thailand. That website is maintained at the second disputed domain name, the registration of which is held by the Second Respondent. On the evidence provided in this proceeding, therefore, the Panel is unable to see how it could be thought in the interests of the Complainant to transfer the first disputed domain name from the Complainant to, first, the Second Respondent and, secondly, to the First Respondent (all behind a privacy shield) for no value at all and in circumstances where the first disputed domain name redirects to the website of another company in competition with the Complainant and in which the Second Respondent appears to have interests. On this record, the transfers of the first disputed domain name do not appear to have been in good faith. In these circumstances, the Panel is unable to find the explanation advanced by the Second Respondent for the transfer of the first disputed domain name into the First Respondent’s name rebuts the prima facie case that the First Respondent does not have rights or legitimate interests in the first disputed domain name. The same conclusion follows in respect of the second disputed domain name. It would require a most extraordinary set of circumstances for someone who was at the time a senior officer of the Complainant to be able legitimately to register what is to all intents and purposes an identical name to the Complainant’s trademark to provide what are news agency services directly competitive with the Complainant’s services. If such circumstances exist, they have not been identified in the Response. Accordingly, the adoption and use of the second disputed domain name does not qualify as a good faith offering of goods or services under the Policy. Whether the Complainant has exclusive rights in words like “Catholic”, “Asian”, and “News” is not the issue. The issue is whether the Second Respondent has rights or legitimate interests in the particular term comprising the second disputed domain name. The facts that the Complainant does not have a registered trademark in Thailand and the Second Respondent (or his company) has the endorsement of the local Church in Bangkok are not determinative. Apart from anything else, it is plain that both disputed domain names are being directed to a global, or at least pan-Asian, audience. That is reinforced by the letter dated September 18, 2019 from the Archdiocese of Bangkok requesting all donors to UCA News to deposit their donations in the bank account of the Second Respondent’s company. The Respondents cannot rely on the use of the same, or similar, expressions by other entities such as the University of Central Arkansas, or the Ucan organisation in Hong Kong, or use of that expression in relation to physics, as the Respondents claim no entitlement from any of those organisations and the use of the disputed domain names is not in any way related to any of those activities. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. E. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. There cannot be any dispute that both Respondents were well aware of the Complainant’s use of and reputation in the expression “UCA News”. On the contrary, as the Archdiocese letter shows, the Respondents sought to take advantage of that reputation and transfer it to the new Thai company associated with the Second Respondent, UCANEWS Company Limited. The reasons leading to the conclusion that the Respondents do not have rights or legitimate interests in the respective domain names, therefore, lead to the conclusion that both disputed domain names have been registered and used in bad faith. The Second Respondent does assert that neither he nor “any operation of Similarly, the fact that the Respondents, or at least the Second Respondent, has developed a substantial following as “UCA News” in the face of the Complainant’s rights in the circumstances indicated on the record in this case does not qualify as use in good faith. Accordingly, the Complainants have established all three requirements under the Policy. F. Reverse Domain Name Hijacking The Second Respondent has requested a finding of reverse domain name hijacking. In view of the success of the Complaint, however, there is no basis for such a finding. 6. 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 names, Warwick A. Rothnie 1 As the Registrars have identified the persons who have registered the respective disputed domain names behind the privacy services, the Panel will refer only to the identified persons as the Respondents for simplicity.
Sole Panelist
Date: January 3, 2020
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