The Complainant is Alibaba Group Holding Limited, Cayman Islands, United Kingdom, represented by ELLALAN, China.
The Respondent is LiangKe Weng, Jiangxi Domain Information Industry Co., Ltd., China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2021. On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2021 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 May 10, 2021. 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 of the Complaint, and the proceedings commenced on May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent sent email communications but did not submit a formal Response. The Center sent the Commencement of Panel Appointment Process on June 7, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 11, 2021. 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 limited liability company incorporated in 1999 in the Cayman Islands, United Kingdom. Based in Hangzhou, China, the Alibaba Group is a multinational technology group with core services in ecommerce, cloud computing, online payment systems, and digital media and entertainment. The Complainant’s shares are traded publicly on the New York and Hong Kong, China, stock exchanges. Group revenues for the fiscal year that ended in 2020 totaled nearly USD 72 billion. As described on the Complainant’s website at “www.alibabagroup.com”, in 2008 the Complainant launched “Taobao Mall (currently known as Tmall), a third-party commerce platform for brands and retailers” to complement its Taobao Marketplace for online business. In 2010 and 2011, the Complainant’s Taobao Mall platform was transitioned to a new website at “www.tmall.com”, as shown in screenshots from the Internet Archive’s Wayback Machine and an image found in the “History and Milestones” section of the Complainant’s website at “www.alibabagroup.com”. Tmall is a Chinese-language ecommerce website, linked to mobile apps, creating a “virtual shopping mall”. Originally designed for Chinese merchants to reach consumers in China and overseas, it was expanded in 2014 with Tmall Global to allow overseas retailers to reach Chinese consumers through a website at “www.tmall.hk”. The Tmall platform is linked from the Complainant’s social media sites and advertised on other media as well. The record includes ample evidence of rapid growth since 2008, supporting the conclusion that Tmall has become a leading third-party retail platform in China and worldwide, used by hundreds of thousands of merchants and hundreds of millions of consumers. The Tmall platform is presented and advertised with several registered TMALL trademarks held by the Complainant, including the following: MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE Tmall TMALL tmall TMall (ordinary marks) Hong Kong, China 301756198 November 5, 2010 TMALL (word) China 8820963 November 21, 2011 TMALL (figurative) European Union 010519395 December 21, 2013 TMALL (word) Australia 1467548 December 23, 2011 TMALL.COM (word) China 10422981 April 21, 2013 TMALL (standard characters) United States 4300001 March 12, 2013 The Registrar reports that the Domain Name was registered on March 22, 2021, to the Respondent LiangKe Weng of Jiangxi Domain Information Industry Co., Ltd. The contact email address provided in the Domain Name is also used for the website of a Chinese domain name broker and registrar. The Complainant attaches a screenshot of the landing page to which the Domain Name resolved in April 2021, a single page in Chinese consisting of a questionnaire in the form of boxes to click indicating the visitor’s age and gender. At the time of this Decision, the Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s TMALL trademarks, as it incorporates the TMALL mark in its entirety. The Complainant has not authorized the Respondent to use the TMALL marks and finds no evidence that the Respondent is known by a corresponding name or has registered marks of its own. Given the fame of the Complainant’s TMALL marks and the fact that the Respondent is located in China, the Complainant submits that it is probable that the Respondent chose the Domain Name to divert Internet users familiar with the Complainant’s Tmall platform. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Respondent sent an email communication on May 10, 2021 stating that the “Registrant info is our platform’s default contact information when our user booking domain from snapname, the whois information will be set to this. But it is not the user’s contactor information”, providing the contact information for the Domain Name beneficial holder, located in China. An email from the alleged beneficial holder, was received on May 19, 2021, stating its willingness to transfer the Domain Name. Later on, on May 29, 2021, Respondent sent a new communication stating that the beneficial holder is the actual domain name holder and that the Domain Name can be directly obtained from it. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 6.1 Respondent’s Identity The Panel notes that little is known about the beneficial holder. There is no evidence on the existence and nature of the relationship between the Respondent and the alleged beneficial holder. Irrespective of whether there is an actual beneficial holder or not, noting that LiangKe Weng, Jiangxi Domain Information Industry Co., Ltd is the registrant confirmed by the Registrar, the Panel has decided to consider that LiangKe Weng, Jiangxi Domain Information Industry Co., Ltd is the Respondent. However, references to the Respondent shall include any actions by the beneficial holder regarding the Domain Name. 6.2 Substantive Issues A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds registered TMALL and TMALL.COM trademarks. The Domain Name incorporates the TMALL marks in their entirety and adds the English dictionary word “house”, which does not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2. The Panel concludes that the first Policy element is established on these facts. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its marks, and the Respondent’s use of the Domain Name to date only for a landing page with a questionnaire about the user’s gender and age, which did not identify the website operator. This does not indicate a bona fide commercial activity or noncommercial fair use, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so. The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Complainant alludes to this example of bad faith, but there is no evidence on this record of the commercial use of the Domain Name to date. However, the examples in paragraph 4(b) are not exclusive. There are other indications of bad faith in this case. Given the distinctive nature of the Complainant’s TMALL mark (it is not a dictionary word or phrase in English or Chinese) and the fact that it is so widely known, particularly in China where the Respondent (and the beneficial holder) is located, it is reasonable to infer that the Respondent was aware of the mark and selected the Domain Name because of its potential to mislead Internet users as to source or affiliation. Irrespective of who is using the Domain Name, the Domain Name has no evident value for a generic purpose, but it is inherently misleading as it appears to be associated with the Complainant and thus may be used to misdirect Internet users to competing websites and may be misused for fraudulent emails. The Panel notes that scam “survey” websites similar to the landing page formerly associated with the Domain Name are sometimes used to collect IP addresses and place malware. Thus, this is not precisely a “passive holding” of a domain name based on a well-known and distinctive trademark, as in the UDRP decisions following Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (see WIPO Overview 3.0, section 3.3). But there is similarly, in this case, the “implausibility of any good faith use to which the domain name may be put” (id.), and it appears that the Domain Name has already been to some extent field-tested with an interactive landing page. This represents a potential threat to the trademark holder and to consumers. Moreover, the Respondent has not substantially replied to correspondence from the Complainant or the Center, and the Respondent (or the beneficial holder) did not identify itself on the landing page associated with the Domain Name. These facts can be viewed as supporting an inference of bad faith. The Panel concludes on this record that the Complainant has established bad faith in the registration and use of the Domain Name within the meaning 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 Domain Name, W. Scott Blackmer
Sole Panelist
Date: June 23, 2021
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