The Complainant is Evernote Corporation, United States of America (“US” or “United States”), represented by Latham & Watkins LLP, United States.
The Respondent is SuJie (苏杰), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 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 July 30, 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 in English on August 2, 2021.
On July 30, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 2, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.
The Center appointed Karen Fong as the sole panelist in this matter on September 22, 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 BackgroundThe Complainant, established in 2004, provides a mobile app and various online services to allow users to keep their notes organized and accessible anywhere. The Complainant’s app is known as the “Evernote App” and has gained fame in the United States and around the world. More than 225 million people worldwide use the Evernote App to create more than 8 billion “notes”. The Complainant has a portfolio of registered trade marks for EVERNOTE in many jurisdictions including in the US and China. The earliest trade mark registration submitted in evidence is US Trade Mark registration No. 2990592 for EVERNOTE in class 9 registered on August 30, 2005 (the “Trade Mark”).
The Complainant’s primary website is connected to the domain name
The Respondent which is based in China registered the Domain Name on March 21, 2021. The Domain Name redirects to a website at <0007133.com> which seeks users’ personal information and offers lottery betting services (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Issue - Language of ProceedingThe Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Registrar communicated with the Complainant in the English language;
- The Domain Name is in English and the addition of the letters “api” to the Trade Mark which stands for “application programming interface” demonstrates that the Respondent is familiar with the English language;
- Having to translate the Complaint to Chinese would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of the matter.
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 accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.2 Substantive Analysis A. GeneralAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks 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 was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark. The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.
In this case, the Domain Name contains the Complainant’s Trade Mark in its entirety and the letters “api” which is a common acronym used in the field of software. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not an authorised licensee or distributor of the Complainant’s products or services. The fact that the Domain Name redirects to what appears to be an unrelated Chinese website offering gambling-related services is not bona fide or legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad FaithTo succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name, the reputation of the Trade Mark and the addition of the term “api” which is a software offering of the Complainant. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name without any explanation is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also being used in bad faith. The Website which is a gaming and betting site was set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. Such confusion is potentially detrimental to the Complainant. The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is authorised or endorsed by the Complainant. The Panel therefore finds that the Domain Name has been registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Karen Fong
Sole Panelist
Date: October 12, 2021