The Complainant is Beijing DiDi Infinity Technology Development Co., Ltd, China, represented by Liapunov & Co., Ukraine.
The Respondent is Александр Вовк, Ukraine.
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 September 22, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2021, the Registrar transmitted by email to the Center its verification response 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 September 24, 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 amendment to the Complaint on September 27, 2021.
The Center sent an email communication in both Ukrainian and English regarding the language of the proceeding on September 24, 2021. On September 30, 2021, the Complainant filed the Complaint in Ukrainian. The Respondent did not reply on 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 both Ukrainian and English, and the proceedings commenced on October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Response in English was filed with the Center on October 28, 2021.
The Center appointed Taras Kyslyy as the sole panelist in this matter on November 29, 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 is mobility technology platform having over 550 million users and tens of millions of drivers. Under its DIDI mark it offers a wide range of app-based services across Asia-Pacific, Latin America, and Africa, as well as in Central Asia and the Russian Federation , including ride hailing, taxi hailing, chauffeur, hitch and other forms of shared mobility as well as auto solutions, food delivery, intra-city freight, and financial services.
The Complainant owns a number of DIDI trademark registrations in numerous jurisdictions, including for instance the United Kingdom trademark registration No. 00003185227, registered on December 8, 2017.
The disputed domain name was registered on February 10, 2021. At the time of the decision the disputed domain name resolves to a webpage with word "soon" in Ukrainian. The Complainant and the Respondent have different views on the use of the disputed domain name preceding the present dispute review.
The Complainant sent a cease and desist letter to the Respondent on July 29, 2021. The Respondent did not reply.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name fully incorporates the Complainant’s trademarks for which the Complainant holds valid registrations and that are in current use. The mere addition of the respective geographical term "Ukraine" does not constitute a sufficient element of distinctiveness which should be taken into consideration when evaluating the similarity of the DIDI trademarks with the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither a licensee of the Complainant, nor has been otherwise allowed by the Complainant to make any use of its DIDI trademarks in the disputed domain name or otherwise. The website at the disputed domain name is used as the platform performing services to passengers and drivers under the DIDI mark. Such use creates misleading impression that the third party website and the services offered therein are endorsed by the Complainant. The action on confusion of the consumers is made on purpose of getting a commercial benefit by the Respondent. The Respondent never made or intended to make legitimate noncommercial or fair use of the disputed domain name, but only to unfairly exploit the Complainant’s goodwill and reputation in its DIDI trademarks.
The disputed domain name was registered and is being used in bad faith. The Respondent has been well aware of the Complainant and has had the constructive knowledge of the Complainant’s rights in its famous DIDI trademarks. The Respondent registered the disputed domain name with the sole intent to exploit the Complainant’s famous mark and to trade on the rights of the Complainant. Since the disputed domain name consists of the Complainant’s trademarks in its entirety, the Respondent could not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation in the DIDI trademarks. The website at the disputed domain name contained a proposal of the popular taxi provider DIDI to become passengers and drivers. Also, the website has contained forms for filling in by passengers and drivers. Moreover, it contained a link to the official website of the Complainant. In doing so, the Respondent attempted to create the false impression among Internet users that he is affiliated to the Complainant. Internet users who are looking for the Complainant’s services may be misled and deceived by the Respondent’s website into believing that they are accessing the website of a partner of the Complainant in Ukraine. The Respondent is misleadingly diverting consumers into believing that the taxi service information on which is presented on the website at the disputed domain name belongs to the Complainant. Upon receiving the cease and desist letter from the Complainant, the Respondent did not terminate the registration of the disputed domain name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a confusion with the Complainant’s DIDI trademarks, as to the source, sponsorship, affiliation, or endorsement of its website.
B. RespondentThe Complainant has no rights in its DIDI trademark, since it is not registered in Ukraine. The website at the disputed domain name is for informational purposes only, i.e.,it contains information and links to third-party resources, but does not offer services. At the time of filing of the Complaint the Respondent did not receive and did not intend to receive any benefit from the operation of the website at the disputed domain name and carried out its technical operation. Receipt of commercial benefit by the Respondent is not proved by the case materials. The Respondent respects intellectual property and always makes sure that all information that has been posted on the website at the disputed domain name has appropriate links to the source of such information. None of the ever existing pages of the website at the disputed domain name had and has not established permanent or temporary redirection to the website at "www.didiglobal.com". The Respondent has not taken any action to promote any of the pages of the website at the disputed domain name to attract users. The Complainant and the Respondent are not competitors and/or the disputed domain name was not registered by the Respondent in the first place in order to undermine the business of the Complainant. The Respondent has no intentions or plans to use the intellectual property of the Complainant or any third parties who have declared their intellectual property in accordance with applicable Ukrainian law.
6. Discussion and Findings A. Language of ProceedingsThe language of the Registration Agreement for the disputed domain name is Ukrainian. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
In the present case both parties made their initial filings in English as the most convenient language. Thus, the Panel finds that it is appropriate to exercise its discretion for the proceedings to be conducted in English.
B. Identical or Confusingly SimilarAccording to section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. The Panel finds that in the present case the Complainant has rights in its registered trademarks, while absence of respective trademark registration in particular in Ukraine is not relevant.
According to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant's trademark.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the addition of a hyphen and geographical term "Ukraine" do not prevent finding of confusing similarity.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The Complainant contends that the website at the disputed domain name was used as the platform performing services to passengers and drivers under the DIDI mark as evidenced by the provided notarized copy of the website. The Complainant also contends that the website contained a link to the official website of the Complainant. The Respondent contends it is not correct, since the website at the disputed domain name is for informational purposes only, i.e.,it contains information and links to third party resources, but does not offer services. Also, none of the ever existing pages of the website at the disputed domain name had redirection to the Complainant's website. Having considered the provided arguments and evidence, and having reviewed archived pages of the website available at the Internet archive " www.archive.org" the Panel finds that the Respondent's contention is not credible, and the website at the disputed domain name indeed was used as an imitation of the Complainant's platform targeting Ukrainian market making the Internet users believe that they actually access the Complainant’s local website. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598, Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211).
Noting the high risk of implied affiliation between the disputed domain name and the confusingly similar famous trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,WIPO Case No. D2019-2897).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe Respondent’s use of the disputed domain name to purport to offer the Complainant’s services shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0 the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. The Panel finds that these criteria apply in the present case and the Respondent is using the disputed domain name in bad faith.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Even if it had not been used in such manner or used at all, the close implication of affiliation (the mark plus a geographical term) would support the same finding of bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 disputed domain name,
Taras Kyslyy
Sole Panelist
Date: December 13, 2021