ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sonatype, Inc. v. 杨智超Zhi Chao Yang Case No. D2022-3011 1. The Parties The Complainant is Sonatype, Inc., United States of America ("United States"), represented by Mosaic Legal Group, PLLC, United States. The Respondent is 杨智超Zhi Chao Yang, China. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with Cloud Yuqu LLC (the "Registrar"). 3. Procedural History The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 12, 2022. On August 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2022, 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 August 18, 2022, 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 19, 2022. On August 18, 2022, the Center also sent another email communication to the Parties in Chinese and English regarding the language of the proceeding. On August 19, 2022, the Complainant confirmed 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on August 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2022. The Center appointed Karen Fong as the sole panelist in this matter on September 22, 2022. 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. On September 29, 2022, the Complainant submitted a second amended Complaint, requesting the addition of another domain name in the current proceeding. 4. Factual Background The Complainant, a business providing software supply chain management platforms, has been using the trade mark SONATYPE in relation to its goods and services since 2007. The SONATYPE trade mark is registered in the United States. The earliest trade mark registered submitted in evidence is United States Trade Mark SONATYPE, Registration Number 4082404 registered on January 10, 2012 (the "Trade Mark"). The Complainant also has trade mark registrations for SONATYPE NEXUS (United States Registration Number 4400529) and NEXUS REPOSITORY (United States Registration Number 5610037). The Respondent, who is based in China, registered the Domain Name on June 13, 2022. The Domain Name resolves to a pay-per-click ("PPC") webpage with link headings such as: "Devsecops Tools", "Nexus Repository" and "Sonatype Nexus" (the "Website"). These links resolve to third party competitor companies. 5. Parties' Contentions A. Complainant The 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. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General According 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 the 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. page 3 B. Language of the Proceeding The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, 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 as the Complainant, based in the United States, is unable to communicate in Chinese. 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 the Domain Name and the Website are in the English language. The Respondent is a serial cybersquatter (see Section 6.F below) and has been involved in many UDRP cases which have been conducted in English.1 Although the Center has sent the "Language of Proceedings" email and notified the Parties the commencement of administrative proceeding in both Chinese and English, the Respondent has not challenged the Complainant's language request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding 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. In all the circumstances, the Panel determines that English be the language of the proceeding. C. Addition of the Domain Name On September 29, 2022, the Complainant submitted a second amended Complaint, requesting to add the domain name to the current proceeding. It is up to the Panel to determine whether or not to accept the Complainant's request to add the domain name to the Complaint after the Respondent has been notified of the Complaint and the proceeding has formally commenced (see section 4.12.2 of the WIPO Overview 3.0). After carefully looking through the Complainant's request and second amended Complaint, the Panel rejects the Complainant's request for the following reasons: (1) The domain name was registered on June 13, 2022, at the same time as the disputed domain name ; (2) No reason was given by the Complainant why the domain name had not been included in the proceeding in the first place when it could have been; (3) The Complainant is not precluded from filing a separate complaint regarding the domain name ; (4) Section 4.12.2 of the WIPO Overview 3.0 makes it clear that: "Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent's registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition)." There is no evidence that the Respondent is trying to 1 It has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). page 4 frustrate the proceedings. D. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case, the Domain Name consists of a misspelling of the Trade Mark with the "a" and "t" being switched. Section 1.9 of the WIPO Overview 3.0, states that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. In this case, the Trade Mark is clearly recognizable in the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") which in this case is ".com". It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview 3.0). The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. E. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the 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 the 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 a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that the Respondent is not commonly known by the Domain Name. It has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the display of PPC links on the Website does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Name given the revenue the Respondent derives from Internet users misled by the confusingly similar Domain Name. page 5 The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply 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. F. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name given that the Trade Mark has no other meaning other than being the Complainant's company name and Trade Mark, both of which have been used and registered long before the Domain Name. The fact that the PPC link headings also comprise the Complainant's other trade marks also demonstrates the Respondent's knowledge of the Trade Mark. 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." There is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent's choice of the Domain Name are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain Name in bad faith. The Panel also finds that the actual use of the Domain Name is in bad faith. The Website is a PPC site which has been 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 them 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 fact that the Domain Name contains a misspelled version of the Complainant's distinctive Trade Mark. The Respondent employs the reputation of the Trade Mark to mislead users into visiting the Domain Name 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 Respondent's Website is that of or authorised or endorsed by the Complainant. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. The Panel has also noted that a number of UDRP cases concerning other third party brand owners where the Respondent has been the named respondent and those domain names have been ordered to be transferred. These include Syneos Health LLC v. 杨智超 (Zhichao Yang), WIPO Case No. D2021-2731, Granicus, LLC v. 杨智超 (Zhichao Yang), WIPO Case No. D2021-2844, Corning Incorporated v. 杨智超 (Zhichao Yang), WIPO Case No. D2021-4227, CenterPoint Energy, Inc. v. 杨智超 (Zhichao Yang), WIPO Case No. D2021-4046. This is an indication that the Respondent is a serial cybersquatter and is engaged in a pattern of bad faith conduct (section 3.1.2 of the WIPO Overview 3.0). page 6 The Panel finds that the Respondent has registered and used the Domain Name 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 Domain Name be transferred to the Complainant. /Karen Fong/ Karen Fong Sole Panelist Date: October 6, 2022
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