The Complainant is Udacity, Inc. of Mountain View, California, United States of America ("United States"), represented by O'Melveny & Myers, LLP, United States.
The Respondent is Shenhuimin of Tangshan, China, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with Ourdomains Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2015. On July 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 17, 2015.
The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2015. The Response was filed with the Center on August 8, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on August 31, 2015. 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.
According to the WhoIs information, at the date when the Complainant initiated this administrative proceeding (i.e., July 8, 2015), the registrant of the disputed domain names was Ming Li of Cupertino, California, United States. On July 9, 2015, after the Complainant had served the initial complaint on him, Ming Li transferred the disputed domain names to the present Respondent. This occurred despite a "cease and desist" letter having been set to Ming Li by the Complainant on June 17, 2015. The Registrar was notified of the proceeding before the transfer took place but apparently did nothing to stop the transfer.
The amended Complaint named Ming Li as a Respondent. However, since the disputed domain names are now registered in the name of Shenhuimin, he will be referred to as the Respondent in this decision. 4. Factual Background
The Complainant, founded in 2011, is a leading provider of online higher education. Its courses, designed in tandem with Google, Facebook and other leading players in the Internet world, have been offered as online university courses for the last three years.
The Complainant has trademark registrations for UDACITY registered and used in the United States, Canada, the European Union, and China. The marks are used in conjunction with educational university-level courses. The Complainant owns the domain name which is its prime point of contact with its many customers throughout the world. The Complainant has pending trademark registration applications in a variety of countries. It also claims common law trademark rights in yet more countries.
The Complainant has used the mark UDACITY since 2002. It has received much media attention for its success and has attracted considerable new venture capital.
The Complainant gave neither the present Respondent nor Ming Li any authority to reflect its trademark in the disputed domain names.
The disputed domain names do not presently resolve to any website and were registered to the present Respondent after the Complainant, through an intermediary, had attempted to purchase other passively held domain names incorporating "udacity" over a period from May 23, 2015 to June 11, 2015. On May 28, 2015, Ming Li said that the price for five domain names which incorporated "udacity" (including the two disputed domain names) would be USD 5 million. 5. Parties' Contentions A. Complainant
The disputed domain names are identical to the Complainant's trademarks.
The Respondent has no rights or legitimate interests in the disputed domain names such as would permit him to reflect the Complainant's trademarks therein. None of the situations in Paragraph 4(c) of the Policy apply to the Respondent.
The passive holding of the disputed domain names indicates bad faith registration and use. Bad faith is shown also by the "cyberflight" of the disputed domain names when Ming Li transferred the disputed domain names to the Respondent after he and the Registrar had received notice of the pending administrative proceeding. See British Broadcasting Corporation v. Data Art Corporation / Stoneybrook,WIPO Case No. D2000-0683 (the "BBC decision").
The Respondent must have chosen the disputed domain names with the intention of misleading Internet users by falsely suggesting an association with the Complainant. The Respondent acquired the disputed domain names with the sole purpose of selling them to the Complainant. The Respondent must have been aware of the Complainant's trademarks at the time he acquired the disputed domain names from Ming Li. B. Respondent
The Respondent purchased six domain names from Ming Li. Two domains, and were purchased on September 20, 2012 and November 8, 2012 respectively – earlier than the publication date of the Complainant's trademark – viz. September 6, 2013. The disputed domain names were registered on the basis of the other four domain names acquired from Ming Li which all included "Udacity" and which all had a ".cn" suffix.
Because the UDACITY trademarks are not owned by the Complainant in China, the trademarks are unable to be "linked" to the Complainant. Therefore the disputed domain names are not confusingly similar to the Complainant's Chinese trademarks which are general in China without any determinative features. The Chinese Trademark Office does not allow the UDACITY marks to be registered in the same class. Therefore, consumers would not be misled. Even an identical trademark would not be deemed confusingly similar to the Complainant's trademark.
The Respondent has rights by virtue of his purchase of four udacity domain names with a ".cn" suffix.
The Respondent owns a house decoration company and the and domains are used to promote the business as well as the disputed domain names.
The Respondent loves the housing style in Uda City in Japan and he wants to promote his business similar to the housing style of Uda City. That is why he purchased the disputed domain names.
He has not been allowed to put content on websites accessed by the disputed domain names since it takes some time to fix the technical problem of broadcasting live shows online.
The Respondent purchased the disputed domain names in good faith and is not meaning to confuse consumers. He has never contacted the Complainant to offer the disputed domain names for sale. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
The disputed domain names are identical to the Complainant's registered trademarks. It does not matter where the trademarks are registered or for what class of goods and services. It is sufficient that the Complainant owns a trademark. The Respondent's contentions in this regard are quite wrong.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant gave the Respondent no right to reflect its trademark in the disputed domain names.
It is therefore for the Respondent to show that he comes within one of the situations envisaged by paragraph 4(c) of the Policy, or that there exists some other basis on which to find his rights or legitimate interests to the disputed domain names.
There is no evidence that the Respondent is known by the disputed domain names. Nor is there any evidence other than the Respondent's assertions to show that before he had notice of the proceedings the disputed domain names were being used or demonstrable preparations for use had been made, in connection with the bona fide offering of goods or services.
The disputed domain names are being passively held. The Respondent has provided no evidence to support his allegations that he runs a home decoration business and wants to use the disputed domain names in connection with that business. The onus of proof that he comes within paragraph 4(c) of the Policy rests with him. By his failure to supply any evidence in support of his contentions, he has failed to discharge the onus.
Underlying the enquiry under both this criterion of the Policy and also the good faith criterion is the action of cyberflight which occurred when the disputed domain names were transferred after Ming Li had notion of these proceedings. See the BBC decision, where it was said:
"It would be unjust to the complainant to allow [the respondent to transfer the disputed domain name after notice of the complaint to the respondent but before official commencement of the proceeding] to impede the determination of the complaint. Accordingly, the panel finds the change in registrant does not affect this proceeding and the panel will determine the complaint on the evidence as a proceeding properly brought by the complainant against the respondent.".
Other UDRP cases such as Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, are to similar effect. According to the BBC decision which this Panel adopts, the present Respondent has no rights. He acquired the disputed domain name from Mi Ling who had negotiations to sell the disputed domain names to the Complainant at a huge price. Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
The Complainant notified Ming Li of the initial Complaint on July 8, 2015 at 11.01 p.m. GMT and the Registrar on July 8, 2015 at 11.02 p.m. GMT. (See Annexes [K] & [L].) The Complainant then filed the initial Complaint with the Center on July 8, 2015 at 11.29 p.m. GMT and the Center issued its Acknowledgement of Receipt of Complaint on July 9, 2015 at 1:56 p.m. GMT. (See Annexes [M] &[N].) Ming Li subsequently transferred the disputed domain names to the Respondent on July 9, 2015 at 8.31 p.m. GMT. (See Annex [B].) Because the present administrative proceeding was pending when the Ming Li transferred the disputed domain names, the transfer violated Paragraph 8(a) of the Policy and granted no rights in the disputed domain names to the Second Respondent." C. Registered and Used in Bad Faith
A conclusion of bad faith registration and use is inevitable in view of the "cyberflight". The transfer from Ming Li to the present Respondent, coming so soon after Ming Li tried to sell the disputed domain names for an exorbitant amount to the Complainant, generates grave suspicion as to the bona fides of the transfers to the present Respondent. The disputed domain names will only confuse Internet users into thinking that the Respondent has some association with the Complainant. It is noteworthy that the Complainant's trademark is registered in China where the Respondent is said to reside.
The Respondent should have been aware of the Complainant's trademarks. His rather fanciful reference to the Japanese city of Uda and his vague mention of a house decoration business does little to enhance confidence in his protestation of innocent acquisition of the dispute domain names. Bad faith is clearly evident from the "cyberflight" incident. 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 disputed domain names, and be transferred to the Complainant.
Sir Ian Barker
Sole Panelist
Date: September 17, 2015
Full & Egal Universal Law Academy