The Complainant is Oaktree Capital Management, L.P. of Los Angeles, California, United States of America ("United States"), represented by Bird & Bird LLP, China.
The Respondent is Jason Zou of Beijing, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corporation (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 3, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 5, 2017, 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 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 January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. Upon the Respondent's request, the Response due date was extended to February 3, 2017, and then February 6, 2017. The Response was filed with the Center on February 8, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on February 13, 2017. 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 part of the Oaktree Group, an investment management firm that provides investment products and services to some of the largest institutional investors in the world. The Complainant's parent company Oaktree Capital Group, LLC was listed on the New York Stock Exchange in April, 2012. The Complainant is the registered owner of multiple registrations of various trademarks, including United States trademark registrations numbers 2951009 and 2951010 for OAKTREE and OAKTREE CAPITAL MANAGEMENT, respectively, both registered from May 17, 2005 and both specifying financial analysis and consultation and investment management services in class 36; and Hong Kong trademark registration number 300810666 for OAKTREE, registered from February 6, 2007, specifying financial services in class 36. The Complainant owns other trademarks registered later, including Chinese trademark registrations numbers 15296870 and 15296871, both for OAKTREE, registered from October 21, 2015 and specifying services in class 36. The Complainant is also the registrant of multiple domain names, including created on March 26, 1999, which it uses in connection with its official website to provide information about itself and its services.
The Respondent is an individual located in Beijing, China. He is the registrant of the disputed domain name, which was created on August 26, 2013. On September 2, 2013, the Respondent registered a Chinese company named 北京橡树资本管理有限公司 (Beijing Oaktree Capital Management Limited Company). The Respondent is the legal representative, executive director, manager and shareholder of that company. There is one other shareholder, a Ms. Pei. On November 18, 2013, the Respondent connected the disputed domain name to his website. On February 17, 2014, March 18, 2015 and December 3, 2015, respectively, that company filed Chinese trademark applications numbers 14029206, 16514199 and 18507591, respectively, for the trademarks 橡树资本 (Oaktree Capital), 橡树资本OAKTREE CAPITAL and 橡树资本 and logo, all in class 36. None of those applications has been accepted.
On March 27, 2014, the Respondent registered a Hong Kong company named Oaktree Capital (China) Company Limited (橡树资本(中国)有限公司). On March 11, 2015, the Hong Kong Companies Registrar issued a direction that the company change its name because it was too like that of the Complainant's associated company Oaktree Capital (Hong Kong) Limited. The Respondent failed to comply with that direction and, on June 22, 2015, the Registrar advised that it had changed the company's name to its company number.
On September 17, 2014, the Respondent registered a Chinese company named 橡树资本有限公司 (Oaktree Capital Corporation Limited). On January 28, 2016, that company filed Chinese trademark applications numbers 19013813 and 19013815 for OAKTREE CAPITAL in classes 36 and 35, respectively. Both those applications are currently awaiting review after rejection.
The disputed domain name currently resolves to a website in Chinese and in English for Oaktree Capital Corporation Limited, which is described as an alternative investment company focused on opportunities in the global emerging markets with a presence in Beijing, Hong Kong, Luxembourg, Johannesburg and Sao Paulo. The website does not identify any individual who works at the company, other than Ms. Pei. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The suffix ".cc" is to be disregarded as it is non-descriptive and merely instrumental for registration on the Internet. The disputed domain name wholly incorporates the Complainant's OAKTREE mark. It also incorporates the word "capital" which is identical to an element of the OAKTREE CAPITAL MANAGEMENT mark. The disputed domain name, excluding the suffix, is identical to the Complainant's official domain name in its entirety.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered later than the earliest registrations of the OAKTREE marks. The Respondent should have been well aware of the Complainant as a result of its prior registration and extensive use of its OAKTREE marks for providing financial services for many years. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name. It is implausible that the disputed domain name was selected for any other reason than for commercial gain through misleadingly diverting consumers to the disputed domain name, particularly since the Respondent's website offers similar services to those specified in the Complainant's OAKTREE trademark registrations.
The disputed domain name was registered and is being used in bad faith. The term "oaktree" is a coined word not a common word. Given the history and reputation of the Oaktree Group, and considering the fact that the Respondent operates in a similar industry as the Complainant, it is difficult to conceive that the Respondent had never heard about the Complainant's OAKTREE marks when it registered the disputed domain name. The Respondent intentionally registered the disputed domain name, which is a combination of the OAKTREE trademarks and the word "capital", which is descriptive of the Complainant's services, to trade off the reputation of the Complainant and create a likelihood of confusion with the Complainant's OAKTREE marks as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name. The timing of the registration also supports a finding of bad faith because the disputed domain name is identical to the Complainant's official website address "www." and was registered later. B. Respondent
The disputed domain name is not confusingly similar to a trademark in which the Complainant has rights. At the time that the Respondent registered and used the disputed domain name, the Complainant had no relevant trademark rights in China. According to the first-in-time principle of the Chinese Trademark Law, the Respondent enjoys priority. The disputed domain name was registered and first used in 2013 but the Complainant did not obtain registration of its trademark in China until 2015. Of the Complainant's 29 trademark registrations worldwide, 20 were not registered until 2014 or 2015. The Respondent's company Beijing Oaktree Capital Management Limited Company was founded in 2013 and its official website began operation in 2013. At that time, the Complainant's Chinese office was just staffed by a telephone operator and it was not until later, from 2014, that the Complainant launched an online public relations campaign in mainland China. Therefore, the Respondent had no intention to register a domain name confusingly similar to a trademark in which the Complainant had rights.
The domain suffix ".cc" cannot be disregarded because it distinguishes the disputed domain name from the Complainant's trademark. Domain names with different suffixes have different meanings. The suffix ".cc" can be understood to mean "Chinese Company", which is why it is so popular in China, surpassed only by ".com" and ".cn". The Complainant claims that after registering it has rights to "oaktree" in all other top-level domains, which is nonsense.
The disputed domain name includes two elements, "Oaktree" and "Capital" which is an abbreviation of the company name "Beijing Oaktree Capital Management Limited Company". It is customary in Chinese to abbreviate names to "brand + industry". This distinguishes the disputed domain name from the Complainant's trademark. Further, the disputed domain name as a whole is not the same as the Complainant's official website domain name, as the suffix is different.
The Respondent has rights and legitimate interests in the disputed domain name. The Respondent's rights through prior use of the disputed domain name are legally guaranteed under Article 51 of the Chinese Trademark Law. Prior to receiving notice of the Complaint, the Respondent was using the disputed domain name in connection with a bona fide offering of goods or services. On November 18, 2013, the Respondent obtained certification from the Chinese Ministry of Industry and Information Technology domain name information management system and has used the disputed domain name in connection with its website for over three years up to the present. The Complainant only obtained its Chinese trademark rights two years ago. The Respondent registered Beijing Oaktree Capital Management Limited Company with the Beijing Administration of Industry and Commerce in 2013 and Oaktree Capital Limited Company with the State Administration of Industry and Commerce in 2014 to provide honest and trustworthy capital market services and he has never been subject to any regulatory penalties. The Respondent and its company team through their professional attitude rely on their own efforts to create their own brand's reputation and not through deliberate confusion or imitation. The Respondent clarifies to those who mistakenly believe that the Respondent is the Complainant's user that there is no connection between them and even helps enquirers locate the Complainant without any intention to confuse them. The Respondent has no intention for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. He does not mislead consumers or divert them to its website.
The Respondent's business has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark rights. The Respondent needs no permission or authorization from the Complainant. The Respondent's Oaktree Capital is a leader in China in alternative investment and has acquired considerable influence and visibility in the sector. Its website is included in the search results of different search engines in China and abroad, it has been imitated and it is widely known. The Respondent has also applied for relevant Chinese trademarks since 2014, which are currently under judicial review. If the applications are successful, the Respondent will also have trademark rights.
The disputed domain name was not registered or used in bad faith. Oaktree Capital is an independent investment company set up by a group of post-80s young people in China to focus on special investment opportunities in emerging markets around the world. It aimed to build a well-known brand in domestic alternative investment and chose its company name without any intention to imitate others. The disputed domain name is an English translation of a customary Chinese abbreviation of the company's name. Before the Respondent established its company in 2013, the Complainant had no reputation in mainland China. All Internet search results regarding the Complainant basically date from 2014 and the Complainant was not as well-known as it says. When the Respondent chose its company's Chinese and English names in 2013, it did not know of the Complainant on the other side of the Pacific. At the time a search of the Chinese trademark register did not reveal any relevant registration. As the Respondent's company grew, it discovered people online imitating the American Oaktree Capital and it received emails due to the similarity of its name. The Respondent replied to victims in a timely manner by mail and telephone and published a statement on its website to warn Internet users against deception.
It was quite normal that the Respondent registered a company in Hong Kong with the same name as its company in mainland China. In any case, the Hong Kong company to which the Complainant objected had no operations and therefore cannot constitute malicious use.
The Respondent did not register the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or its competitor for valuable consideration but rather for the purpose of operating and shaping the Chinese Oaktree Capital brand. The Respondent has not registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Respondent is not competing with the Complainant or the Complainant's domain name for the purpose of disrupting the Complainant's business. On the contrary, it has helped the Complainant by resolving some of the confusion. The disputed domain name is not intended to create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of a product on that website.
The Respondent requests that the Panel make a determination of reverse domain name hijacking. With the expansion of China's global economic influence, more and more foreign companies have begun to pay attention to the Chinese market. The Complainant's trademark registration and online public relations campaign after the establishment of the Respondent's company in 2013 show that that the Complainant is highly concerned about the Respondent's increasing influence. 6. Discussion and Findings 6.1. Late Filing
The Respondent made a late filing of its Response despite having received two extensions of the due date. He explained that the Response was just over a day late due to the fact that he is self-represented and not a professional.
The Panel has a discretion to admit a late Response as part of its general powers under paragraph 10 of the Rules (a) to conduct the administrative proceeding in such a manner as it considers appropriate in accordance with the Policy and Rules; (b) to ensure that each Party is given a fair opportunity to present its case; and (c) to ensure that the administrative proceeding takes place with due expedition.
In the present case, the Panel notes that the late Response contains information regarding the Respondent's use of the disputed domain name and actual consumer confusion, which are issues fundamental to the dispute. Further, admission of the late Response will not prejudice either party or substantially delay the proceedings. In these circumstances, the Panel will exercise its discretion to accept the late Response. 6.2 Language of the Proceeding
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name resolves to a website that has both English and Chinese versions which clearly demonstrates that the Respondent is familiar with the English language and will suffer no prejudice if the proceedings are conducted in English. In addition, the website states that the Respondent has set up representative offices around the world which suggests that it is fully familiar with English.
The Respondent requests that the language of the proceeding be Chinese. Its main arguments are that the language of the Registration Agreement is Chinese, that the parties have not agreed to conduct the proceeding in any other language nor has the Panel determined otherwise. No rule would support the use of English, which would be manifestly unfair.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and the Response was filed in Chinese. The Panel notes that the website to which the disputed domain name resolves has an English version, from which it is reasonable to infer that the Respondent is able to communicate in that language. This means that English is a language that both parties understand. The disputed domain name is also in English. Further, the Response is detailed and responds to the Complainant's contentions, which indicates that the Respondent has suffered no prejudice in the preparation of his defence. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. As the Center has appointed a panel familiar with both languages, the Panel considers that requiring the Respondent to translate the Response into English would also create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but the Panel will accept the Response filed in Chinese. 6.3 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the OAKTREE and OAKTREE CAPITAL MANAGEMENT trademarks. The registrations of these trademarks in the United States (and as regards OAKTREE, in Hong Kong, China as well) predate the registration of the disputed domain name.
The disputed domain name wholly incorporates the Complainant's OAKTREE trademark as its first and dominant element.
The disputed domain name also includes the word "capital" which is a dictionary word that is descriptive of the services offered by the Complainant. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's OAKTREE trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. Further, the word "capital" is also part of the Complainant's OAKTREE CAPITAL MANAGEMENT trademark.
The only other element in the disputed domain name is the country or territory code Top-Level Domain ("ccTLD") suffix of the Cocos Islands ".cc". A ccTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Vodafone Group PLC v. Wikipiedra S.L. / Jonathan Palma Ruz,WIPO Case No. DCC2010‑0006. Even if this particular ccTLD were interpreted to refer to "Chinese company", as the Respondent argues, the Panel finds that it could still be understood as the website address of a Chinese-registered affiliate of the Complainant. Therefore, it does not dispel confusing similarity with the Complainant's trademark.
Consequently, the only distinctive element of the disputed domain name is the Complainant's OAKTREE trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's OAKTREE trademark. The Complainant informs the Panel that there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name. The Respondent replies that it does not need any such permission or authorization.
As regards the first circumstance above, the disputed domain name is being used with a website that provides information about the Respondent's company and its financial services. The question is whether that offering of services is bona fide. The Respondent has not obtained registration of any relevant trademark. Although the Respondent registered the disputed domain name before the Complainant registered its Chinese trademarks, the mere registration of a domain name does not establish rights or legitimate interests for the purposes of the Policy. Otherwise every registrant would have a valid defence and no complaint of abusive registration could ever succeed. See Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. Nor is the term "oaktree" descriptive of the purpose to which the Respondent puts the disputed domain name. He does not, for example, sell oak trees. The Respondent explains that the disputed domain name is an abbreviated form of the English translation of his company name, but he does not provide a complete or plausible explanation as to why he chose that company name. Accordingly, the Panel does not find that the Respondent's use is in connection with a bona fide offering of services within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is Zou Zhixun or Jason Zou, not "Oaktree Capital". Although the Respondent's company names include the words 橡树资本, meaning "Oaktree Capital", the registrant of the disputed domain name is Mr. Zou himself, who registered the disputed domain name before his companies existed. In any case, there is no evidence that the Respondent's companies are commonly known at all. There is only evidence of its registration and online search results for the Respondent's website itself. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a commercial website. Accordingly, the Panel does not find that the Respondent's use falls within the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to rebut that case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Respondent registered the disputed domain name in 2013, after the Complainant registered its trademarks in the United States and Hong Kong, China but before the Complainant registered its trademarks in mainland China, where the Respondent is located. The question is whether the Respondent knew of the Complainant's trademark at that time. The Panel notes that the disputed domain name not only incorporates the Complainant's OAKTREE trademark but also the first two words of the Complainant's OAKTREE CAPITAL MANAGEMENT trademark and corporate name. The disputed domain name is also identical to the Complainant's prior registered official website address "www.", but for the TLD suffix. While the disputed domain name is an abbreviation of the English translation of the Respondent's company name, that company name is itself a translation of the Complainant's corporate name preceded by the word "Beijing". The Complainant's Oaktree Group has been operating since 1995 and its parent company was listed on the New York Stock Exchange in 2012. The Respondent operates in the same sector, including in Hong Kong and overseas and with an English version of his website, and he could be expected to have been aware of the Complainant's trademark at the time that he registered the disputed domain name. Although Internet searches for "Oaktree Capital" today may retrieve results for the Complainant that were only created more recently, they do not indicate what results would have been generated by that search term in 2013. The word "oaktree" is not descriptive of financial services and the Respondent provides only an incomplete and implausible explanation for his choice of this word in his company name, namely that he wanted his company to thrive like trees. In these circumstances, the Panel is persuaded, on the balance of probabilities, that the Respondent was aware of the Complainant's OAKTREE trademark at the time that he registered the disputed domain name and deliberately chose to include it in the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant's OAKTREE trademark, in connection with a website for an investment advisor. The disputed domain name operates by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website. This use is intentional and for commercial gain. Although the Respondent has provided evidence that his company warned Internet users in 2015 that other organizations were using the company's name to promote financial products and that his company had no relationship with those organizations, this warning was only given to persons who had sent an email enquiry or visible to persons who had already been diverted to his company's website. See Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869. In any case, the warning made no express reference to the Complainant and it is not currently displayed on the website homepage, if it is displayed at all.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking
For the above reasons, the Panel does not make a finding of reverse domain name hijacking. 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 name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: February 19, 2017
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