The Complainant is Alibaba Group Holding Limited, Cayman Islands, United Kingdom, represented by ELLALAN, China.
The Respondent is Wang Zhi Fa, China.
2. The Domain Name and RegistryThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 7, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On December 8, 2021, the Registry transmitted by email to the Center its verification response disclosing 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 December 17, 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 on December 23, 2021.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Domain Name Dispute Resolution Policy for Domain Names registered with NIC.TM (the “Policy”), the Rules for Domain Name Dispute Resolution for.TM Names (the “Rules of Procedure”), and the WIPO Arbitration and Mediation Center Supplemental Rules for Domain Name Dispute Resolution Policy for .TM Names (the “Supplemental Rules”).
In accordance with the Rules of Procedure, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2021. In accordance with the Rules of Procedure, paragraph 5(a), the due date for Response was January 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 16, 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 of Procedure, paragraph 7.
4. Factual BackgroundThe Complainant and its affiliates (Alibaba Group) provide e-commerce (wholesale and retail), online payment services and cloud computing and other online services. The Complainant was established in 1999. The Alibaba Group operates AliExpress platform “www.aliexpress.com” which is a market place for consumers from around the world. The Complainant has registered more than 100 domain names containing ALIEXPRESS. The Complainant owns trademark registrations for the trademark ALIEXPRESS in many countries such as;
- United Kingdom trademark registration number 00908508566 registered on March 8, 2010
- Australian trademark registration number 1314820 registered on August 11, 2009.
The Respondent registered the disputed domain name on May 30, 2014.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its entirety. The country code Top-Level Domain (“ccTLD”) “.tm” is insufficient to prevent a finding of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name four years after the Complainant’s first use of the trademark in 2010. The first registration of the trademark by the Complainant was in 2009. The Respondent is not authorized by the Complainant to use its trademark. The Respondent does not hold any trademark registration nor domain names incorporating ALIEXPRESS.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent knew of the Complainant’s trademark as it is well-known. There is no bona fide use as the site was not found. There’s no legitimate noncommercial or fair use either as there’s no bona fide offering of goods or services. The disputed domain name has been inactive although registered 7 years ago in 2014. The Panel should bear in mind the strong reputation and substantial use of the Complainant’s trademark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for the trademark ALIEXPRESS. The Panel is satisfied that the Complainant has established its ownership of the trademark ALIEXPRESS. The disputed domain name incorporates the Complainant’s trademarks ALIEXPRESS in its entirety. The ccTLD “.tm” is typically ignored when assessing identity or confusing similarity as established by prior decisions (see e.g. MB97 v. Atageldi Muhammedov,
WIPO Case No. DTM2020-0001).
Consequently, the Panel finds that the disputed domain name is identical to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark, that the Respondent is not associated with the trademark ALIEXPRESS, and that the Respondent does not hold any trademark registrations. The Panel finds that the Complainant has established a prima facie case. Therefore, it is for the Respondent to show evidence that it has rights or legitimate interests. The Respondent has not answered to the Complaint, and has not provided any evidence of rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithThe Respondent must have been aware of the Complainant’s trademark for a number of reasons; 1. The Ali Baba Group is known globally. 2. A simple Google search shows the Complainant’s trademark ALI EXPRESS and the platform operating under that trademark. 3. The disputed domain name was registered some years after the registration and use of the trademark ALIEXPRESS by the Complainant, being the disputed domain name identical to the ALIEXPRESS trademark.
Given the above, the Panel believes that the Respondent has registered the disputed domain name in order to trade off the reputation of the Complainant’s trademark. In addition, the passive holding of the disputed domain name does not prevent a finding of bad faith under paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(h) of the Policy and 15 of the Rules of Procedure, the Panel orders that the disputed domain name
Nayiri Boghossian
Sole Panelist
Date: February 25, 2022