Addepar, Inc. v. Ceng Hui Kai
Claim Number: FA2112001976353
Complainant is Addepar, Inc. (“Complainant”), represented by Jessica Sganga of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Ceng Hui Kai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addepar.cc>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2021; the Forum received payment on December 7, 2021. The Complaint was received in English.
On December 10, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <addepar.cc> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 15, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of January 4, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@addepar.cc. Also on December 15, 2021, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no sufficient response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any sufficient response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends the proceedings should be conducted in English since Respondent targets a company based in the United States, uses Anglican characters and an English word mark in the disputed domain name, and incorporates a country code top-level domain (“ccTLD”) that is associated with an Australian territory, where English is the de facto official language. Complainant also points to Respondent’s communications with the Forum via email in which Respondent shows a sufficient mastery of understanding English. Complainant further contends that proceedings not conducted in English would place a substantial burden and additional costs on it essentially slowing the process. The Panel notes that Respondent sent an email communication on December 12, 2021 to the Forum, merely denying Complainant’s assertions and asserts that it is not able to comprehend the English language. Complainant specifically contends that Respondent’s emails to the case coordinator are in English, and while Respondent does claim to use translation software, the emails discuss the various factors of the UDRP analysis and show a sufficient mastery of understanding for the Panel to proceed with the proceeding in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant, Addepar, Inc., offers products and services in the field of wealth and asset management. Complainant claims to have rights in the ADDEPAR mark with the United States Patent and Trademark Office (“USPTO”), among other authorities. The disputed domain name is identical or confusingly similar to Complainant’s ADDEPAR mark because it wholly incorporates Complainant’s mark merely adding the “.cc” ccTLD to form the domain name.
ii) Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not authorized or licensed to use Complainant’s ADDEPAR mark. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent has not made demonstrable preparations to use the domain name.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent does not make active use of the domain name. Respondent’s further bad faith action is indicated through Respondent’s use of a privacy service.
B. Respondent
Respondent did not submit a response. Respondent sent an email communication on December 12, 2021 to the Forum, merely denying Complainant’s assertions and asserts that it is not able to comprehend the English language.
1. The disputed domain name was registered on November 27, 2019.
2. The disputed domain name resolves to an error message that says that the webpage cannot be reached.
3. Complainant has established rights in the ADDEPAR mark based on its trademark registration with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 4,244,422 – Registered on Nov. 20, 2012) and other national trademark authorities.
4. Complainant has established a strong reputation in the marketplace in connection with its high-quality products and services offered under the ADDEPAR marks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a sufficient response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the ADDEPAR mark through its registration with the USPTO and with other authorities. Registration of a mark with multiple authorities is sufficient to establish rights under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Complainant provides copies of its registration in the ADDEPAR mark with authorities including Australia, Brazil, European Union, Hong Kong, and the USPTO (e.g. Reg. No. 4,244,422 – Registered on Nov. 20, 2012). Therefore, the Panel finds that Complainant has rights in the ADDEPAR mark under Policy ¶ 4(a)(i).
Complainant argues that the <addepar.cc> domain name is identical or confusingly similar to Complainant’s ADDEPAR mark because it wholly incorporates the mark while adding in the “.cc” ccTLD. A domain name may be found to be identical to a mark, under Policy ¶ 4(a)(i), despite the mere addition of a ccTLD. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The ccTLD added here is “.cc,” which relates to the Cocos Islands, a territory of Australia. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ADDEPAR mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent does not have any rights or legitimate interests in the disputed domain name. Where a respondent does not provide evidence to the contrary, evidence that a respondent is not commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where the identifying WHOIS information is unrelated to a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information shows “Ceng Hui Kai” as the registrant of the disputed domain name. Furthermore, Complainant asserts Respondent is not authorized or licensed to use Complainant’s ADDEPAR mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent has not made any demonstrable preparations to use the domain name. A domain name may be found not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent has not made active use of a domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel notes that the disputed domain name resolves to an error message that says that the webpage cannot be reached. Therefore, the Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the disputed domain name in bad faith because Respondent has not made active use of the domain name. The Panel recalls that Complainant provides a screenshot showing that the disputed domain name resolves to an error message that says that the webpage cannot be reached.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant has obtained considerable goodwill associated with the ADDEPAR marks as a result of Complainant’s use thereof. In 2018, before the registration of the disputed domain name in 2019, Complainant’s assets had already exceeded US$1 trillion. Complainant has established a strong reputation in the marketplace in connection with its high-quality products and services offered under the ADDEPAR marks. Complainant and ADDEPAR marks, have repeatedly been recognized in publications such as Forbes, Bloomberg, The New York Times, The Huffington Post, and The Wall Street Journal; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith registration and use under Policy paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <addepar.cc> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 11, 2022
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