Alibaba Group Holding Limited v. YINGFENG WANG
Claim Number: FA1407001568531
Complainant is Alibaba Group Holding Limited (“Complainant”), represented by Mayer Brown, Hong Kong. Respondent is YINGFENG WANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alibaba.us>, registered with UdomainName.com LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2014; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2014.
On July 14, 2014, UdomainName.com LLC confirmed by e-mail to the National Arbitration Forum that the <alibaba.us> domain name is registered with UdomainName.com LLC and that Respondent is the current registrant of the name. UdomainName.com LLC has verified that Respondent is bound by the UdomainName.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2014 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@alibaba.us. Also on July 15, 2014, the 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 response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 USTLD Policy, USTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Alibaba Group Holding Limited, operates its business through a number of subsidiaries and affiliates (“Alibaba Group”). Complainant operates two online business-to-business marketplaces under the ALIBABA mark. Complainant runs its business through the <alibaba.com> domain name, where it offers business management software and Internet infrastructure services targeting small businesses across China and incubates e-commerce talent for Chinese small businesses. Complainant registered the ALIBABA mark in numerous countries around the world, including the following:
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,579,498 registered June 11, 2002); The State Administration of Industry and Commerce (“SAIC”) (Reg. no. 3,068,458 registered April 28, 2003); Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA594225 registered November 6, 2003); and European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 004,534,319 registered August 2, 2006).
Respondent’s <alibaba.us> domain name is identical to Complainant’s ALIBABA mark. Respondent’s <alibaba.us> domain name features Complainant’s mark in its entirety with the addition of the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <alibaba.us> domain name. Respondent registered the <alibaba.us> domain name on July 6, 2009, ten years after Complainant’s first registration for the ALIBABA mark. Complainant has not licensed, consented to or otherwise authorized the Respondent’s use of the Alibaba Trademarks. Respondent uses the disputed domain name to resolve to a forum, displaying numerous blog posts that promote and include links to other businesses, some of which are competitors of Complainant. Respondent also features the link “Chinese Tea” which leads to Complainant’s Online store on Complainant’s AliExpress Marketplace. Complainant presumes that Respondent receives pay-per-click fees from the third-party links displayed on Respondent’s resolving website.
Respondent registered or is using the <alibaba.us> domain name in bad faith. Respondent’s use of the disputed domain name disrupts Complainant’s business by redirecting internet users away from Complainant’s business and to Respondent’s resolving website displaying links that compete with Complainant. Respondent uses the disputed domain name to resolve to a website that creates a false association with Complainant in order to draw more Internet users to Respondent’s websites. Complainant alleges that Respondent collects pay-per-click revenue through the use of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the ALIBABA mark when Respondent registered the <alibaba.us> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Alibaba Group Holding Limited, operates its business through a number of subsidiaries and affiliates (“Alibaba Group”). Complainant operates two online business-to-business marketplaces under the ALIBABA mark. Complainant runs its business through the <alibaba.com> domain name, where it offers business management software and Internet infrastructure services targeting small businesses across China and incubates e-commerce talent for Chinese small businesses. Complainant registered the ALIBABA mark in numerous countries around the world, including the following:
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,579,498 registered June 11, 2002); The State Administration of Industry and Commerce (“SAIC”) (Reg. no. 3,068,458 registered April 28, 2003); Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA594225 registered November 6, 2003); and European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 004,534,319 registered August 2, 2006).
Respondent, YINGFENG WANG, registered the <alibaba.us> domain name on July 6, 2014. Respondent uses the disputed domain name to resolve to a forum, displaying numerous blog posts that promote and include links to other businesses, some of which are competitors of Complainant.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (the Complainant had sufficiently established rights in the HP mark through its numerous registrations with many governmental trademark authorities).
Respondent’s <alibaba.us> domain name is identical to Complainant’s ALIBABA mark. Respondent’s <alibaba.us> domain name features Complainant’s mark in its entirety with the addition of the ccTLD “.us.”
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <alibaba.us> domain name. Therefore, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has no rights or legitimate interests in the <alibaba.us> domain name under Policy ¶ 4(c)(iii). Respondent registered the <alibaba.us> domain name on July 6, 2009, ten years after Complainant’s first registration for the ALIBABA mark. Complainant has not licensed, consented to, or otherwise authorized the Respondent’s use of the ALIBABA trademarks. Respondent is not commonly known by the <alibaba.us> domain name. The WHOIS information for the disputed domain name lists “Yingfeng Want” as registrant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <alibaba.us> domain name under Policy ¶¶ 4(c)(ii) or 4(c)(iv). Respondent uses the disputed domain name to resolve to a forum, displaying numerous blog posts that promote and include links to other businesses, some of which are competitors of Complainant. Respondent also features the link “Chinese Tea” which leads to Complainant’s Online store on Complainant’s AliExpress Marketplace. Respondent presumably receives pay-per-click fees from the third-party links displayed on Respondent’s resolving website. Using a disputed domain name to compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (finding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name to offer advertisements and information about Complainant’s alleged competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent registered or is using the <alibaba.us> domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business by redirecting internet users away from Complainant’s business and to Respondent’s resolving website displaying links that compete with Complainant. The registration of domain names that are identical to complainants’ marks, for the purpose of linking to the websites of complainants’ competitors, is bad faith registration and use under Policy ¶ 4(b)(iii). See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant’s marks and commercially benefitting from that confusion. Respondent’s resolving websites also features Complainant’s marks as well as links to Complainant’s official websites. Respondent presumably collects pay-per-click revenue through the use of the disputed domain name. The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant’s rights in the ALIBABA mark when Respondent registered the <alibaba.us> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the USTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alibaba.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 21, 2014
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