Twitter, Inc. v. Weiming Yin
Claim Number: FA1410001587007
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Weiming Yin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <twittersdk.com> and <twitsdk.com>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2014; the National Arbitration Forum received payment on October 28, 2014.
On October 29, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <twittersdk.com> and <twitsdk.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 October 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@twittersdk.com, postmaster@twitsdk.com. Also on October 30, 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.
A timely Response was received and determined to be complete on November 17, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on November 19, 2014.
A timely Additional Submission was received from Respondent and determined to be complete on November 20, 2014.
On November 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sebastian M W Hughes 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in 2007 and is the owner of the well-known trade marks TWITTER and TWEET (the “Trade Mark(s)”) used in respect of Complainant’s online messaging service. Complainant has numerous registrations for the Trade Marks worldwide.
The domain names are confusingly similar to the Trade Marks. The domain name <twittersdk.com> contains Complainant’s TWITTER Trade Mark in its entirety, together with the acronym “SDK”, meaning “software development kit” – (software development tools for the creation of software applications). The domain name <twitsdk.com> contains the word “twit”, which is an abbreviation of Complainant’s TWITTER Trade Mark and is confusingly similar to Complainant’s TWEET Trade Mark, together with the same acronym, “SDK”.
Respondent has no rights or legitimate interests in respect of the domain names. The domain names have not been actively used. Respondent is not making a legitimate non-commercial or fair use of the domain names, and is not commonly known by the domain names.
Respondent has registered and used the domain names in bad faith.
Respondent has not been authorised by Complainant to register and use the domain names. Respondent was a registered user of Complainant’s TWITTER services at the time of registration of the domain names. For this reason, and given the notoriety of the Trade Marks, Respondent must have known of Complainant and of its rights in the Trade Marks when Respondent registered the domain names. Respondent’s passive use of the domain names amounts to bad faith registration and use of the domain names.
B. Respondent
Respondent wrote some software code for realtime logging and set up a website under the name GUA GEE (www.guagee.com) in 2009. Respondent registered the domain names for the purpose of sharing tips and articles and making the code written by Respondent for GUA GEE open source.
Respondent was unable to make GUA GEE a success story, so the www.guagee.com website was taken down.
After the development of WEIBO, a popular TWITTER-like website in China, Respondent started writing open source software, in November, 2011, with the intention of making a non-commercial use of the software under the WEIBO platform. Respondent has been working on its open source software for use with WEIBO for 5 years.
C. Additional Submissions
A. Complainant
The Response clearly demonstrates that Respondent is an accomplished web developer. Respondent concedes Respondent’s knowledge of Complainant and of the Trade Marks when the domain names were registered.
In pre-Complaint correspondence, Respondent offered to sell the domain names to Complainant, and rejected Complainant’s offer to buy the domain names for US$500 (claiming the price was not a fair price and was “too cheap for these domain names”). This amounts to further evidence of bad faith.
Respondent’s plan to post a competing SDK code, via the WEIBO microblog, for commercial gain, amounts to further evidence of bad faith registration and use.
B. Respondent
The domain names have been registered for 5 years and Complainant has taken no action until now.
The
new website which the domain names point to is built by WordPress (www.wordpress.com),
a famous blog system, which provide themes everybody can choose.
Complainant has established all the elements entitling it to transfer of the domain names.
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 a 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 is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
The Panel finds that Complainant has rights in the Trade Marks acquired through registration and use which predate the date of registration of the domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
The domain name <twittersdk.com> comprises Complainant’s TWITTER Trade Mark in its entirety together with the acronym “SDK”, meaning “software development kit”. The domain name <twitsdk.com> comprises the word “TWIT”, which is an abbreviation of Complainant’s TWITTER Trade Mark and is a misspelling of Complainant’s TWEET Trade Mark, together with the same acronym “SDK”.
The Panel finds that the addition of the acronym “SDK” does not serve to distinguish the domain names from the Trade Marks in any significant way.
The Panel therefore finds that the domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that Complainant has authorized, licensed, or permitted Respondent to register or use the domain names or to use the Trade Marks. Complainant has prior rights in the Trade Marks which precede Respondent’s registration of the domain names. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain names, and the burden is thus on Respondent to produce evidence to rebut this presumption.
Respondent has failed to show that it has acquired any trade mark rights in respect of the domain names or that the domain names have been used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that Respondent has been commonly known by the domain names.
There has been no evidence adduced to show that Respondent is making a legitimate non-commercial or fair use of the domain names.
Aside from bare assertion, there is no evidence that the domain names have in fact ever been used in respect of Respondent’s now defunct GUA GEE website.
There is also a paucity of evidence to support Respondent’s assertion of its intention (apparently over the past 5 years) to use the domain names in respect of a platform offering fee software code under the WEIBO microblogging service operated in China by a competitor of the Complainant.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the domain names. The Panel therefore finds that Complainant fulfils the second condition of paragraph 4(a) of the Policy.
Given the notoriety of Complainant and the Trade Marks and the fact Respondent concedes it was aware of Complainant and the Trade Marks when it registered the domain names, the Panel has no hesitation in concluding that bad faith use and registration has been made out, in light of Respondent’s failure to make any active use of the domain names in the 5 years since their registration.
The Panel finds further grounds for its finding of bad faith, under paragraph 4(b)(i) of the Policy, by virtue of Respondent’s offer to sell the domain names for a price exceeding Respondent’s reasonable out-of-pocket expenses incurred in registering the domain names.
The Panel notes further that any intended use of the domain names in respect of Respondent’s nascent website offering open source software under the WEIBO microblogging service, would also likely amount to bad faith under paragraph 4(b)(iv) of the Policy, assuming Respondent would be likely to gain revenue (whether by sponsored links or otherwise). The Panel notes however there is insufficient evidence to support such a finding at present, but simply makes this observation in order to address Respondent’s submissions as regards purported lack of bad faith herein.
In all the circumstances, the Panel therefore has no hesitation in finding bad faith registration and use under its general discretion and also under paragraph 4(b)(i) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twittersdk.com> and <twitsdk.com> domain names be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: December 4, 2014
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