Alibaba Group Holding Limited v. jianliang fei
Claim Number: FA1012001364507
Complainant is Alibaba Group Holding Limited (“Complainant”), represented by Steven P. Hollman of HOGAN LOVELLS US LLP, Washington D.C., USA. Respondent is jianliang fei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alipay.us>, registered with Tucows, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 21, 2010; the Forum received a hard copy of the Complaint on December 30, 2010.
On December 21, 2010, Tucows, Inc. confirmed by e-mail to the Forum that the <alipay.us> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 6, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on January 21, 2011.
Complainant’s Additional Submission was received on January 25, 2011 in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on January 30, 2011 in compliance with Supplemental Rule 7.
On January 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it launched a third-party payment platform at <alipay.com> in 2004, which today has over 470 million users, 50% market share for online payment services, and more than 7 million transactions per day.
Complainant further contends that it owns 37 trademark registrations to the ALIPAY mark with governmental trademark authorities worldwide, including the United States, Hong Kong, the European Union, and the People’s Republic of China.
Complainant contends that Respondent’s use of the Disputed Domain Name is confusingly similar to its ALIPAY mark and the <alipay.com> domain name, and Respondent’s addition of the generic top-level domain (“gTLD”) “.us” to the ALIPAY mark does not make the Disputed Domain Name less confusingly similar. Complainant further contends that gTLDs should be disregarded when determining whether a disputed domain name is identical or confusingly similar to a service mark or trademark.
Complainant further contends that Respondent does not have any rights or legitimate interest in the Disputed Domain Name because, among other reasons: the owner of the Disputed Domain Name, as indicated by the WHOIS, is Jianliang Fei, which does not share any meaning or phonetic similarity with the Disputed Domain Name or the ALIPAY mark; Complainant has not consented to Respondent’s use of the ALIPAY mark; and Complainant has found no evidence that Respondent owns trademark registrations corresponding to the Disputed Domain Name.
Complaint further contends that Respondent registered and used the Disputed Domain Name in bad faith because, among other reasons: Respondent must have been aware of Complainant’s prior interested in the Disputed Domain Name because Respondent is domiciled in China where Complainant’s ALIPAY mark and business conducted thereunder are well known; Respondent continued to operate the Disputed Domain Name after receiving a cease and desist letter from Complainant, to which Respondent did not reply; and Respondent blatantly misappropriated Complainant’s good will in the ALIPAY mark by registering and operating the Disputed Domain Name.
B. Respondent
Respondent contends that the Disputed Domain Name is not identical or confusingly similar because, among other reasons: the use of the gTLD “.us” distinguishes the Disputed Domain Name from Complainant’s ALIPAY mark; the reason many different gTLDs exist is to distinguish domain names and trademarks, therefore they are relevant for determining whether the Disputed Domain Name is identical or confusingly similar to Complainant’s ALIPAY mark; and there are many registered domain names consisting of the term “alipay” followed by a gTLD that are not owned by Complainant.
Respondent further contends that it has rights and legitimate interests in the Disputed Domain Name because, among other reasons: it registered the Disputed Domain Name in the United States on May 2, 2008, almost two years before Complainant registered the ALIPAY mark in the United States; Respondent’s use constitutes noncommercial fair use and a bona fide offering of goods or services because Respondent provides a completely free blog service to users and has received almost no earnings from the sponsored Google Adsense links on the Disputed Domain Name; for more than two years the Disputed Domain Name has created great convenience for its users; and Respondent has included a statement on the website to which the Disputed Domain Name resolves that disclaims any association with Complainant.
Respondent further contends that it has not registered or used the Disputed Domain Name in bad faith because, among other reasons: Respondent named the Disputed Domain Name after its favorite fashion model, Ali Michael; it is a mere coincidence that the Disputed Domain Name is similar to the ALIPAY mark; the Disputed Domain Name contains a statement that disclaims any association with Complainant; there is no connection between Respondent’s free blogging service and Complainant’s third-party online payment platform; and Respondent never intentionally attracted internet users for commercial gain by creating a likelihood of confusion with Complainant’s ALIPAY mark.
C. Additional Submissions
Complainant further contends, among other things that:
While Complainant had not registered the ALIPAY mark in the United States prior to Respondent registering the Disputed Domain Name in the United States, Complainant owned and operated the domain name <alipay.com> for more than four years before Respondent registered the Disputed Domain Name and owned trademark registrations for the ALIPAY mark in 27 countries before Respondent registered the Disputed Domain Name;
It is irrelevant for purposes of the present proceeding that Complainant does not own other registered domain names consisting of the term “alipay”;
Respondent’s is not making a legitimate noncommercial fair use of the Disputed Domain Name because the website to which the Disputed Domain Name resolves includes sponsored advertising links for which Respondent admits to receiving referral fees and it is irrelevant that Respondent claims it has not made significant revenues from these advertisements;
The statement included on the website to which the Disputed Domain Name resolves that disclaims an association with Complainant does not prevent the likelihood of initial confusion with Complainant’s ALIPAY mark, and Respondent only included the disclaimer statement after receiving notice of the present proceedings.
Respondent further contends, among other things, that:
gTLDs are extremely important for determining whether a domain name is identical or confusingly similar, otherwise the existence of many different gTLDs would be unnecessary and, as such, Respondent’s use of “.us” distinguishes the Disputed Domain Name from the ALIPAY mark;
The fact that Complainant does not own other registered domain names consisting of the term “alipay” followed by various gTLDs supports the contention that gTLDs distinguish domain names from trademarks;
The fact that Complainant did not own a United States trademark registration to the ALIPAY mark prior to Respondent registering the Disputed Domain Name in May 2008 is evidence that the ALIPAY mark was not well known in the United States at that time;
Respondent’s failure to generate significant revenue from the Google Adsense sponsored links on the resolving website is evidence that Disputed Domain Name is not confusingly similar;
The lapse of two years between when Complainant said it sent a cease and desist letter and when Complainant initiated the present proceeding is evidence that Complainant’s global business strategy is unclear.
For the reasons set forth below, the Panel finds Complainant has proven that the Disputed Domain Name should be transferred.
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.
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.
The Panel finds that Complainant has established rights to the ALIPAY mark under Policy ¶ 4(a)(i) by its multiple trademark registrations, including registrations with China’s State Intellectual Property Office (Reg. No. 4580577 issued January 21, 2008) and the United States Patent and Trademark Office (Reg. No. 3,761,346 issued March 16, 2010). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding that complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the UDRP ¶ 4(a)(i)).
Respondent appears to contend that its use of the gTLD “.us” inherently distinguishes the Disputed Domain Name from Complainant’s ALIPAY mark, arguing that it would be unnecessary for many different gTLDs to exist unless they were extremely important for distinguishing domain names from trademarks. This argument does not persuade the Panel as to whether the Disputed Domain Name at issue is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Such an inquiry cannot be reduced to a generalization about the effect of different gTLD’s. The Panel finds that the dominent portion of the Disputed Domain Name is “alipay,” which is identical to Complainant’s ALIPAY mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). Cases too numerous to mention, moreover, hold that the use of a gTLD generally does not distinguish a domain name from an otherwise identical trademark.
To the extent that Respondent cites its use of the disclaimer on the resolving website as evidence that the Disputed Domain Name is not identical or confusingly similar to Complainant’s ALIPAY mark, the Panel rejects this argument. A statement on the resolving website that disclaims association with Complainant’s ALIPAY mark or business conducted thereunder does not prevent actionable initial confusion of internet users. See Six Continents Hotels, Inc. v. Hotel Partners of Richmond, D2003-0222 (WIPO May 14, 2003) (“The question arises if the disclaimer of affiliation found on Respondent’s website mitigates the likelihood of confusion. The short answer is that it may to some extent, but actioanble damage is already done in the domain name itself, which will tend to mislead and divert internet users.”).
Both parties addressed the fact that Respondent’s registration of the Disputed Domain Name predates Complainant’s registration of the ALIPAY mark in the United States. However, this issue is of no moment when considering whether the Disputed Domain Name is identical or confusingly similar to Complainant’s ALIPAY mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under [UDRP] ¶ 4(a)(i).”).
Complainant must first make a prima facie case that Respondent lacks rights or 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not known by the Disputed Domain Name, as indicated by the WHOIS information, and Complainant has not authorized Respondent to use the ALIPAY mark. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel finds that Complainant established trademark rights to the ALIPAY mark before Respondent registered the Disputed Domain Name. See Farouk Systems, Inc. v. QYM, D2009-1572 (WIPO Jan. 19, 2010) (“The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by over 9 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.”).
Complainant contends, and Respondent does not deny, that Respondent is not associated with, and does not own, a trademark or service mark that is similar or identical to the Disputed Domain Name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also 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)).
Based on the foregoing, the Panel determines that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Respondent’s primary argument is that its use of the Disputed Domain Name to host a free blogging service constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). However, Complainant contends, and Respondent does not clearly deny, that a significant number of the blog entries at the website to which the Disputed Domain Name resolves are actually click-through advertisements for which Respondent has received some revenue. As such, the Panel finds that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
Respondent contends that it is not responsible for the advertisement blog entries posted by users at the resolving website. The Panel finds, however, that Respondent is, in fact, responsible for the content found on the resolving website under Policy ¶ 4(a)(ii). See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”).
Respondent further contends that its legitimate noncommercial fair use and bona fide offering of goods or services is evidenced by its use of a disclaimer to avoid confusion between the Disputed Domain Name and Complainant’s ALIPAY mark. However, such measures do not prevent the initial confusion of internet users that results from the Disputed Domain Name being identical to the ALIPAY mark. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
As discussed above, Complainant contends, and Respondent does not deny, that the majority of the blog entries posted on the resolving website are click-through advertisements. While Respondent contends that it does not receive a significant amount of revenue from the Google Adsense sponsored links, neither does it deny that it receives some revenue from sponsored links or click-through advertisement blog entries at the resolving website.
Accordingly, the Disputed Domain Name was registered or used in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
The Panel also finds that Respondent likely knew of Complainant’s rights to the ALIPAY mark prior to registering the Disputed Domain Name. Complainant contends, and Respondent does not deny, that Respondent had knowledge of Complainant’s rights to the ALIPAY mark prior to registering the Disputed Domain Name. Policy ¶ 2 clearly states: “It is your [the domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” The evidence of record shows that Complainant has nearly a half-billion users, and holds approximately a 50% market share in the online-payment-systems market, in connection with its ALIPAY mark and domain name. It is implausible that Respondent was not aware of it at the time of registration and use. See e.g., BzzAgent, Inc. v. bzzaget.com, D2010-1187 (WIPO Sept. 17, 2010) (“The onus is on the respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third party rights. . . . The Respondents’ apparent lack of any good faith attempt to ascertain whether or not the Disputed Domain Name was infringing someone else’s trademark, such as by conducting trademark searches or search engine searches, supports a finding of bad faith.”); Compart AG v. Compart.com, D2009-0462 (WIPO Jul. 9, 2009) (“[T]he very strong inference in this case is that either the Respondent in fact closed its eyes to whether the Domain Name was identical or confusingly similar to a trademark in which a third party had rights, or the Respondent did make some enquiries and as a result had knowledge of the Complainant at the time of registration. Without deciding whether either of these inferences standing alone would support a finding of bad faith registration, the Panel concludes that such a finding is appropriate in this case.”).
Respondent’s bad faith is further underscored by Complainant’s undisputed contention that it sent Respondent a cease and desist letter to stop using the Disputed Domain Name, to which Respondent did not reply. See, e.g., Compagnie Generale Des Establissements Michelin v. Vaclav Novotny, D2009-1022 (WIPO Dec. 16, 2009) (“There is considerable force in the submission raised by the Complainant that the fact that the Respondent failed to respond to the cease and desist letter is recognition of both a bad faith registration and use. There is significant authority from earlier UDRP decisions, which are cited by the Complainant . . ., that a failure on the part of the Respondent without good reason, to respond to a cease and desist letter is evidence of bad faith registration and use.”); Volvo Trademark Holding AB v. Unasi, Inc., D.2005-0556 (WIPO Jul. 29, 2005). Respondent avers that a lapse of two years between when Complainant said it sent a cease and desist letter and when Complainant initiated the present proceeding indicates that Complainant’s global business strategy is unclear. The Panel finds this argument unpersuasive to rebut a finding that Respondent used and registered the Disputed Domain Name in bad faith. Complainant’s “global business strategy” is irrelevant to the question of whether Respondent intentionally registered and used a domain name confusingly similar to Complainant’s widely-known trademark.
Respondent again contends that its use of a disclaimer to avoid confusion between the Disputed Domain Name and Complainant’s ALIPAY mark and business is evidence that it did not use or register the Disputed Domain Name in bad faith. One flaw in this reasoning, as stated above, is that it fails to acknowledge the initial confusion of internet users that visit the resolving website because the Disputed Domain Name is identical and confusingly similar to Complainant’s ALIPAY mark. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000). In fact, Respondent’s use of the disclaimer is further evidence of Respondent’s knowledge that the Disputed Domain Name is confusingly similar to the ALIPAY mark. Moreover, Respondent does not deny Complainant’s contention that Respondent did not include the disclaimer until the present proceeding was initiated, so it has used the Domain Name in bad faith with no disclaimer.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alipay.us> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: February 7, 2011
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