Alibaba Group Holding Limited v. Dan Wang
Claim Number: FA1012001365375
Complainant is Alibaba Group Holding Limited (“Complainant”), represented by Steven P. Hollman of Hogan Lovells US LLP, Washington D.C., USA. Respondent is Dan Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aliexpress.us>, registered with GoDaddy.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 29, 2010; the Forum received a hard copy of the Complaint on December 30, 2010.
On December 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <aliexpress.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 January 4, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 24, 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”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 makes the following assertions:
1. Respondent’s <aliexpress.us> domain name is identical to Complainant’s ALIEXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <aliexpress.us> domain name.
3. Respondent registered and used the <aliexpress.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alibaba Group Holding Limited, operates three online businesses: a global trade marketplace for importers and exporters, a Chinese marketplace for domestic trade in the People’s Republic of China, and a Japanese marketplace for facilitating trade to and from Japan. Complainant owns a trademark registration for the ALIEXPRESS mark with the European Union’s Office for the Harmonization of the Internal Market (“OHIM”) (Reg. No. 8783011 issued March 8, 2010). Complainant also owns a trademark registration for the ALIEXPRESS mark with the Hong Kong Intellectual Property Department (“HKIPD”) (Reg. No. 301,402,983AB filed August 10, 2009, issued September 9, 2010).
Respondent, Dan Wang, registered the <aliexpress.us> domain name on August 16, 2009. The disputed domain name resolves to a commercial website that purportedly sells clothing, shoes, fashion accessories and electronic goods.
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."
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(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 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.”).
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.
Complainant owns a trademark registration for the ALIEXPRESS mark with the European Union’s Office for the Harmonization of the Internal Market (“OHIM”) (Reg. No. 8783011 issued March 8, 2010). Complainant also owns a trademark registration for the ALIEXPRESS mark with the Hong Kong Intellectual Property Department (“HKIPD”) (Reg. No. 301,402,983AB filed August 10, 2009, issued September 9, 2010). The Panel finds that a trademark registration with a trademark authority provides conclusive evidence of Complainant’s rights in the ALIEXPRESS mark for the purposes of Policy ¶ 4(a)(i), regardless of whether the mark is registered in a country where Respondent lives or operates. See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel also finds that Complainant’s rights in the ALIEXPRESS mark through registration with the HKIPD date back to the filing date of the trademark application. See Trademark Protection in Hong Kong, English translation, Intellectual Prop. Dept., Gov’t of the Hong Kong Special Admin. Region 6 (Apr. 2006) (stating that once the relevant notice of registration is published, the “trademark will be registered as of the filing date of application”).
Complainant argues that Respondent’s <aliexpress.us> domain name is identical to Complainant’s ALIEXPRESS mark, as the only non-distinguishing difference is the addition of the country code top-level domain (“ccTLD”) “.us.” The Panel finds that the presence of a ccTLD does not remove the disputed domain name from the realm of the confusingly similarity. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel concludes that Respondent’s <aliexpress.us> domain name is identical to Complainant’s ALIEXPRESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aliexpress.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the evidence in record against the Policy ¶ 4(c) factors to determine whether Respondent has rights and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
Complainant argues that it has not consented to or authorized Respondent’s use of Complainant’s ALIEXPRESS mark. The WHOIS information for the disputed domain name lists the registrant as “Dan Wang,” which has no apparent connection to the disputed domain name. The Panel thus finds that Respondent is not commonly known by the <aliexpress.us> domain name and possesses no rights and legitimate interests pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <aliexpress.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). 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)).
Complainant asserts that Respondent is using the <aliexpress.us> domain name to resolve to a commercial website purportedly selling products like handbags, gaming accessories, clothing, etc. Complainant alleges that the information contained on much of the website has no meaning and is clearly generic content, and many of the links displayed are non-operational. Complainant further contends that while the website appears to be offering a wide range of products for sale, upon attempting to actually purchase the products it seems that there are only two handbags actually offered for sale. Complainant contends and the Panel agrees that such commercial use of the <aliexpress.us> domain name does not amount to a bona fide offering of goods or services according to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See America Online, Inc. v. Tercent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s resolving website at the <aliexpress.us> domain name purportedly offers a range of products for sale. As Complainant’s business is in creating online marketplaces, Respondent’s use of the disputed domain name competes with Complainant. The Panel finds that Respondent’s <aliexpress.us> domain name is therefore disruptive to Complainant’s business and evidence of bad faith registration and use according to 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 UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant asserts that Respondent’s disputed domain name intentionally attempts to attract Internet users to Respondent’s website for commercial gain. Complainant argues that Respondent takes advantage of Complainant’s mark to create a likelihood of confusion as to the source or affiliation of Respondent’s website. By purportedly offering products for sale, Respondent can commercially profit by using Complainant’s mark to divert Internet traffic to Respondent’s resolving website. The Panel finds these activities demonstrate Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to [UDRP] ¶4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aliexpress.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 9, 2011
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