Alibaba Group Holding Limited v. Zhang Rihui
Claim Number: FA1407001568213
Complainant is Alibaba Group Holding Limited (“Complainant”), represented by Gabriela Kennedy of Mayer Brown JSM, Hong Kong. Respondent is Zhang Rihui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taobao.us>, registered with ENOM, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2014; the National Arbitration Forum received payment on July 3, 2014.
On July 3, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <taobao.us> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s U.S. Department of Commerce’s usTLD Policy (the “Policy”).
On July 14, 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@taobao.us. Also on July 14, 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 Sandra J. Franklin 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
1. Respondent’s <taobao.us> domain name is identical to Complainant’s TAOBAO mark.
2. Respondent does not have any rights or legitimate interests in the <taobao.us> domain name.
3. Respondent registered and uses the <taobao.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its TAOBAO mark to promote its consumer-to-consumer Internet retail platform. Complainant has registered the mark around the world, including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,107,427 registered Mar. 6, 2012). Complainant has widely used the TAOBAO mark and the <taobao.com> domain name since 2003.
Respondent registered the <taobao.us> domain name on September 26, 2006, and uses it to promote hyperlinks to third-party websites.
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.
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.”).
The Panel finds that Complainant’s USPTO registration of its TAOBAO mark is sufficient to afford rights in the mark dating back to the May 6, 2010 filing date of the trademark application for the mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant claims it first used TAOBAO to market its goods in May 2003, and used the <taobao.com> domain name to promote its services. Complainant claims it has revenue of over 34 million Yuan through 2013. Further, Complainant claims its TAOBAO websites achieve more than 50 million unique visitors daily, as it is one of the more preeminent Chinese language websites. The Panel therefore finds that Complainant has sufficiently illustrated its common law rights in the TAOBAO mark dating back to May 2003. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant claims the <taobao.us> domain name is identical to its TAOBAO mark. Since the domain name merely adds the gTLD “.us” to Complainant’s mark, the Panel agrees and finds that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant claims that Respondent owns no trademarks that are identical to the <taobao.us> domain name and that Respondent has never been known by this domain name. The WHOIS information lists “Zhang Rihui” as the registrant of record for the disputed domain name. The Panel therefore finds that there is no evidence that Respondent is known by the <taobao.us> domain name and no basis for rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). 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 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).
Complainant argues that the <taobao.us> domain name is used only to promote hyperlinks to websites of third-party businesses. The Panel notes the disputed domain name resolves to a website promoting advertisements such as “New Handbags in Hong Kong” and “BVI Offshore Companies.” Thus, the Panel finds that Respondent has made no Policy ¶ 4(c)(ii) bona fide offering, or Policy ¶ 4(c)(iv) legitimate noncommercial or fair use with of this domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent is attempting to profit through the likelihood Internet users will be confused as to the source or origin of the hyperlinks accessible through the <taobao.us> domain name. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel agreed that there was a likelihood of confusion when a confusingly similar domain name was used to promote monetized hyperlinks. The Panel similarly finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <taobao.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 11, 2014
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