Bid Industrial Holdings (Proprietary) Limited v. ZhangPeng / Zhang Peng
Claim Number: FA1708001743105
Complainant is Bid Industrial Holdings (Proprietary) Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is ZhangPeng / Zhang Peng (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bidvest.top>, registered with Jiangsu Bangning Science & Technology Co. Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2017; the Forum received payment on August 4, 2017.
On August 8, 2017, Jiangsu Bangning Science & Technology Co. Ltd. confirmed by e-mail to the Forum that the <bidvest.top> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. and that Respondent is the current registrant of the names. Jiangsu Bangning Science & Technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd. 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 August 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2017 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@bidvest.top. Also on August 14, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 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 ICANN Policy, ICANN 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
i) Complainant is a South African-based trading and distribution company with operations on four continents. Complainant uses the BIDVEST mark in conjunction with its business practices. Complainant registered the BIDVEST mark with the Republic of South Africa’s Department of Trade and Industry (e.g., Reg. No. 95/03811, registered Mar. 28, 1995). Complainant registered the BIDVEST mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,868,684, registered Dec. 15, 2015). Furthermore, Complainant registered the BIDVEST mark with government entities throughout Africa, Asia, Europe, and Australia. Respondent’s <bidvest.top> is identical to Complainant’s BIDVEST mark because it incorporates the mark in its entirety, merely adding the “.top” generic top level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in <bidvest.top>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the BIDVEST mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <bidvest.top> resolves to an inactive webpage displaying the message “This site can’t be reached.”
iii) Respondent registered and is using <bidvest.top> in bad faith. Respondent is a well-known cybersquatter who has registered over 824 “.top” domain names infringing on third-party marks. Moreover, Respondent has been named as Respondent in multiple UDRP cases resulting in the transfer of the disputed domain name. The disputed domain name lacks content with no demonstrable preparations to create an active website. Respondent registered <bidvest.top> with at least constructive and/or actual knowledge of Complainant and its rights to the BIDVEST mark.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered <bidvest.top> on November 20, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Preliminary Issue: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
The grounds of Complainant's requests that the Panel determine English to be the language of the proceeding include but not limited to: (a) upon receipt of the Complaint, Respondent is given the opportunity to challenge the Complainant’s language request, if Respondent has any intention of filing a substantive response then Respondent should be allowed to make its response in Chinese. If, however no response is received and if the language of proceedings were to remain Chinese this would place an unnecessary burden on Complainant and further frustrate proceedings; (b) Respondent has had over 10 UDRP complaints decided against him each involving domain names using ASCII characters and all conducted in the English language. Respondent is a serial squatter, as alleged below, and is aware that the Language requirement increases the filing costs and could potentially discourage UDRP complaints; and (c) allowing the proceeding to be in Chinese may result in delay, and considerable and unnecessary expense of translating documents.
In the absence of Response and no objection to Complainant's request for the language of the proceeding, the Panel decides English to be the language of the proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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.
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 (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 is a South African-based trading and distribution company with operations on four continents. Complainant uses the BIDVEST mark in conjunction with its business practices. Complainant claims it registered the BIDVEST mark with the Republic of South Africa’s Department of Trade and Industry (e.g., Reg. No. 95/03811, registered Mar. 28, 1995). Complainant also claims that it registered the BIDVEST mark with USPTO (e.g., Reg. No. 4,868,684, registered Dec. 15, 2015). Furthermore, Complainant claims it registered the BIDVEST mark with government entities throughout Africa, Asia, Europe, and Australia. The general consensus among panels is that registrations with government trademark entities, including USPTO, are sufficient to show rights in a mark. Honeywell Int’l Inc. v. r9.net, FA 445594 (Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Therefore, the Panel determines that Complainant’s government registrations are sufficient to show rights in the BIDVEST mark.
Complainant contends that Respondent’s <bidvest.top> is identical to Complainant’s BIDVEST mark because it incorporates the mark in its entirety, merely adding the “.top” gTLD. “When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD) . . . then the Panel may find that the disputed domain name is identical to Complainant’s mark.” Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017). As such, the Panel concludes that Respondent’s <bidvest.top> is identical to Complainant’s BIDVEST mark.
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 (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 (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 asserts that Respondent does not have rights or legitimate interests in <bidvest.top>. In support of its assertion, Complainant demonstrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “ZhangPeng” of “Zhang Peng.” Panels have determined that the respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel finds that Respondent is not commonly known by the [disputed domain name] in any derivation. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the BIDVEST mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant demonstrates that Respondent’s <bidvest.top> resolves to an inactive webpage displaying the message “This site can’t be reached.” “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Panels have found that the “[failure to make an active use] of a domain name that is identical to [c]omplainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004). In the instant case, the Panel concludes that Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007).
Complainant maintains that Respondent registered and is using <bidvest.top> in bad faith. Complainant asserts that Respondent is a well-known cybersquatter who has registered over 824 “.top” domain names infringing on third-party marks. Panels have found that a complainant’s submission of WHOIS evidence that lists the respondent as the registrant of other domain names incorporating third-party trademarks is sufficient to establish that the respondent has a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003). Moreover, Complainant demonstrates that Respondent has been named as Respondent in multiple UDRP cases resulting in the transfer of the disputed domain name. Where the record reflects that the respondent has been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants, it establishes a pattern of bad faith registration and use of domain names. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012). Therefore, the Panel concludes that “Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).” Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012).
Next, Complainant demonstrates that Respondent’s <bidvest.top> resolves to an inactive webpage displaying the message “This site can’t be reached.” Complainant asserts that the disputed domain name has no demonstrable preparations for active use, thereby further evincing bad faith registration and use. Panels have found bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant was established in 1988 and has since diversified its operations to become one of the world’s largest and most influential companies with more than 106,000 employees worldwide. As a result, Complainant's trademark is considered as having been well known; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith. See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014).
Finally, Complainant contends that Respondent registered <bidvest.top> with at least constructive and/or actual knowledge of Complainant and its rights to the BIDVEST mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels have found “actual knowledge through the name used for the domain and the use made of
it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and notoriety of Complainant's BIDVEST mark, it is inconceivable that Respondent could have registered <bidvest.top> without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <bidvest.top>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bidvest.top> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 15, 2017
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