Alibaba Group Holding Limited v. FLORENCIO DIAZ VILCHES / ANF AC
Claim Number: FA1504001614763
Complainant is Alibaba Group Holding Limited (“Complainant”), represented by Mayer Brown JSM, Cayman Islands. Respondent is FLORENCIO DIAZ VILCHES / ANF AC (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alibaba.br.com>, registered with Mesh Digital 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.
Paul M. DeCicco, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and that the mediation process was terminated due to non-response from Respondent. See Verification, at ¶ 7 (received April 17, 2015).
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2015; the Forum received payment on April 16, 2015.
On Apr 17, 2015, Mesh Digital Ltd confirmed by e-mail to the Forum that the <alibaba.br.com> domain name is registered with Mesh Digital Ltd and that Respondent is the current registrant of the name. Mesh Digital Ltd has verified that Respondent is bound by the Mesh Digital 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 April 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2015 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@alibaba.br.com. Also on April 17, 2015, 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 found compliant on May 7, 2015.
On May 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the ALIBABA mark for the purpose of connecting suppliers and manufacturers with buyers from around the world. Complainant has registered the ALIBABA mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,829,317, registered April 6, 2004), demonstrating rights in the mark, as well as numerous other trademark registries worldwide.
Respondent’s <alibaba.br.com> domain name is identical to the ALIBABA mark because it merely adds the suffix “.br.com”, which is irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent has no rights or legitimate interests in the <alibaba.br.com> domain name. Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent authorization to register the ALIBABA mark. Next, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the disputed domain name. Rather, the resolving page purports to connect buyers, manufacturers, and business advisers around the world, competing with Complainant’s business.
Respondent has engaged in bad faith to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location per Policy ¶ 4(b)(iv). Finally, Respondent registered the <alibaba.br.com> domain name with actual or constructive knowledge of Complainant’s ALIBABA mark and the rights central to the mark which belong to Complainant.
B. Respondent
Respondent contends as follows:
The ALIBABA mark is generic.
Respondent has rights and legitimate interests in the mark because it does not seek to mimic Complainant’s website. Instead, the website is linked to the project UNIVERSAL EXPORTS PLATFORM admissions.
Respondent registered the <alibaba.br.com> domain name in good faith.
Complainant has failed to meet its burden.
Complainant has rights in the ALIBABA mark through its registration of such mark with the USPTO as well as via its other registrations worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its ALIBABA trademark.
Respondent uses the at-issue domain name to address a commercial website which concerns export services and displays an immaterially altered copy of a logo mark owned by Complainant.
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 has being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the ALIBABA trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s at-issue domain name differs from Complainant’s trademark only by its suffix --“.br.com.” Since it is well settled that top level domain names are generally insignificant in Policy ¶ 4(a)(i) analysis, the Panel finds that Respondent’s <alibaba.br.com> domain name is identical to Complainant’s ALIBABA trademark. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “FLORENCIO DIAZ VILCHES / ANF AC” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <alibaba.br.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Additionally, it appears that Respondent uses the domain name to imply that the website addressed by the domain name is somehow connected with or sponsored by Complainant, when it is not. The similarity of services offered by Complainant and Respondent’s website further indicates that Respondent’s <alibaba.br.com> website competes with Complainant‘s mainline business. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), notwithstanding that taken out of context the mark may have meaning outside of its trademark usage. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The <alibaba.br.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses the domain name to misrepresent that the <alibaba.br.com> website is connected with or sponsored by Complainant, when it is not. By using the domain name in this manner, Respondent desires to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such use of the domain name demonstrates bad faith per Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Moreover, Respondent registered the <alibaba.br.com> domain name knowing that Complainant had trademark rights in the ALIBABA mark. Respondent’s prior knowledge of ALIBABA is evident from the worldwide notoriety of Complainant’s trademark, from Respondent’s use of the at-issue domain name to address a website offering services in the same field of commerce as Complainant, and from the blatant copying and misappropriation of Complainant’s logo by Respondent for display on Respondent’s <alibaba.br.com> website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <alibaba.br.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Given the foregoing it is inconceivable that Respondent registered and/or is using the at-issue domain name for any reason other than in bad faith.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alibaba.br.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 25, 2015
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