The Complainant is Alibaba Group Holding Limited of Georgetown, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Mayer Brown JSM, China.
The Respondent is Ji Long Wang of Beijing, China.
The disputed domain name is <aliexpress.com.es> (the “Disputed Domain Name”).
The Registry of the Disputed Domain Name is Red.es and the Registrar is 1API.
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2014. On September 12, 2014, the Center transmitted by email to Red.es a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2014, Red.es transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email to the Parties on October 2, 2014 informing that as set out in article 8 of the Reglamento del procedimiento de resolución extrajudicial de conflictos para nombres de dominio bajo el código de país correspondiente a España (“.ES”) (the “Reglamento”), unless otherwise determined by the Expert if the circumstances of the case so require and the parties agree, the language of the proceeding will be Spanish. The Center also informed that any final decision on the language of the proceeding would be subject to the Panel’s authority.
On October 2, 2014, the Center received an email from the Respondent in English offering the transfer of the Disputed Domain Name to the Complainant. The Complainant, after the suggestion of the Center of a possible agreement between the Parties, communicated to the Center its interest to continue with the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Reglamento.
In accordance with articles 7a) y 15a) of the Reglamento, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 14, 2014. In accordance with the Reglamento, article 16(a), the due date for Response was November 3, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 4, 2014.
The Center appointed Mario A. Sol Muntañola as the sole panelist in this matter on November 20, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with article 5 of the Reglamento.
The Complainant have requested that the language of the proceeding shall be English due to the following reasons:
- The Disputed Domain Name <aliexpress.com.es> resolves to a website that is in the English language, which demonstrates that the Respondent understands and is able to communicate in English.
- The Complainant does not speak and is not familiar with the Spanish language. Therefore, if the Complainant was to submit the Complaint in Spanish and to have the whole proceeding conducted in Spanish, the Complainant would have to incur substantial expenses for translation and may delay the proceeding.
Pursuant to article 8 of the Reglamento, paragraph 1, the Expert has the discretion to determine the language of the present proceeding and if the parties agree.
The fact that the Respondent sent informal communication to the Center in English must be taken into account to decide the language of the proceeding.
The Expert notes that the material facts of this proceeding are generated in the English language. The Expert notes that the Respondent is not a native English speaker but the finds that persuasive evidence has been produced by the Complainant to suggest the likelihood that the Respondent is conversant in English rather than in Spanish.
Therefore, the Expert considers that conducting the proceeding in English would not be disadvantageous to the Respondent.
Therefore, according to article 8 of the Reglamento, the Expert determines that the language of the proceeding will be English.
The Complainant operates its business since 1999 and has grown to become global leader in the field of e-commerce. Although the Complainant’s headquarters are situated in Hangszhou, China, the company operates through its subsidiaries and affiliates and has offices in about 70 cities across China, as well as in Hong Kong, China, Taiwan, Province of China, Republic of Korea, India, Japan, Singapore, United States of America and Europe.
The Complainant operates two online business-to-business marketplaces: a global trade market place for importers and exporters and a Chinese marketplace for domestic trade in China.
In September 2009, the Complainant launched the beta test version of the online marketplace through the domain name <aliexpress.com> under the trademark ALIEXPRESS, and in April 2010 it was officially launched. The Aliexpress marketplace is a global retail marketplace targeted at consumers worldwide, which enables consumers from around the world to buy directly from wholesalers and manufacturers in China.
The Complainant owns various trademark registrations ALIEXPRESS, in various countries around the world to protect its interests, including:
Mark | Jurisdiction | Trade mark No. | Registration date |
|
ALIEXPRESS |
European Union (CTM) |
8508566 |
March 8, 2010 |
|
ALIEXPRESS (logo) |
European Union (CTM) |
8783011 |
January 17, 2013 |
The Disputed Domain Name <aliexpress.com.es> was registered on June 13, 2012 by Ji Long Wang as shown in the WhoIs information. The Disputed Domain Name resolves to a parking page, which simply provides links and advertises the services of a registrar.
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks ALIEXPRESS and contains the trademarks in its entirety. The country code level domain (“ccTLD”) “.es” should be disregarded in comparing the Disputed Domain Name with the Complainant’s trademarks;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent registered the Disputed Domain Name <aliexpress.com.es> at least 3 years after the Complainant registered its CTM’s in attention of the fame of the trademark and in full knowledge of the Complainant’s prior rights.
The Complainant has not licensed, consented or otherwise authorized the Respondent’s use of its trademarks.
There is no evidence to suggest that the Respondent is commonly known by the Disputed Domain Name.
The Respondent does not own any trademark registration either in Spain corresponding to the Disputed Domain Name.
The Disputed Domain Name resolves to a parking page that simply provides information links and advertises the registrar services of “Mr Domain”, as pay-per-click revenue.
The use of the Disputed Domain Name does not confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use. The Respondent is aware of the Complainant’s trademarks and its fame and notoriety.
The Disputed Domain Name is confusingly similar to the Complainant’s well-known trademarks it misleads users into believing that the Disputed Domain Name is associated with the Complainant and may divert users to it, enabling the Respondent to make a commercial gain.
3) The Disputed Domain Name was registered and is being used in bad faith.
The Respondent has no rights or legitimate interest in the Disputed Domain Name, and do not reflect or correspond to the Respondent’s own name.
The Respondent was aware of the Complainant’s prior rights and interests at the time it registered and/or during its use of the Disputed Domain Name, and therefore its actions must have been in bad faith to take advantage of the Complainant’s reputation. Furthermore, the Disputed Domain Name redirects to a parking page that included sponsored links which directly referred to the Complainant.
The Disputed Domain Name misleads and confuses Internet users into believing that it is associated with the Complainant.
The Complainants refers to the Alibaba Group Hilding Limited v. Giovanni Tosi, WIPO Case No. DES2014-0020, where the expert determined that “bad faith is shown in that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark”.
The bad faith is also reflected in the fact that the Respondent has a commercial gain from the pay-per-click revenue.
The registration and/or use of the Disputed Domain Name by the Respondent were in bad faith to attract and increase the number of Internet users for commercial gain by creating a likehood of confusion with the Complainant’s prior rights.
The Respondent did not formally reply to the Complainant’s contentions.
On October 2, 2014, the Respondent sent an informal communication in English to the Center, informing that there was no need of a proceeding and that it will give to the Complainant the Disputed Domain Name <aliexpress.com.es> for free.
In accordance with article 13(b)(vii)(1), (2) and (3) of the Reglamento, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has previous rights (“Derechos Previos” in Spanish);
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name has been registered or is being used in bad faith.
On the basis of the evidence in this case, the Expert concludes as follows:
The Expert finds that the Complainant has duly proved its trademark rights in ALIEXPRESS in different countries around the world and also under CTM Registration: i.e. Nos. 8508566 and 8783011. The Expert also finds that the Complainant’s trademarks were well known before the Disputed Domain Name was registered on June 13, 2012.
The disputed domain name <aliexpress.com.es> contains in its entirety Complainant’s trademarks, the words ALIEXPRESS. As such, the Disputed Domain Name is identical or confusingly similar to the trademark ALIEXPRESS in which the Complainant has rights.
In view of the above, the Expert finds that the Complainant has proved that the Disputed Domain Name is identical to the trademarks of the Complainant. The Expert finds that the first element is established.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The best evidence on the absence of legitimate rights or interests of the Respondent is the informal communication sent by the Respondent, stating that it would transfer the Disputed Domain Name for free. This communications proves that the Respondent has no rights or legitimate interests.
The Expert accepts that the trademarks ALIEXPRESS are worldwide well known on the evidence.
The Complainant has shown that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. The Respondent has not made a bona fide offering of goods or services under the Disputed Domain Name (pay per click service), and does not hold any trademark registrations relating to this name. The Complainant confirms that it did not authorize or licence the Respondent to register any domain name using its prior rights. Neither has any evidence been adduced to indicate that the Respondent is generally known by the name “Aliexpress”.
The Expert could find no justification, evidence, right or legitimate interest on the part of the Respondent to use the words or trademarks comprising the Disputed Domain Name.
The evidence provided by the Complainant shows that the Respondent is aware of the Complainant’s business, trademarks, and interests.
In that respect, the Complainant cites the decision Hertz System, Inc. v. Domainproxuagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615, where the domain name was being used as a commercial pay per click website, and states that “the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Accordingly, the Expert finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name <aliexpress.com.es> was registered 3 years after the Complainant first registered its ALIEXPRESS trademark.
The fact that the Respondent registered the Disputed Domain Name, which is identical to the Complainant’s trademark, indicates that the Respondent had actual knowledge of the Complainant’s activities and trademarks.
The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the Disputed Domain Name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademarks.
The Disputed Domain Name creates a likelihood of confusion with the Complainant’s trademark, and domain name. Internet users who enter the website at the Disputed Domain Name <aliexpress.com.es> expect to arrive at the Spanish version of the Complainant’s website. When the association between the Disputed Domain Name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. See Ellerman Investments Ltd. and another v. C-Vanci [2006] EWHC 1442, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., /Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808; and PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.
The Complainant cited a recent WIPO case, Alibaba Group Holding Limited v. Giovanni Tosi, Supra, and considers that a similar reasoning can be applied in this case. This Expert agrees with the application and relation to this case:
“The Expert determines that in the present case, bad faith is shown in that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark.”
As stated above, the Expert finds it inconceivable that the Respondent is not aware of the Complainant’s trademark ALIEXPRESS. In sum, the Respondent’s registration and use of the Disputed Domain Name suggests circumstances of opportunistic bad faith.
For all these reasons, the Expert considers that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with article 21 of the Reglamento, the Expert orders that the Disputed Domain Name <aliexpress.com.es> be transferred to the Complainant.
Mario A. Sol Muntañola
Sole Panelist
Date: December 12, 2014