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 Domains By Proxy, Inc. of Scottsdale, Arizona, United States of America / Gan Guan Jie of Shanghai, China.
The disputed domain names are <aliexpress.es> and <alipay.es>.
The Registry of the disputed domain name is Red.es and the Registrars are 1API and Key Systems, respectively.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2014. On October 8, 2014, the Center transmitted by email to Red.es a request for registrar verification in connection with the disputed domain names. On October 10, 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.
On October 17, 2014, the Center sent a communication to the parties regarding the language of the proceedings, indicating that:
"The Center notes that the Complaint has been filed in English. For your information, please note that as set out in Article 8 of the Reglamento, paragraph 1 states that the language of the proceedings will be in Spanish. Notwithstanding the above, it is the Panel's authority to determine that the proceeding shall be in another language if the circumstances of the case so require and the parties agree. In this connection, paragraph 2 states that the Expert may require that the documents submitted in languages other than the language of the procedure are accompanied by a full or partial translation into the language of the proceedings (namely Spanish).
We would like to remind the parties that, exceptionally, the Complainant's request that English be the language of the proceedings shall be transmitted to the Expert (once appointed).
The Center, in communications with the parties in this case will use Spanish as the language of the proceedings, and exceptionally will provide a translated summary into English within their means."
The Center verified that the Complaint satisfied the formal requirements 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").
In accordance with articles 7a) y 15a) of the Reglamento, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2014. In accordance with the Rules, article 16(a), the due date for Response was November 6, 2014. On October 17, 2014 the Center received an informal communication from the Respondent. On October 21, 2014 the Center received an informal communication from the Complainant. No formal Response was received. Accordingly, the Center notified the commencement of the panel appointment process on November 7, 2014. However, on November 12, 2014 the Center received a communication with attachments from the Respondent, providing comments relating to the consolidation of Respondents made in the Complaint.
The Center appointed Mario A. Sol Muntañola as the sole panelist in this matter on November 14, 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 has requested that the language of the proceeding shall be English due to the following reasons:
- One of the disputed domain names <alipay.es> resolves to a website that is partially 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 were to submit the Complaint in Spanish and to have the whole proceedings conducted in Spanish, the Complainant would have to incur substantial expenses for translation and may delay the proceedings.
Pursuant to article 8 of the Reglamento, paragraph 1, the Expert has the discretion to determine the language of the present proceeding if the circumstances so require and if the parties agree.
On October 17, 2014, the Center, noted that the Complaint had been filed in English, and as a consequence the Center informed the Parties that, as set out in article 8 of the Reglamento, paragraph 1, the language of the proceedings shall be Spanish. Notwithstanding the above, the Center clarified to the Parties that it is the Expert's authority to determine that the proceedings be in another language if the circumstances of the case so require and the Parties agree. The Respondent did not object to English being the language of the proceeings.
The fact that the Respondent sent informal communications 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 in the English language: the language of the communications from both Parties being in English. The Expert notes that the Respondent is not a native English speaker but the Expert finds that persuasive evidence has been presented to suggest the likelihood that the Respondent is conversant in the English language rather than in the Spanish language.
Therefore, the Expert considers that conducting the proceedings in English would not be disadvantageous to the Respondent.
The Expert determines that the language of the proceeding will be English.
The Complainant operates its business since 1999 and has grown to become a 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 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 2004 the Complainant, through its affiliates, launched the Alipay platform at "www.alipay.com", under the trademark ALIPAY, and nowadays is one of the most widely used independent third-party payment solutions in China.
In September 2009, the Complainant launched the beta test version of the online marketplace through <aliexpres.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 has spent millions of dollars annually to promote its business and services.
The Complainant owns various trademark registrations incorporating the words ALIPAY or 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 |
|
ALIPAY |
European Union (CTM) |
4469052 |
November 11, 2010 |
|
ALIPAY (Logo) |
European Union (CTM) |
8513475 |
February 1, 2010 |
|
ALIPAY.COM |
European Union (CTM) |
7045529 |
August 2, 2010 |
The disputed domain name <aliexpress.es> was registered on March 4, 2010, through Domains By Proxy. Gan Guan Jie appears as administrative and technical contacts of the WhoIs information. In this light, the Expert notes Gan Guan Jie answered to an email communication directed to Domains By Proxy referring to it as "my domain".
The disputed domain name <alipay.es> was registered on March 15, 2010 by Gan Guan Jie.
The disputed domain name < aliexpress.es> currently resolves to the Complainant's Aliexpress website and that disputed domain name <alipay.es> resolves to a website providing information about Complainant's Alipay platform, advertising what appears to be a platform named "Joomla!".
The Complainant contends that:
1) The disputed domain names are identical or confusingly similar to the Complainant's trademarks ALIPAY and ALIEXPRESS and contain the trademarks in their entirety. The country code Top-Level Domain ".es" should be disregarded in comparing the disputed domain names with the Complainant's trademarks;
2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent registered the disputed domain names <alipay.es> and <aliexpress.es> at least 6 years after the Complainant commenced use of the ALIPAY trademarks, and the disputed domain name <aliexpress.es> about 6 months after the Complainant's launch of its Aliexpress marketplace and about 3 days after the Complainant registered its CTM trademarks 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 names.
The Respondent does not own any trademark registration either in Spain corresponding to the disputed domain names.
The disputed domain name <alipay.es> resolves to a website that provides information regarding the Complainant and its Alipay platform, and also provides links to "Joomla!", as a pay-per-click revenue.
The disputed domain name <aliexpress.es> automatically resolves to the AliExpress Marketplace.
The use of the disputed domain names 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 names are 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 names were registered and are being used in bad faith.
The Respondent has no rights or legitimate interests in the disputed domain names, 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 he registered and/or during his use of the disputed domain names, and therefore his actions must have been in bad faith to take advantage of the Complainant's reputation. Furthermore the Respondent's name seems to be a Chinese name, and the Complainant's trademarks are particularly wellk nown in China.
The Complainants refers to 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 Complainant has contacted the Respondent to purchase the disputed domain names, and the Respondent informed that he was interested in selling them. This correspondence proves that the primary motive for registering and/or using the disputed domain names was to sell them in return for profit.
The bad faith is also reflected in the fact that the Respondent earns some money from the pay-per-click revenue.
The registration and use of the disputed domain names by the Respondent were in bad faith in order to sell the disputed domain names for profit, 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.
However, on October 17, 2014, the Respondent sent an informal communication to the Center, informing that the disputed domain name <aliexpress.es> has been sold via GoDaddy and that he would like to provide information regarding the arbitration of <alipay.es>.
On November 12, 2014, the Respondent sent another informal communication to the Center in response to the communication of the Center noting that the due date for Response had passed. The Respondent said that [sic] "I think two domains should be 2 case, thus 2 different seperate files. It was not right to mix 2 domains in one case, expecially after I had alread state that domain was not mine. Procedure matttered. I thought I could chanllge the procedure. I did not find any rules on Domain Name Dispute Resolution for 2 respondents in one complaint files."and also added some "helpful" facts addressed to "Samnking".
In accordance with article 13b)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 names are 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 names; and
3. the disputed domain names have been registered or are being used in bad faith.
On the basis of the evidence in this case, the Expert concludes as follows:
The Expert has found that the Complainant has trademark rights in both ALIPAY and ALIEXPRESS in different countries around the world and also under CTM Registrations: i.e., Nos. 8508566, 8783011, 4469052, 8513475 and 7045529. The Expert has also found that the Complainant's trademarks were well known before the disputed domain names were registered on March 4, 2010 and March 15, 2010.
The disputed domain names <aliexpress.es> and <alipay.es> contain in their entirety Complainant's trademarks ALIEXPRESS and ALIPAY. As such, the disputed domain names are identical or confusingly similar to the trademark ALIPAY and ALIEXPRESS in which the Complainant has rights.
In view of the above, the Expert finds that the Complainant has proved that the disputed domain names are 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 names.
The Expert accepts that the trademarks ALIPAY and ALIEXPRESS are well-known worldwide based on the evidence.
The Complainant has shown that the Respondent lacks any rights or legitimate interests in the disputed domain names. The Respondent has not made a bona fide offering of goods or services under the disputed domain names (both are related to the Complainant business), and does not hold any trademark registrations relating to those disputed domain names. 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 "alipay" or "aliexpress".
The Expert could find no justification, evidence, right or legitimate interests on the part of the Respondent to use the words or trademarks comprising the disputed domain names.
The Expert notes that the disputed domain name < aliexpress.es> currently resolves to the Complainant's Aliexpress website and that disputed domain name <alipay.es> resolves to a website providing information about Complainant's Alipay platform, advertising what appears to be a platform named "Joomla!". The evidence provided by the Complainant shows that the Respondent is aware of the Complainant's business, trademarks, and interests due to the content of the websites at both domain names.
In that respect, the Complainant cites the decision AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002, which states that "the Respondent chose to direct the Domain Name to Complainant's corporate website <att.com> is further confirmation of Respondent's lack of legitimate interest in the Domain Name".
Accordingly, the Expert finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The disputed domain name <alipay.es> was registered 6 years after the Complainant first registered its ALIPAY trademark.
The disputed domain name <aliexpress.es> was registered 4 days before the Complainant first registered its ALIEXPRESS CTM, but the first ALIEXPRESS trademark registration was almost one year before the registration of the dispute domain name1.
The fact that the Respondent registered the disputed domain names, which are completely identical to the Complainant's trademark, indicates that the Respondent had actual knowledge of the Complainant's activities and trademarks.
The best evidence on the bad fatih is the correspondence exchanged between the Parties before this proceeding. The response of the Respondent to the Complainant's purchase offer proves that the Respondent intention was to sell the disputed domain names in return for profit.
Therefore, this Expert considers that there are sufficient circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names.
Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent's use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant's trademarks.
The disputed domain names create a likelihood of confusion with the Complainant's trademark. Internet visitors who access the websites at <alipay.es> and <aliexpress.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 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 Alibaba Group Holding Limited v. Giovanni Tosi, WIPO Case, No. DES2014-0020, and considers that similar reasoning can be applied in this case. This Expert agrees with the application and relation to this case
"it is more than likely that the Respondent was well aware of the Complainant and its use of its ALIEXPRESS mark, given the Complainant's widespread use of the mark in connection with its online activity. Accordingly, the Expert finds that the Respondent's registration and use of the disputed domain name that incorporates the Complainant's ALIEXPRESS mark in its entirety with a minor misspelling constitutes bad faith.
The Expert also finds bad faith evidenced by the fact that the Respondent has not used the disputed domain name in connection with a legitimate offering of any goods or services.
Finally, the Expert finds that the Respondent's offer to sell the disputed domain names compounded the bad faith nature of the Respondent's conduct.
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 trademarks ALIPAY and ALIEXPRESS. Moreover, the intention of the Respondent of selling the disputed domain names determines his purpose. In sum, the Respondent's registration and use of the disputed domain names suggests circumstances of opportunistic bad faith.
For all these reasons, the Expert considers that the disputed domain names have been registered and are also being used in bad faith.
For the foregoing reasons, in accordance with article 21 of the Reglamento, this Expert orders that the disputed domain names <alipay.es> and <aliexpress.es> should be transferred to the Complainant.
Mario A. Sol Muntañola
Sole Panelist
Date: December 16, 2014
1 This Expert also notes that the ALIEXPRESS Trademark well known in China, Hong Kong and other Chinese speaking countries, where the Respondent is located. In this light, the Expert further notes that the ALIEXPRESS Trademark was registered in Hong Kong since August 2009.