WIPO Domain Name Decision: D2007-0515

Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent)

The Complainant is Orbis Holdings Limited, represented by Mallesons Stephen Jaques, Australia.

The First Respondent is Lu A Feng, ZheJiang, China. The Second Respondent is Orbis Seach, Hong Kong, SAR of China.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2007. On April 5, 2007, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On April 6, 2007, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 27, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2007. The Response was submitted on May 31, 2007, and duly acknowledged by the Center.

The Center appointed Susanna H.S. Leong, Linda Chang and Li Yong as members of a three-member panel on July 11, 2007. 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 the Rules, paragraph 7.

The Complainant is Orbis Holdings Limited, a company incorporated in Bermuda and having its principal place of business in Hamilton, Bermuda. The Complainant is part of the Orbis Group of companies, which are based in Bermuda and London. Its main business is to provide investment management services to institutions and individuals through the Orbis Funds. The Complainant is the registered owner of the ORBIS trade mark in several countries. In particular, the Complainant has registered and used the ORBIS trade mark in Australia since January 5, 1996; in the European Community since April 1, 1996; in the United Kingdom since October 2, 1995, and in the United States since March 31, 1995. The Complainant operates the website “www.orbisfunds.com” since 2000. The website includes information about the Complainant and a description of the goods and services it provides, particularly its different investment funds. The Complainant and its related companies are also registrants of the following domain names:

The Complainant contends that the proper respondent for this proceeding is the First Respondent, Lu A Feng. The grounds of the Complainant’s contentions are as follows:

1. Prior to the notification by the Center, the Complainant was unaware of any entity known as “Orbis Search” which is the Second Respondent and the Whois search conducted by the Complainant clearly established that the First Respondent, Lu A Feng, has been the registrant of <orbis.com> for a considerable period.

2. The Complainant asserts and adduces evidence that there has been a transfer of the disputed domain name from the First Respondent to the Second Respondent, Orbis Search, after the First Respondent has been notified of the complaint but before the official commencement of the proceedings and that there has been a breach of paragraph 8(a) of the Policy.

The Complainant submits that the language of the registration agreement for this disputed domain name is Chinese and the Complainant states that there is no agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. However, the Complainant contends that the administrative proceedings should be conducted in English for the following reasons:

1. The correspondence received from the First Respondent, demonstrates that the First Respondent understands and is able to communicate in English;

4. The Registrar’s Service Terms are in English and are governed by the internal laws of the State of California;

7. The language of a registration agreement cannot be found out until a complaint has been filed as such information cannot be ascertained from Whois searches; and

8. The Complainant does not wish to jeopardize the administrative proceeding and the amended complaint has been submitted in English and in Chinese.

The Complainant has adduced evidence to show that it is the registered owner of the trade mark ORBIS in 54 countries and that it has rights in the mark. The Complainant contends that the disputed domain name is identical to its ORBIS mark and it is a well accepted principle that when comparing domain names with trade marks, the top level domain name element of a domain name has no distinguishing capability and may be disregarded when considering whether a domain name is identical or confusingly similar.

With regard to the First Respondent, Lu A Feng, the Complainant contends that there exists no legitimate reason for the First Respondent to use the Complainant’s business name, trade mark and domain name as its domain name. The Complainant contends that the disputed domain name was first registered by the First Respondent on a date unknown to the Complainant between January13, 2004 and June 17, 2004. The Complainant adduced evidence to show that the web site upon which the disputed domain name resolves is a DomainSponsor¹ landing page. The Complainant further adduced evidence to show that the First Respondent is also the registrant for a number of other domain names, all of which resolve to DomainSponsor landing pages and these include <best.biz>; <dot.biz>; <download.biz>; <elawyer.biz>; <fast.biz>; <game.biz>; <hvac.biz>; <nederland.biz>; <ohio.biz>; <open.biz>; <sky.biz>; <super.biz>; <vip.biz>; and <zahir.com>. The Complainant contends that this is not a case where a respondent in China might plausibly have used the Complainant’s mark without knowledge of the Complainant’s business worldwide. The Complainant contends that the disputed domain name together with many of the other domain names registered by the First Respondent was deliberately chosen for the purpose of monetization through Domain Sponsor. The First Respondent’s use of ORBIS on a page linked to “www.information.com” does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest.

With regard to the Second Respondent, the Complainant contentions are as follows:

1. The Second Respondent only commenced trading in Hong Kong under the “Orbis Search” name after filing and service of the First Complaint as filed initially.

2. There is a close association between the First Respondent and the Second Respondent. The First Respondent is the administrative, billing and technical contact for the Second Respondent. Thus, the knowledge (actual or imputed) of the First Respondent should be taken to be knowledge of the Second Respondent.

3. The Complainant has conducted searches in Hong Kong’s telephone directories and has found that “Orbis Search’ is not listed at all. The Complainant’s agent physically visited the address of the Second Respondent and found no signage or reference to “Orbis Search”. In the annual return of China Internet Limited, which allegedly owns “Orbis Search”, there is no listing of “Orbis Search’ in the business names under which China Internet Limited trades. Accordingly, the Complainant contends that the Second Respondent is not known by the ORBIS name prior the filing and service of the Complaint.

4. The fact that an individual associated with the Second Respondent has filed a trade mark application for a mark that is substantially identical to the disputed domain name does not mean that the Second Respondent has rights or legitimate interests in the domain name as the trade mark application is not in the name of the Second Respondent.

5. The Complainant contends that the disputed domain name was registered by the Second Respondent for the same purpose as the First Respondent, namely to monetize the domain rather than to offer a bona fide goods or services.

The Complainant contends that the First Respondent’s use of Oversee.net to monetize the disputed domain name gives rise to presumption of bad faith pursuant to paragraph 4(iv) of the Policy. Further, the Complainant contends that the First Respondent intentionally registered the disputed domain name in order to prevent the Complainant, being the owner of the trade mark ORBIS and the “orbis” related domain names, from reflecting that name and mark in a corresponding domain name in the top level “.com” domain. The Complainant contends that “orbis” does not have an ordinary meaning in the English language and is associated with the Complainant’s financial services. Finally, the Complainant contends that the First Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to the “www.information.com” website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the “www.orbis.com” website.

The Respondent contends that Orbis Search is part of China Internet Limited and that Lu A Feng is an employee of China Internet Limited. The disputed domain name was registered by Lu A Feng and was held by him on trust for China Internet Limited. The Respondent asserts that Orbis Search was in operation since 2004 and the trade mark application for the mark ORBIS was filed on October 27, 2004, by an individual investor of China Internet Limited. The Respondent concedes that the completion of the registration of the disputed domain name was after the filing of the initial Complaint but asserts that the process for transfer was well underway before the filing of the initial Complaint. The occurrences of public holidays and weekends have resulted in the completion of the transfer of the disputed domain name after the filing of the initial Complaint. The Respondent further argues that the Whois search system of the registrar OnlineNic, Inc. may have experienced technical glitches at the time the searches were conducted by the Complainant resulting in inaccurate search results of domain name registrants.

The Respondent contends that the Complainant did not adduce sufficient evidence to show that it has trade mark rights in the term “orbis”. The Respondent argues that the Complainant was only incorporated in March 27, 2007. The EU registration of the mark ORBIS was in the name of Orbis Investment Advisory Limited and the Respondent contends that the Complainant did not adduce any evidence to prove the connection or relationship between Orbis Investment Advisory Limited and the Complainant.

The Respondent argues that it has rights or legitimate interests in the disputed domain name based on the following reasons:

1. That the Respondent had been using the domain name as a travel information portal after its registration and prior to the notification of this Complaint;

2. That the Respondent is the owner of an information portal website “www.356.com” which is voted the Top 500 websites as well as the Top 100 most valued websites in China. The Respondent intends to use the disputed domain name website as the English equivalent of its “www.356.com” information portal website. The disputed domain name is only temporarily linked to “www.information.com” as it is using some contents of the “www.information.com” website. The Respondent contends that this is a legitimate use of the disputed domain name;

3. That the Respondent has filed an application for trade mark registration in the mark ORBIS is evidence that the Respondent has legitimate use of the disputed domain name;

4. That the Respondent’s business name is Orbis Search and thus, it is known by the ORBIS mark;

5. That the Complainant has made an offer to acquire the disputed domain name at a high price of HKD 32500 from the Respondent is evidence that the Complainant acknowledges that the Respondent has rights or legitimate interests in the disputed domain name.

The Respondent asserts that it did not register and did not use the disputed domain name in bad faith for the following reasons:

1. That the Respondent has never heard of the Complainant or its business until the notification of the Complaint;

2. That the Complainant did not adduce evidence to show that the ORBIS mark is a well-known mark or that it has conducted business in China;

3. That the Respondent acquired the disputed domain name only in 2004, but the disputed domain name has remained registered in a third party’s name since 1995. In order for the Complainant to succeed under the Policy, registration of the disputed domain name must be made in bad faith by the Respondent. However, since the Respondent did not register the domain name in 1995, there can be no registration in bad faith on the part of the Respondent;

4. That even if the Respondent by acquiring the disputed domain in 2004, has stepped into the shoes of the original registrant and inherited all its rights and liabilities, the Respondent contends that there can be no bad faith registration in 1995, as the Complainant’s trade mark rights only came into existence in 1996, when its ORBIS mark was first registered;

5. That no confusion can arise according to paragraph 4(iv) of the Policy as alleged by the Complainant if a comparison is made between the Complainant’s “www.orbisfunds.com” website homepage and Respondent’s “www.orbis.com” website homepage. This is because the “www.orbis.com” homepage is a travel information portal whereas the “www.orbisfunds.com” is a website related to financial services.

6. That the “www.orbis.com” website has a much higher volume of Internet traffic compared to the “www.orbisfunds.com”;

7. That the word “orbis” is not an inventive word but a dictionary word in Latin, meaning the earth or the eye;

8. That there is no evidence that this word “orbis” which is used in the homepage of the website “www.orbis.com” is linked to the Complainant or to its competitors and consequently, there can be no usage in bad faith.

After reviewing all the evidence adduced before the Panel, the Panel finds that there has been a breach of paragraph 8(a) of the Policy as the disputed domain name has in fact been transferred from the First Respondent to the Second Respondent after the First Respondent received notice of the initial Complaint. This is a fact which the Second Respondent did not deny in its Response. It is further noted that the disputed domain name was transferred to the Second Respondent from the First Respondent after the Registrar was notified of the initial Complaint. Consequently, the Panel finds that the proper Respondent in the present proceeding is the First Respondent, Lu A Feng and the decision will be rendered in relation to the Complainant’s Complaint against the First Respondent.

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant confirms that there is no agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. However, the Complainant contends that the administrative proceedings should continue to be conducted in English for the reasons cited in the following paragraphs.

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. 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.

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name and the language of the Respondent’s email correspondence with the Complainant. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. In particular, the Respondent was able to cite previous English UDRP decisions in its Response to substantiate its argument. The Respondent has also been notified of the administrative proceeding in both English and Chinese. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Administrative Panel will be rendered in English.

In accordance with paragraph 4(a) of the Policy, 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 domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the ORBIS mark in many countries throughout the world since it first obtained registered trade mark rights in 1996.

The disputed domain name consists of the Complainant’s mark ORBIS in its entirety and the suffix “.com”. It is an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor and consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.

Based on the following reasons the Panel finds that the Complainant has established a prima facie case that the First Respondent has no rights or legitimate interests in the disputed domain name:

1. The First Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “orbis” in its business operations prior to notification of the present proceeding;

2. There was no evidence on the record to show that the Complainant has licensed or otherwise permitted the First Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication on the record that the First Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Respondent has argued that the “www.orbis.com” website is a travel information website but in fact the website is linked to “www.information.com”. The Panel is not convinced by the evidence adduced and the arguments made by the Respondent that the “www.orbis.com” website has been used by the First Respondent in a genuine offering of goods and services. The evidence presented to the Panel clearly substantiates the Complainant’s claim that the First Respondent is monetizing or passively holding the disputed domain name since its acquisition in 2004. Such a usage of the disputed domain name by the First Respondent cannot, on the present case file, amount to legitimate interests or give rights to the First Respondent.

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

Up to this point, the Panel has found in favour of the Complainant. However, it is with this last part of the test under the Policy that the Panel must conclude, based on the case file before the Panel, that the Complainant has not successfully discharged its burden of proving that the First Respondent has registered and used the domain name in bad faith. The grounds of the Panel’s decision are as follows:

1. The Panel finds that the ORBIS mark in issue is not an inventive or coined word but a dictionary term of Latin origin meaning among other things “circle”, “ring”, “sphere”, “eye”, “earth”.

2. To find bad faith on the part of the First Respondent and to order a transfer of the disputed domain name to the Complainant under the present proceeding, the Complainant must discharge its burden of proof under the Policy that the First Respondent registered and used the domain name in bad faith. This commonly includes among other things showing that a respondent had knowledge of a complainant and its trade mark rights prior to or at the time of registration/acquisition of the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame of a complainant’s mark. In the present case, there is no compelling evidence before the Panel that the First Respondent had actual knowledge of the Complainant’s ORBIS mark when the disputed domain name was registered. The question then arises in the present case as to the degree of the notoriety or fame of the Complainant’s ORBIS mark. The Panel finds that the evidence before it is not sufficient to enable the Panel to conclude that the ORBIS mark is a well-known mark. Being a dictionary word, and not inherently distinctive, there is an onus on the Complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use. Little or no evidence of the use of the ORBIS mark by the Complainant or the extent of the mark’s notoriety has been presented before the Panel. The First Respondent when acquiring the disputed domain name <orbis.com> in 2004 may well have known that the word “orbis” is a widely popular choice for domain names or trade marks but this of itself does not establish bad faith here. The Panel could find no evidence which successfully establishes that the Respondent registered the disputed domain name with the Complainant, its business or its trade mark in mind. It would appear that the term or mark ORBIS has been widely used by many third parties whether in the form of a domain name or as a trade mark. A search over the Internet using the Google search engine for the key word “orbis” generates a return of hundreds of websites, the majority of which do not belong to nor are associated with the Complainant and its business.

3. The consensus view of WIPO UDRP panelists is that passive holding of a disputed domain name may in appropriate circumstances be consistent with a finding of bad faith. However panels have tended to make such findings in circumstances in which for example a complainant’s mark is well-known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trade mark rights. These circumstances are not present in the current proceedings. Whether or not the domain name is in active use, the Panel is not satisfied that the Complainant’s mark is well-known, and there are conceivable uses of the disputed domain name related to the dictionary meaning of the word “orbis”. The Complainant has not succeeded in persuading the Panel that the disputed domain name is being held passively in bad faith.

The Panel finds that the third part of the test has not been established by the Complainant.

Susanna H.S. Leong
Presiding Panelist

Linda Chang
Panelist

Li Yong
Panelist

¹ The domain ‘domainsponsor.com’ is owned by Oversee.net and it purports to be ‘the industry leader in domain monetization’. It operates by redirecting users to ‘a custom DomainSponsor landing page populated with targeted keywords, ads and content and profits are shared equally with the owner of the domain.