The Complainant is XIHA Oy of Finland, represented by Kalliolaw Asianajotoimisto Oy Attorneys at Law of Finland.
The Respondent is Qiu Shengjie, Chen Qing Mei of People’s Republic of China.
The domain name <xiha.com> (“Disputed Domain Name”) is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2010. On July 21, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On July 22, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 28, 2010. The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
The Center notified the parties of the Language of the Proceeding on July 22, 2010. The Complainant requested for English to be the Language of the Proceeding on July 23, 2010. The Respondent requested for Chinese to be the Language of the Proceeding on July 27, 2010.
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 July 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2010. The Response was filed with the Center on August 25, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 10, 2010. 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.
On October 1, 2010, the Panel issued Administrative Panel Procedural Order No 1 inviting the parties to submit further comments regarding the Respondent’s submission that the Respondent is making legitimate non-commercial or fair use of the Disputed Domain Name through the websites at “www.mail.xiha.com” (or ”www.mail.google.com/a/xiha.com”), ”www.membersxiha.xiha.com” and ”www.tea.xiha.com”. The Complainant and Respondent submitted further comments on October 6, 2010 and October 9, 2010 respectively.
The Complainant provides an online multilingual social network accessible from its website at “www.xihalife.com”. The word “xiha” is used prominently on the Complainant’s website. The website started in July 2006 although it appeared to have been a games site from May 15, 2005. By July 2010, the website had 825,000 registered users. It has users and visitors from over 208 countries.
In 2009, the Complainant became a winner of the Red Herring 100 Europe award. It is not clear from the evidence what level of prestige or accomplishment is associated with such an award. The Complainant’s website was also referred to in a positive light in the July 2010 online issue of Wired magazine. The first 100 hits of a Google search refer to the Complainant.
The Complainant does not own any trade mark registration for “XIHA” but is considering applying for registration in Class 42. The Complainant does not indicate which jurisdictions it intends to register “XIHA” as a trade mark. The Complainant refers to its use of the domain names <xiha.co,uk>; <xiha.eu>; <xiha.in>; <xiha.info>; <xiha.tv>; <xiha.us>; <xihagames.com>; <xihalife.com>; <xihalife.info>; <xihalife.net>; <xihalife.org> and <xihalife.uk>. It is not clear from evidence whether these domain names are owned by the Complainant, although it is apparent that the Complainant uses at least <xihalife.com>.
The Complainant wrote to the email address […]@gmail.com (which it found on a WhoIs database) offering to buy the Disputed Domain Name. The Complainant was offered a price of USD 100,000 which the Complainant did not take up.
The Disputed Domain Name was registered on January 15, 2001. On July 20, 2010, the Disputed Domain Name resolved to a parking webpage. At various points in the past, the Disputed Domain Name resolved to other parking webpages and a redirection a webpage at “www.epai.com” which offered domain names for sale (although the Disputed Domain Name was not offered for sale on that webpage). As of August 24, 2010, the Disputed Domain Name resolved to a news and information website.
Other than having registered the Disputed Domain Name, little is known about the Respondent. As of July 20, 2010 the Disputed Domain Name was registered in the name of “Qiu Shengjie / yima.net”. The Registrant was changed to “Qiu Shengjie / Chen Qing Mei” on July 21, 2010, the day the Complaint was filed. The Respondent applied for trade mark registration of “XIHA” in Class 42 on July 29, 2010 in the name of a company, Guangzhou City Yizhonghuang Network Technology Private Limited Company.
The Complainant contends that:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. Even though the Complainant has not registered the word “xiha” as a trademark, the Complainant has rights in the word “xiha” as a trademark by virtue of its use. It is not a requirement for the Complainant’s rights to pre-date the registration of the Disputed Domain Name for purposes of paragraph 4(a)(i) of the Policy. The Disputed Domain Name is identical or confusingly similar to the word “xiha”;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not made any commercial or fair use of the Disputed Domain Name since it was registered. The only reason for registering the Disputed Domain Name was to sell it. The Respondent has not carried on any business under the name Xiha and the Respondent is not commonly known by Xiha. The Complainant has never authorized or licensed the Respondent to use the word ”xiha”; and
(3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has engaged in a pattern of conduct by registering a multitude of domain names to offer for sale. The Complainant had approached the Respondent some years ago by telephone to buy the Disputed Domain Name but the asking price was too high. The Complainant’s attempt to buy the Disputed Domain Name by email invitation to […]@gmail.com in 2007 also met with the same result. The passive holding of the Disputed Domain Name amounts to bad faith. The Respondent, “Qiu Shengjie” owns 481 other domains and the email addresses […]@9333.com and [….]@yima.net, which are identified as those of the Respondent, are associated with about 1,684 and 992 domain name registrations respectively. The Respondent has been subject of a few complaints under the Policy as a result of repeated registration of domain names in bad faith.
The Respondent contents that:
(1) The Complainant does not have rights in the word “xiha” because it does not own any trademark registration for the word ”xiha”. The Disputed Domain Name pre-dates the Complainant’s alleged use of the term by 5 years and the Respondent has prior rights to the Disputed Domain Name. The Disputed Domain Name is used in China but the Complainant has neither trade mark applications nor business operations in China;
(2) The Respondent has prior rights to the Disputed Domain Name because of prior use or preparation to use the Disputed Domain Name. The website resolved from the Disputed Domain Name is often upgraded, the most recent edition being in May 2009. Updates to the news and information website were posted daily since May 2009. The Respondent also operates websites under third level domains of the Disputed Domain Name (<mail.xiha.com>, <membersxiha.xiha.com>, <tea.xiha.com>). There is no basis for the Complainant to authorize the Respondent to register the Disputed Domain Name because the Complainant did not exist when the Disputed Domain Name was registered. Alternatively, the Respondent has prior rights to the Disputed Domain Name because the business under the Disputed Domain Name is widely known. The Respondent’s website has 10,000 members. Alternatively, the Respondent has prior rights to the Disputed Domain Name because its legal and reasonable business use of the Disputed Domain Name is not associated with an objective of commercial gain or of causing confusion to the public in relation to trade mark rights. The Complainant is instead infringing the Respondent’s prior rights;
(3) The Respondent did not register the Disputed Domain Name in bad faith. The Respondent could not have registered the Disputed Domain Name for the purpose of selling it to the Complainant because the Complainant did not exist when the Disputed Domain Name was registered. The Complainant’s allegation about approaching the Respondent on the telephone to buy the Disputed Domain Name is a fabrication. The Complainant’s email invitation to buy the Disputed Domain Name was addressed to [….]@gmail.com which does not belong to the Respondent. The name “Qiu Shengjie” is common and the Respondent has no relationship with the “Qiu Shengjie” or the email addresses [….]@9333.com and [….]@yima.net referred to by the Complainant in other domain name disputes; and
(4) The Complaint was filed in bad faith and constitutes reverse domain name hijacking. The Complaint is unsupported by evidence. Prior to August 10, 2010, the Complainant’s website used the words “xihalife” and “嘻哈生活”. Thereafter, the words were changed to “xiha” and “嘻哈”. The Complainant should have known that the Disputed Domain Name was registered in 2001 but persisted in adopting the domain name <xihalife.com> to ambush the Respondent by reverse hijacking the Disputed Domain Name. The Complainant’s co-founder is a Chinese national and has been dishonest about its lack of competence in Chinese. The Complainant deliberately submitted the Complaint in English to take advantage of the Respondent.
The Panel noted the WhoIs print-out dated July 20, 2010 submitted by the Complainant identifies the Respondent as “Qiu Shengjie / yima.net” and associates the Respondent with the email addresses [….]@9333.com and [….]@yima.net. These particulars are quite different from that verified by the Registrar. The Center’s email request for Registrar verification was sent on July 21, 2010. The Registrar’s verification indicates that the Respondent’s domain name record was last updated on the same day as the Center’s email, i.e., July 21, 2010. Although the Panel cannot rule out the possibility of coincidence, the circumstances do appear highly unusual. The Panel observes that additional safeguards prior to official notification of a complainant may help to further promote procedural transparency and data security in proceedings under the Policy.
At this point, the Panel wishes to make a general observation. The nature of proceedings under the Policy is such that there is no opportunity for the arbiter of fact to interview and/or cross-examine witnesses and fully test the veracity of evidence unlike in court proceedings. The cost of UDRP proceedings also does not justify the effort of a full blown factual enquiry. As such, the Panel has to manage the yoke of circumstantial restrictions and simply deal with the limited evidentiary resources put before it by the parties.
On the face of the documents before the Panel, there is no reason to question the accuracy of the WHO-IS report as of July 20, 2010. Even though the Respondent’s particulars after July 20, 2010 are those which have been verified by the Registrar as different from the Complainant’s WhoIs print-out, the Panel accepts that the WhoIs report of July 20, 2010 correctly states the particulars of the Respondent as of July 20, 2010. Specifically, the Panel finds that the Respondent is associated with the email addresses [….]@9333.com and [….]@yima.net, at least up to July 20, 2010. The Respondent claims association with only the email addresses [….]@810.com and those shown in the WhoIs records for the registrations of the domain names <xiha.com>; <taibus.com> and <嘻哈.com>, but not others. However, the WHO-IS report of July 20, 2010 has not been challenged and the information therein is clear on its face. Even if it were accepted that the Respondent is no longer associated with the email addresses [….]@9333.com and [….]@yima.net, the fact remains that it is likely the Respondent was up until July 20, 2010, so associated.
In addition, the Panel has to consider the question of whether the Respondent is related to the respondents in the earlier domain name disputes under the Policy identified by the Complainant (namely, SS8 Networks, Inc. v Qiu Shengjie, NAF Claim No. 95507; John Swire & Sons Limited v Tien Fu Chiu, ADNDRC Hong Kong Case No. HK-0400039). The only nexus between these earlier disputes and the present proceeding is the name “Qiu Shengjie”. The Respondent has submitted that “Qiu Shengjie” is a汉语拼音(han yu ping yin) transliteration which could correspond to many possible names. The Panel accepts the Respondent’s argument. The evidence available does not provide any further information about the “Qiu Shengjie” of the earlier disputes that could be associated with the Respondent (eg, email address, telephone number, physical address, etc). In the absence of further corroborative evidence, the Panel is not in the position to conclude that the Respondent is related to the “Qiu Shengjie” identified in the earlier disputes.
The Complainant also alleged that the email address [….]@gmail.com belongs to the Respondent and the communication between the Complainant and that email address relating to the sale of the Disputed Domain Name should be regarded as communication between the Complainant and the Respondent. Regrettably, other than an off-handed reference to “some WhoIs-database at that time”, the details of which are not in evidence, the Complainant has not provided any basis on which the Panel could make such a determination. Further, the Respondent has denied any connection to that email address. In view of the available evidence (or rather, lack thereof), the Panel is unable to find any relationship between the Respondent and the email address [….]@gmail.com.
The default language of proceeding is Chinese. The Complainant requests that English be adopted instead for various reasons, the substance of which is summarized as follows:
(1) The Complainant’s operates mainly in English. The Complainant’s CEO, being Finnish, is not fluent in Chinese;
(2) Adopting Chinese as the language of the proceeding will incur very high costs to the Complainant and delay to the proceeding; and
(3) The Respondent is familiar with domain name disputes under the Policy in English in view of the Respondent’s experience in the earlier cases (namely, SS8 Networks, Inc v Qiu Shengjie, supra; John Swire & Sons Limited v Tien Fu Chiu, supra) under the Policy;
(4) The Respondent communicated with the Complainant in fluent English via the email address [….]@gmail.com regarding the sale of the Disputed Domain Name;
The Respondent contends that Chinese should be adopted as the language of proceeding for the following reasons:
(1) Chinese is the default language of proceeding;
(2) The Respondent does not understand English;
(3) The Complainant’s website has a Chinese edition and indicates that the Complainant is competent in Chinese;
(4) The Complainant’s co-founder is a Chinese national and competent in Chinese; and
(5) The Complainant is using English to cause prejudice to the Respondent.
The Panel has considered the parties’ arguments and makes the following findings:
(1) The Complainant no doubt has some resources at its disposal to enable it to deal with Chinese. Even though the cost of adopting Chinese as the language of the proceedings is likely to be less prohibitive to the Complainant than to a typical complainant without such resources, the Complainant has confirmed that it will suffer significant cost adopting Chinese as the language of the proceeding. The Panel sees no reason to doubt this and the Complainant’s preference of English over Chinese;
(2) In view of the lack of evidence associating the Respondent with the earlier disputes and the email address [….]@gmail.com, the Panel is unable to take the earlier disputes and the email communication with email address [….]@gmail.com into account in considering the Respondent’s fluency in English;
(3) The Respondent’s allegation that the Complainant is using English to cause prejudice to the Respondent is a bare allegation not borne out by the facts;
(4) Despite the Complaint having been filed in English, the Respondent has shown by the detailed Response that the Respondent has an impressive understanding of the contents of the Complaint, the full import of the proceeding and the Policy;
(5) The cost and effort of initiating the proceeding are undertaken by the Complainant. The Complainant’s language preference should therefore be considered seriously. If no apparent prejudice is likely to be caused or is caused to the Respondent, the Panel should respect the Complainant’s language preference. In the present case, the Respondent does not appear to the Panel to have suffered any prejudice as a result of the Complaint having been filed in English;
(6) Since both the Complaint and Response have already been filed, insisting on Chinese as the language of the proceeding will not serve any purpose or result in any benefit to the proceeding. Requiring the Complainant to file a Complaint in Chinese now will cause unnecessary cost to the Complainant and delay to the proceeding. Similarly, requiring the Respondent to file the Response in English will cause unnecessary cost to the Respondent and delay the proceedings. It does not make any logical sense to upset the status quo of the documents filed; and
(7) The Panel is conversant in English and Chinese.
Having regard to the circumstances and the above findings, the Panel determines that English shall be the language of the proceeding but accepts the documents which have been filed in Chinese, including the Response, without the need for translation.
To succeed in the Proceeding, the Complainant must show:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 and is being used in bad faith.
The first limb of paragraph 4(a) can be distilled into the following elements:
(1) There is a trademark or service mark;
(2) The Complainant has rights in that trademark or service mark; and
(3) The Disputed Domain Name is identical or confusingly similar to that trademark or service mark.
In most jurisdictions, a trademark is a sign capable of distinguishing the goods and services of an undertaking from that of others. From the manner in which the word “xiha” is used on the Complainant’s website at “www.xihalife.com” in relation to its online social networking services, the Panel has no doubt that the XIHA is used as a trademark and the first element above is made out.
Paragraph 4(a) does not dictate that the trademark concerned must be registered. Past panels have consistently upheld the position that the Policy does not discriminate against unregistered trademarks (e.g, The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050). A complainant should not be denied access to the Policy merely because his complaint is based on an unregistered trademark. Rather, the lack of registration of a trademark does have bearing upon the 2nd element of the Policy. Registration of a trademark is a basis for establishing that a complainant has rights in a trademark. If a trademark is not registered, rights apart from registration must be established.
It is a consensus of past panels that to establish common law or unregistered trademark rights by a complainant in a trademark, the trademark must have become a distinctive identifier associated with that complainant or its goods and services by virtue of use, that is, the trademark has developed a” secondary meaning”. It is immaterial that the secondary meaning is limited to a small geographical area. Based on the evidence provided (user base of the Complainant’s website, recognition by various publications, Google search results), the Panel is of the view that the trademark XIHA has become a distinctive identifier associated with the Complainant and the Complainant’s services. The second element above is also made out.
The Respondent contended that the Complainant’s website had been using the word “xihalife” before August 10, 2010. In support of this, the Respondent submitted a printout of a banner graphic showing “xiha life”, an undated printout of a webpage showing the use of “xihalife”, and a screen print dated August 9, 2010 showing the same webpage in a browser with the address box referring to the website at <corp.xihalife.com>. Nevertheless, the Respondent’s submission does not change the position. The webpage printout and screen print unequivocally demonstrated the use of the word “xiha” as a unitary element in the copy “xiha ‘www.xihalife.com’ connects the people of the world”. The webpage printout and screen print also show the use of “xihalife” at the top left corner with “xiha” and “life” depicted in distinct colours. The intention, in the Panel’s view, is clearly to distinguish “xiha” as a separate identifier from “life”.
The final and third element above is also supported by the facts. The Disputed Domain Name is <xiha.com>. The trademark in which the Complainant has rights is XIHA. Ignoring the “.com” portion of the Disputed Domain Name in the usual manner of proceedings under the Policy, the Disputed Domain Name is clearly identical to the trademark XIHA.
The Respondent has argued aggressively that the Disputed Domain Name was registered even before the Complainant started using the trademark XIHA and the Respondent has prior rights as a result. With due respect to the Respondent’s efforts, this argument relates to the third limb of paragraph 4(a) of the Policy but is irrelevant as far as the first limb of paragraph 4(a) of the Policy is concerned. It is an established principle in proceedings under the Policy that a complainant may acquire rights in a trademark after the disputed domain name is registered.
In the circumstances, having made the positive findings in relation to the first limb of paragraph 4(a) of the Policy, the Panel determines that the first limb is established.
To establish the second limb of paragraph 4(a) of the Policy, it is not necessary for the Complainant to go beyond showing a prima facie case for the Respondent to rebut. The Complainant’s rights in the trademark XIHA is already established. The Complainant has confirmed that it has not authorized or licensed the Respondent to use the trademark “XIHA”. Granted, that would have been most unlikely in the circumstance since the Disputed Domain Name predates the Complainant. Nevertheless, the Complainant’s evidence is sufficient to support a prima facie case which the Respondent must rebut.
The Respondent attempts to rebut the prima facie case with the following arguments:
(1) The website resolved from the Disputed Domain Name is often upgraded and has been operating as an active news and information website since May 2009.
As evidence, the Respondent submits images of webpages and a declaration of a purported customer dated August 25, 2010 claiming that the Disputed Domain Name is well-known and the website has been operating since May 2009. The images of the webpages are undated and do not show the URL of the website. The declaration is neither verified or attested to by any authority, nor corroborated.
The Respondent’s evidence is contradicted by the Complainant’s evidence which includes a printout of the website resolved from the Disputed Domain Name as a parking webpage as at July 20, 2010. The printout clearly shows the date of printing and the URL in accordance with usual printouts from popular browsers. The Complainant also provided printouts of archived webpages of the website as of August 20, 2004 and February 17, 2007 from the Wayback Machine services of “www.archive.org”. The former is a redirected webpage containing offers to sell domain names and the latter is a parking webpage.
The Respondent’s website from May 2009 to July 20, 2010 was either active or inactive. It cannot be both at the same moment in time. Having reviewed the evidence submitted, the Panel is of the view that the Complainant’s evidence above is more probative. The Panel accordingly accepts the Complainant’s evidence in favour of the Respondent’s evidence for the reasons discussed above. Based on the Complainant’s evidence, up until the date of the Complaint, the Disputed Domain Name does not resolve to an active website at the address “www.xiha.com”. The website that presently exists at the same address appears to have been uploaded after the Complaint was filed but probably before the Disputed Domain Name was locked by the Registrar. Therefore, the Panel is not convinced that the Respondent has been operating a news and information website under the Disputed Domain Name since May 2009.
(2) The Respondent operates websites under third level domains of the Disputed Domain Name (<mail.xiha.com>, <membersxiha.xiha.com>, <tea.xiha.com>).
Although domain names are most popularly known for identifying HTTP resources on the World Wide Web (e.g., websites), they are not limited to such use. Domain names also identify other Internet resources which could be accessed through other protocols (e.g., FTP, gopher, mail, etc). Therefore, even though a domain name may not resolve to a website, it may still resolve to other services on the Internet.
Further, for a domain name <[xxx].com>, it is not necessary that a website be hosted at the address “[www.xxx].com”. Websites may very well exist at the address “[xxx.com]”, a sub domain (such as “[yyy.xxx].com” where “yyy” is the subdomain) or a subdirectory (such as “[xxx].com/zzz” where “zzz” is the subdirectory). Therefore, unless a complainant has administrator access to the host of a domain name, it is nearly impossible for the complainant to show with certainty that no websites or other Internet services exist under a specific domain name.
For purposes of proceedings under the Policy, a panel cannot expect a complainant to prove beyond a reasonable doubt that a domain name is not in use. As most domain names will host a website under a “www.” subdomain, it is generally accepted that the absence of a website under the “www.” sub domain of a domain name establishes a prima facie case that the domain name is not in use. The burden then shifts to the respondent. If the burden is not rebutted, as in the usual case of a respondent who fails to respond, the prima facie case will stand.
In the present case, the Panel has already determined that no active website existed at the address “www.xiha.com” up until the date of the Complaint. The Panel now turns to consider the websites that purportedly existed under sub domains of the Disputed Domain Name, namely <mail.xiha.com>, <membersxiha.com>, <tea.xiha.com>. In response to the Panel’s invitation to submit further comments regarding these websites, the Complainant did not provide any direct or relevant comment while the Respondent essentially reiterated the content of the Response.
However, having found it likely that the Respondent uploaded the current website at “www.xiha.com” after the Complaint but before the Disputed Domain Name was locked, the question arises whether there is also a similar likelihood that the websites at the various subdomains were also uploaded during the same window period. The Respondent contends that these websites have been in operation from before July 29, 2010. Other than undated printouts of these websites and declarations of purported customers all dated after the Complaint, no evidence has been submitted to support this contention.
Having regard to the factual circumstances, the Panel is not convinced that these websites pre-date the Complaint.
(3) Alternatively, the Respondent has prior rights to the Disputed Domain Name because the business under the Disputed Domain Name is widely known. The Respondent’s website allegedly has 10,000 members.
These are bare assertions by the Respondent that are not corroborated by cogent evidence.
(4) Alternatively, the Respondent has prior rights to the Disputed Domain Name because its legal and reasonable business use of the Disputed Domain Name is not associated with an objective of commercial gain or of causing confusion to the public in relation to trade mark rights.
The Respondent has failed to show that the Respondent’s websites, whether under the Disputed Domain Name, or subdomains of the Disputed Domain Names, pre-date the Complaint. It is well established that the mere fact of registering a domain name does not impart rights and/or legitimate interests in the domain name to a registrant. Rights must arise from circumstances extraneous from the domain name registration itself. The Respondent cannot claim any prior rights merely by virtue of the Respondent being the registrant of the Disputed Domain Name, regardless of how long the Respondent has held the Disputed Domain Name.
Based on the above, the Panel concludes that no active website existed under the Disputed Domain Name until after the Complaint was brought to the Respondent’s notice. The Respondent has failed to show that it has any rights or legitimate interests in the Disputed Domain Name and has failed to rebut the Complainant prima facie finding under the second limb of paragraph 4(a).
Since the Disputed Domain Name pre-dates the Complainant’s existence, it is reasonable to say that the Disputed Domain Name was registered by the Respondent without any knowledge of the Complainant or the Complainant’s trademark rights. The question remains whether, despite not knowing of the Complainant or the Complainant’s trademark rights, could the Disputed Domain Name have been registered and used in bad faith.
The Complainant contends that the Respondent’s conduct of registering a multitude of domain names to offer for sale amounts to bad faith registration and use of the Disputed Domain Name. In support of this, the Complainant referred to an invitation to purchase the Disputed Domain Name from the email address [….]@gmail.com in 2007. The Panel has already held that there is insufficient evidence to link this email address to the Respondent.
The Complainant alleged that the Respondent has also been subject to a few complaints under the Policy, namely SS8 Networks, Inc v Qiu Shengjie, supra and John Swire & Sons Limited v Tien Fu Chiu, supra. The Panel has also held above that there is insufficient evidence to associate the name “Qiu Shengjie” in these cases with the Respondent.
The Complainant also sought support from the fact that the Respondent, “Qiu Shengjie”, owns 481 other domains and that the email addresses [….]@9333.com and [….]@yima.net which are identified as that of the Respondent are associated with about 1,684 and 992 domains respectively. It is insufficient for the Complainant to state that 481 other domain names are registered in the name of “Qiu Shengjie”. The Respondent has shown that “Qiu Shengjie” is not a unique name. The evidence submitted is insufficient to associate the “Qiu Shengjie” of the 481 other domain names to the Respondent.
Even if the Panel accepts that the 1,684 and 992 domain names are associated with the Respondent by virtue of the email addresses [….]@9333.com and [….]@yima.net respectively, more is required to show that there has been bad faith registration and use of the Disputed Domain Name by the Respondent.
At this juncture, it is important to mention that the mere fact that a respondent is in the business of selling domain names is not a basis for establishing bad faith registration and use. There has to be additional evidence of that respondent’s bad faith. For example, paragraph 4(b)(ii) illustrates that a pattern of conduct of registering domain names to prevent trade mark owners from reflecting them in corresponding domain names amounts to bad faith registration and use. Also, if a respondent is aware that the domain name he is registering is a trademark, in particular with actual or constructive knowledge of the complainant’s trademark, bad faith registration and use may be established (e.g., Builder’s Best, Inc v. Yoshiki Okada, WIPO Case No. D2004-0748; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the other hand, if a respondent exercises efforts in good faith to avoid registering domain names corresponding to trade marks (e.g., by registering only dictionary words), a finding of bad faith registration and use may be avoided (e.g., the comments of the panels in Grundfos A/S v. Texas International Property Associates,( WIPO Case No. D2007-1448 and Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 are particularly insightful in this regard).
A key fact that stands out in the circumstances is that the Disputed Domain Name was registered many years before the Complainant came into existence. It is not foreseeable that the Respondent could have had actual or constructive knowledge of the Complainant or the Complainant’s trademark XIHA at the time of registering the Disputed Domain Name. Regardless of whether there is bad faith use of the Disputed Domain Name, the third limb of paragraph 4(a) may only be established if there is also bad faith registration. Since the Complainant and the Complainant’s trademark did not exist until some years after the registration of the Disputed Domain Name, the Panel finds it difficult to conclude that the Disputed Domain Name was registered in bad faith.
The Complainant argues that despite the registration of the Disputed Domain Name pre-dating the Complainant’s trademark, the Disputed Domain Name was registered in bad faith. The Panel agrees that bad faith may exist in an appropriate case where a disputed domain name pre-dates a trademark registration. For example, where the respondent registered a trademark as a domain name with actual or constructive knowledge of an unregistered trademark or the application for registration of the trademark, bad faith could be established (e.g., Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871; Thomson v. Out-Site, WIPO Case No. D2005-0166; Little House Publishing Limited v. Mr Keith Davis, WIPO Case No. D2004-0508; Sarah Kozer v. Sarah Kozer, WIPO Case No. D2004-0328, etc). The cases cited by the Complainant are of similar nature (namely, Educational Testing Services v. TOEFL, WIPO Case No. D2000-0044; Madrid 2012, SA v Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598). However, the Panel is unable to find any correspondence between these cases and the present proceeding.
The Complainant also relies on the following passage from 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110:
“The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it."
The Panel is of the view that the above passage does not state a general principle but merely supports the holding in that case. Even though the domain name registration pre-dated the respondent’s knowledge of the complainant’s trademark in that case, the panel there had found bad faith registration and use by the respondent under special circumstances, including providing questionable particulars when registering the domain name, attempting to hide his identity, and failing to honour the complainant’s successful bid to purchase the disputed domain name. The facts available in the present proceeding do not reflect those special circumstances and are distinguishable.
The Panel commends the efforts of the parties. Unfortunately, the nature of proceedings under the Policy does not allow a deeper enquiry into the factual circumstances. Based on the evidence available, the Panel regrets that it is unable to conclude that the third limb of paragraph 4(a) has been established.
The Complainant has successfully proven the first and second limbs of paragraph 4(a). As such, the Respondent’s allegation of reverse hijacking of the Disputed Domain Name by the Complainant is not made out.
For all the foregoing reasons, the Complaint is denied.
Kar Liang Soh
Sole Panelist
Dated: October 28, 2010