The Complainant is The MathWorks, Inc. of Natick, Massachusetts, United States of America (“United States”), internally represented.
The Respondent is Wang Deqing, 王德庆 of Dalian, Liaoning, China, self-represented.
The disputed domain name <matlab.online> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 25, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On April 27, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding until after the specified due date. On May 8, 2017, the Respondent requested that Chinese be the language of the proceeding.
The Center verified that the Complaint 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on May 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2017. The Response was filed in Chinese with the Center on May 20, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 29, 2017. 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 designs and markets technical computing software for scientists and researchers. One of its products is MATLAB software, which is solely owned and licensed by the Complainant. The Complainant also commercially offers training and consulting services aimed at enhancing its users’ experience with MATLAB software. The Complainant owns registered trademarks for MATLAB in various jurisdictions, including United States trademark registration number 1,691,313, registered from June 9, 1992 and specifying computer software for matrix calculation and instruction manuals therefor, sold as a unit, in class 9; and Chinese trademark registration number 4943424, registered from September 28, 2008 and specifying pre-recorded computer software in class 9. Those registrations remain in effect. One format of MATLAB software, known as “MATLAB Online”, is also made accessible to licensed MATLAB users through a web browser for online use, which may be accessed atthe Complainant’s official websites “www.matlabonline.com” or “http://www.mathworks.com/products/matlab-online/”.
The Respondent is a doctoral student in biomedical engineering from China. The Respondent registered the disputed domain name in August, 2015. The disputed domain name formerly resolved to a website that displayed hyperlinks to other sites providing the Complainant’s software, videos and documentation. The Respondent disabled the links after receiving a cease-and-desist letter from the Complainant and, at the time of the Complaint, the disputed domain name resolved to a page displaying the following message: “Programming Study for Signal Processing. This website is under construction …” However, at the time of this decision, the disputed domain name resolves to a page in Chinese and English titled “Programming Study for Signal Processing” that displays hyperlinks to various online resources, including several programming languages, one of which is MATLAB.
The disputed domain name is confusingly similar to the Complainant’s MATLAB trademark. The disputed domain name is identical to that trademark when the generic Top-Level Domain (“gTLD”) is not considered.
The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant and the Respondent have no relationship, affiliation or association. The Complainant has not granted the Respondent any license, permission or other right by which he could own or use any domain name consisting of the MATLAB trademark. The Respondent has no legitimate noncommercial or fair use rights to the term MATLAB. The disputed domain name formerly resolved to a website in Chinese and English that made available for public download multiple releases of the Complainant’s MATLAB and other software products, prominently displayed the Complainant’s MATLAB logo and appropriated documentation and videos of the Complainant, all without the Complainant’s prior authorization. In December 2016, the Respondent disconnected the disputed domain name at the Complainant’s request, but did not transfer it to the Complainant. The disputed domain name subsequently resolved to a page displaying the message “Programming Study for Signal Processing. This website is under construction …” Given that signal processing is one of the Complainant’s core businesses, it appears that the Respondent may intend to continue using the disputed domain name to continue encroaching upon the Complainant’s business.
The disputed domain name was registered and is being used in bad faith. The disputed domain name is identical to the Complainant’s MATLAB trademark. Prior correspondence between the parties demonstrates that the Respondent knew of the Complainant’s trademark. The Respondent registered the disputed domain name utilizing the Complainant’s trademark to suggest a connection with the Complainant. There is a high likelihood that an Internet user could misinterpret the disputed domain name to mean that (i) the Respondent was providing authorized access to MATLAB software and was authorized to use the MATLAB trademark; (ii) the Complainant sponsors or endorses the Respondent; or (iii) the Complainant is otherwise involved with the website; or some combination of the above. In short, the Respondent registered and is using the disputed domain name to reinforce the incorrect impression that the Complainant is associated with or otherwise supporting him, and the Respondent is attracting Internet traffic through the Complainant’s trademark.
Although the first half of the disputed domain name is identical to the Complainant’s MATLAB trademark, MATLAB is also a generic technical and programming language for academic research and scientific computing (with functionality similar to C++, C#, Java and other programming languages). The Respondent is a doctoral candidate and his website is designed to provide an online platform for university students and researchers to learn and master MATLAB technology. In the scientific research field, more people think of MATLAB as a tool for using programming methods to solve scientific research and engineering problems; few people associate it with the Complainant’s trademark.
The Respondent has rights and legitimate interests in respect of the disputed domain name due to his lawful and legitimate registration of the disputed domain name with the Registrar. The Complainant asserts that the Respondent’s website made available MATLAB software for public download but the content consisted of links to study resource sites located using search engines. Internet users could click on the links and jump to those other sites. The Respondent’s website did not upload any software, documentation or videos copyrighted by the Complainant. The website previously pointed to a download page provided by some American universities, which generally required university authorization to access, and most links are no longer valid. The Respondent’s website did not enable Internet users to open or download the Complainant’s software and the Complainant cannot provide evidence that it did. Further, the Complainant also asserts that the Respondent may use the disputed domain name to encroach upon the Complainant’s signal processing business but this is pure speculation. Signal processing is a branch of computer science, an important research orientation in most universities and a topic of the Respondent’s doctoral research. Signal processing research needs to use MATLAB, C++, Python and other computer programming languages. The purpose of the Respondent’s website is to provide online learning resources for university students and researchers, online courses for prestigious universities and open source software tools. The site is currently under revision. Its purpose is to focus on computer science and signal processing. The disputed domain name was chosen because it is easy to remember and to further promote exchanges between scholars.
The purpose of the Respondent’s website is the bona fide provision of learning resources and conduct of academic exchanges. The website is popular with scientific scholars and Internet users due to its rich resources, outstanding topics and strong professionalism. The Respondent’s website has only been located at the disputed domain name for over a year but he believes that over time it can become more widely known among researchers and university students. The Respondent uses the disputed domain name only for the purposes of scientific research and academic exchange. It has no commercial purpose. The Respondent has not obtained any commercial interest through the disputed domain name. The Respondent’s use of the disputed domain name has not harmed the Complainant’s trademark or reputation.
The disputed domain name was not registered, and is not being used, in bad faith for the following reasons: (i) the disputed domain name was not registered for the purpose of selling, renting or paying other remuneration. Previously, the Respondent’s website was located at “www.matlab.org.cn” but the Respondent registered the disputed domain name because it is easier to remember; (ii) the disputed domain name was not registered to prevent the owner of the trademark from reflecting the mark in that domain name, and the Respondent has never engaged in such conduct. The TLD “.online” is one of many new TLDs and the name “matlab” is not registered in many others. The Respondent registered “matlab” in the “.online” domain in a legal, open and fair manner; (iii) the disputed domain name was not registered primarily for the purpose of disrupting the business of a competitor. The Respondent’s website is intended to provide learning resources and a platform for academic exchange for Chinese university students and researchers, in particular, Chinese freshman who lack basic MATLAB, C++ and other programming skills and basic documentary resource retrieval skills. The Respondent’s website can provide entry-level resources for these students and help them get started. The vast majority of online resources are in English and unsuitable for Chinese students. The Respondent has many years of research experience in the field of computer science and signal processing and can provide guidance and help them through the website. The Complainant and the Respondent are not competitors and registration of the disputed domain name does not damage the Complainant’s business; and (iv) the Respondent’s website provides links to other sites. The form and content of the Respondent’s website cannot be confused with the Respondent’s trademark. The Respondent’s website has no commercial purpose. The Respondent registered the disputed domain name on August 27, 2015 and has been using it normally since that time. The Complainant did not notice it until December 30, 2016. The term “matlab” is still not registered in many new TLDs but the Respondent has not registered the Complainant’s trademark in any of them. He chose the disputed domain name because it is short and easy to remember and the TLD means “online”.
The purpose of the Complaint is to use the Complainant’s registered trademark and the UDRP to deprive the Respondent of the disputed domain name, which constitutes reverse domain name hijacking.
Paragraph 11(a) of the Rules provides that “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.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that (i) the Respondent must be familiar with and conversant in the English language because the Parties have corresponded in English, portions of the website to which the disputed domain name resolves are in English, the Respondent is a doctoral candidate at a European university and has posted his resume online in English; and (ii) requiring the Complainant to translate the Complaint and all supporting documents into Chinese would create unnecessary expense and unduly delay the proceedings.
The Respondent requests that Chinese be the language of the proceeding. His main arguments are that (i) his English level is not suitable for expressing himself in the technical vocabulary of an Internet domain name dispute, so he will write his Response in Chinese; (ii) many annexes to his Response are in Chinese and he is not able to translate them into English; and (iii) the Complainant has a professional legal team that should be able to find a Chinese translator. The Respondent requests that the Center appoint a panel that is familiar with Chinese to handle this case.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed in Chinese. Both Parties have addressed all three elements of the Policy. The Response itself demonstrates that the Respondent has understood the Complaint. Prior correspondence between the Parties was in English while the Respondent’s current website is in both Chinese and English, which confirms that the Respondent is able to understand English. The Center has appointed a Panel familiar with both Chinese and English. Therefore, the Panel considers that requiring either party to translate its submissions would create an undue burden and unnecessary delay, while accepting all documents as filed in their original language causes no unfairness to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents filed in Chinese without translation.
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MATLAB trademark.
The disputed domain name wholly incorporates the Complainant’s MATLAB trademark as its dominant element.
The only additional element in the disputed domain name is the TLD suffix “.online”. A TLD suffix generally has no capacity to dispel confusing similarity between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080. In this case, the addition of the TLD suffix “.online” increases the association with the Complainant’s trademark because one format of the Complainant’s MATLAB software is called “MATLAB Online”.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant informs the Panel that the Parties have no relationship, affiliation or association and that the Complainant has not granted the Respondent any license, permission or other right by which he could own or use any domain name consisting of the MATLAB trademark. The Respondent used the disputed domain name in connection with a website that displayed links to other sites that provide the Complainant’s software, videos and documentation for download. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s name is Wang Deqing, 王德庆and there is no evidence that he has been commonly known as “matlab”. Nothing else on the record indicates that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is now for the Respondent to rebut that case by presenting facts and arguments that show that he does have such rights or legitimate interests.
The Respondent notes that he is the registrant of the disputed domain name. However, mere registration of a domain name cannot be sufficient to establish rights or legitimate interests for the purposes of the Policy, otherwise no complaint could ever succeed under the Policy, which would be an absurd result. See Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.
The Respondent argues that “matlab” is a generic technical and programming language for academic research and scientific computing. The Panel agrees that certain programming languages may be generic but notes that MATLAB is not one of them. The Complainant’s registrations of the trademark MATLAB all remain in effect and they specify particular types of software related to that programming language. Even though MATLAB may be a widely-used programming language, this does not give the Respondent the right to register a domain name that includes a trademark belonging to another party.
The Respondent submits that his website never offered the Complainant’s software, videos or documentation. However, the Panel notes that the Respondent has acknowledged that his website displayed links to other sites that did offer these materials for download. There is no suggestion that hyperlinks were merely incidental to other content on the Respondent’s website. Even though the linked sites may have been located through a search engine that does not constitute an authorization by the Complainant to download its software and other materials. Therefore, the Panel finds that this was not a legitimate noncommercial or fair use within the terms of the third circumstance of paragraph 4(c) of the Policy.
The Respondent submits a screenshot of his current website. The Panel notes that this website displays links to resources not only for MATLAB but also for other programming languages and that it also links to websites that sell books by third parties. This (subsequent) use does not create a legitimate interest in the disputed domain name within the terms of the third circumstance of paragraph 4(c) of the Policy either.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 or service on [the respondent’s] website or location.”
The disputed domain name was created in 2015, many years after the Complainant registered its MATLAB trademark, including in China. The Complainant has made extensive use of that trademark, including with a format of its software called “MATLAB Online”. The disputed domain name wholly incorporates the Complainant’s MATLAB trademark and combines it with the TLD suffix “online”, so that it is identical to the name of the Complainant’s software format and to the second-level domain in the Complainant’s official website “www.matlabonline.com” (but for the dot between the second-level and top-level domains). The Respondent’s website has displayed links to sites that offered versions of the Complainant’s MATLAB software and related materials for download. This all gives the Panel reason to believe that the Respondent knew of the Complainant’s MATLAB trademark at the time he registered the disputed domain name and deliberately targeted it.
As regards use, Internet users would tend to expect that the disputed domain name resolves to a site affiliated with, or endorsed by, the Complainant. Therefore, the disputed domain name uses the Complainant’s trademark to attract Internet users and direct them to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a service on that website. Even if Internet users who reach the website realize that it is not operated by the Complainant, by that stage the purpose of attracting them has been achieved, and users can click-through to the linked sites. The Respondent’s use of the disputed domain name in this way is intentional and, even if it is not for his own commercial gain, it brings commercial gain to the operators of the other sites to which the links resolve, which still constitutes use with intent for commercial gain. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Even if the links to sites offering programming language software are currently disabled, the Respondent’s website presents a real and ongoing threat of bad faith use of the disputed domain name. Accordingly, the Panel finds that these facts fall within the terms of paragraph 4(b)(iv) of the Policy.
The Respondent submits that the term “matlab” is still available for registration as a domain name in many other TLDs. However, the Panel does not consider that the status of other TLDs justifies a bad faith registration in the “.online” domain, particularly when registration of “matlab” in that domain name produces a name virtually identical to the Complainant’s software format “MATLAB Online”. Nor does a trademark owner waive rights to a trademark by declining to register it in every possible TLD. An applicant for domain name registration must still represent that, to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
The Respondent correctly submits that the purpose of the Complaint is to use the Complainant’s registered trademark and the UDRP to deprive the Respondent of the disputed domain name. However, the Respondent is incorrect to conclude that this constitutes reverse domain name hijacking. For the reasons set out above, the Panel finds that the Complaint was not brought in bad faith and that it does not constitute an abuse of the administrative proceeding.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <matlab.online> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: June 2, 2017