WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alibaba Group Holding Limited v. Domain Administrator, See PrivacyGuardian.org / Joseph Ong

Case No. D2019-2088

1. The Parties

The Complainant is Alibaba Group Holding Limited, Cayman Islands, United Kingdom, represented by Simmons & Simmons, Hong Kong, China.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Joseph Ong, Philippines.

2. The Domain Name and Registrar

The disputed domain name <email-alipay.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 September 2, 2019, 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 September 3, 2019.

The Center verified that the Complaint together with the amended 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, and the proceedings commenced on September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.

The Center appointed Scott R. Austin as the sole panelist in this matter on October 10, 2019. 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.

4. Factual Background

The Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support:

1. that it was founded in China in 1999 and is a global leader in the field of e-commerce;

2. that through its subsidiaries and affiliates it has offices in about 70 cities across China, as well as in Asia, the United States and Europe;

3. that it established through its affiliates the brand “Alipay” and launched the Alipay platform (“www.alipay.com”) in 2004 (“Alipay platform”);

4. that the Alipay platform “is the world’s leading third-party payment platform and includes partnerships with more than 250 financial institutions including leading banks and credit/debit card providers in Hong Kong, Mainland China and internationally”;

5. that “the Alipay platform serves over 1 billion users in 55 countries and regions providing payment solutions for hundreds of thousands of third party merchants, covering wide range of industries such as online purchases, digital communications, commercial services, air ticketing, and utilities.”;

6. that “[o]n November 11, 2018, USD 30.8 billion of gross merchandise volume was settled through Alipay on Alibaba’s China and international retail marketplaces.”;

7. that it holds over 100 domain name registrations containing the mark “ALIPAY”, the earliest of which is <alipay.com> registered on October 8, 2004, which provides access to a website it uses to promote and sell its services;

8. that the Complainant owns numerous trademark registrations for ALIPAY (the “ALIPAY Mark”) in various countries around the world (dating from December 2004), including the United States, China, New Zealand and the Philippines (dating from September 2011);

9. that the Complainant and its affiliates “have marketed extensively the “Alipay” brand for many years through different marketing campaigns and have received a significant amount of media attention which has resulted in a high public profile;

10. that the disputed domain name was registered on March 27, 2019; and

11. that as shown in screenshots provided by the Complainant as of August 2, 2019, the disputed domain name resolved to a website featuring gambling and with links to internet gambling services.

5. Parties’ Contentions

A. Complainant

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has established trademark rights because the disputed domain name contains the ALIPAY Mark in its entirety, adds the common descriptive term “email” with a hyphen, and with a generic Top-Level Domain (“gTLD”), which additions do not prevent the confusing similarity between the Respondent’s disputed domain name and the Complainant’s ALIPAY Mark.

2. Respondent has no rights or legitimate interests in the disputed domain name because: a) “Complainant has no relationship with Respondent, and Complainant has not given Respondent permission to use Complainant’s ALIPAY Trade Marks,” and “there is nothing in Respondent’s WHOIS information indicating that Respondent is commonly known by the Disputed Domain Name”; b) “Complainant’s mark is so well known and recognized, there can be no legitimate use by Respondent”; and c) “Respondent’s use of the well-known ALIPAY mark without permission constitutes an infringement or violation of the Complainant’s valuable trademark rights.”

3. The disputed domain name has been registered and is being used in bad faith because: a) the Respondent had actual notice of the Complainant’s ALIPAY Mark given “Complainant has prior rights in Complainant’s ALIPAY Marks which precede Respondent’s registration [of the disputed domain name] by 15 years”; b) “The Disputed Domain Name resolved to a webpage displaying an advertisement for a gambling website named “bet365”; and c) “Respondent clearly used the ALIPAY mark to secure visitors to the site for commercial gain.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to a mark in which the Complainant has rights.

Based upon the trademark registrations cited by the Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to the ALIPAY Mark, including through registrations in the Philippines where the Respondent is located, as revealed by the Registrar after the filing of the Complaint.

For the disputed domain name to be found identical or confusingly similar to the ALIPAY Mark, the relevant comparison is with the second-level portion of the disputed domain name, “email-alipay”, as it is well-established that the gTLD “.com” may generally be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 (“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Other UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term, and a gTLD to the complainant’s mark does not negate the confusing similarity between the disputed domain name and the mark under paragraph 4(a)(i) of the Policy. See ZB, N.A., a national banking association, dba Zions First National Bank v. infoGroup, WIPO Case No. D2017-0716 (panel finds that adding “email-” does not prevent confusing similarity between the complainant’s ZION BANK mark and the respondent’s disputed domain name <email-zionsbankpf.com>).

When the gTLD identifier is ignored, the disputed domain name consists of the Complainant’s ALIPAY trademark and the common term “email” separated by a hyphen. Thus, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights and the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent lacks rights and legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: a) “Complainant has no relationship with Respondent, and Complainant has not given Respondent permission to use Complainant’s ALIPAY Trade Marks,” and “there is nothing in Respondent’s WHOIS information indicating that Respondent is commonly known by the Disputed Domain Name”; b) “Complainant’s mark is so well known and recognized, there can be no legitimate use by Respondent”; and c) “Respondent’s use of the well-known ALIPAY mark without permission constitutes an infringement or violation of the Complainant’s valuable trademark rights.”

Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use the ALIPAY Mark. As the Complainant points out, as shown in the WhoIs record submitted in the Complainant, nothing in the Respondent’s WhoIs information indicates that the Respondent is commonly known by the disputed domain name and the Respondent has not provided any evidence to the contrary.

Nor has the Respondent shown that it has made a bona fide use of the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website displaying an advertisement for a gambling website named “bet365”, which contained sponsored links to various other third-party Internet gambling services. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.

The Panel agrees with the Complainant that “Respondent’s sole intent in registering and maintaining the Disputed Domain Name is misleadingly to divert consumers looking for Complainant’s services and to profit from Complainant’s trademarks by advertising third party gambling services.” Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered and uses the disputed domain name in bad faith.

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

The disputed domain name was registered approximately 15 years after the Complainant first registered its ALIPAY trademark. The Complainant also has shown that it has prior established trademark registrations in the Respondent’s own country of the Philippines. The evidence on the record provided by the Complainant with respect to the targeted use of its globally famous trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely had knowledge of the Complainant's famous ALIPAY Mark and used that knowledge to intentionally select and incorporate the ALIPAY Mark into the disputed domain name to profit from it. Previous UDRP panels have held under similar circumstances that actual knowledge of a complainant’s distinctive mark prior to registering the disputed domain name may reasonably be inferred and may constitute bad faith registration. See WIPO Overview 3.0, section 3.2.; see, e.g., Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524.

Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. Respondent’s use of the disputed domain name, therefore, falls under paragraph 4(b)(iv) of the Policy, as the Respondent intentionally attracts Internet uses to its own website by creating a likelihood of confusion with the Complainant’s mark, and the Respondent commercially benefits from this confusion by offering gambling services at its site as well as from click through advertising for third party gambling services. Such exploitation of trademarks to obtain click-through commissions from the diversion of Internet users has been considered in many decisions to be a common example of bad faith as referred to in paragraph 4(b)(iv) of the Policy. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (“Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website.”)

Finally, as the Complainant contends, the Respondent’s website accessed through the disputed domain name is dedicated to Internet gambling and pay-per-click advertising of third party Internet gambling services. As such, the Respondent’s use of the disputed domain name has the potential to falsely associate the Complainant with gambling and thereby tarnish the Complainant’s ALIPAY Mark, reputation, and goodwill. See United Parcel Service of America, Inc. v. Intermos/Alex Storm, WIPO Case No. D2004-0211. The Panel agrees and finds these circumstances to be additional evidence of bad faith registration and use of the disputed domain name.

For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith and the Complainant has satisfied the third element of the Policy.

7. Decision

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 <email-alipay.com> be transferred to the Complainant.

Scott R. Austin
Sole Panelist
Date: October 24, 2019