The Complainant is Hillsong Church, Inc., Australia, internally represented.
The Respondent is HUANG GUANGJIN aka HUANGGUANGJIN, China.
The disputed domain name <hillsongonline.com> (the “Domain Name”) is registered with Cloud Beauty, LLC (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2020 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 amendment to the Complaint in English on April 8, 2020.
On April 7, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 8, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020.
On May 1, 2020, the Center received an email communication from the Complainant.
The Center appointed Karen Fong as the sole panelist in this matter on May 12, 2020. 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 a Christian church founded in Australia in 1983. It has churches in city centers in 28 countries around the world and has an average global attendance of 150,000 weekly. The Complainant is well known for its worship music and in 2018 won a Grammy award for one of its songs. It also organizes global Christian conferences which are attended by Christians all over the world. The church services, music and conferences are all offered under the name HILLSONG.
The Complainant has various registered trade marks for HILLSONG (stylized), including the International Trade Mark Registration Number 810901 registered on May 29, 2003 designating many countries including China (the “Trade Mark”).
The Complainant’s website is connected to the domain name <hillsong.com>. The Complainant is active online and offers web streaming of video content and publishing information under the Trade Mark. The link to “www.hillsong.com/online” connects to the Complainant’s Online Church platform.
The Respondent is based in China and registered the Domain Name on June 9, 2019. At the time of filing of the Complaint, the Domain Name resolved to a pornographic website. On May 1, 2020, the Complainant informed the Center that malware attempts had been administered from the website at the Domain Name onto computers. The Domain Name is presently connected to a gaming and pornographic website with graphic photos of scantily dressed and naked women on the home page (the “Website”).
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The original informal pre‐complaint correspondence between the Complainant and the Registrar was conducted in English;
- The Trade Mark in the Domain Name is a unique English word;
- The Respondent ought to have known the Trade Mark when he registered the Domain Name since it is famous;
- The use of the Trade Mark in English indicates that the Respondent is familiar with the English language;
- The Complainant is not familiar with Chinese language and it conducts its business primarily in English;
- Conducting the proceeding in Chinese would be procedurally unfair to the Complainant.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts some of the Complainant’s submissions regarding the language of the proceeding. Some of the reasons given are not relevant in the context of making a decision about the language of the proceeding. However, the Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s Trade Mark in its entirety and the descriptive term “online”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that 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 does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the Complainant is not aware of any other organisation that owns a similar mark. Moreover, the Panel finds that the Trade Mark is well known and has no other significance other than being obviously connected to the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Trade Mark is an invented word without any significance other than being the name of the Complainant. Top results through a Google search reveal that the Trade Mark only references the Complainant.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s Trade Mark when he registered the Domain Name given the above. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also being used in bad faith. The Website, offering gambling services and adult content, is set up for the commercial benefit to the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent especially during this period of a global pandemic when churches in most countries are shut and services are being offered online. The Domain Name is likely to confuse Internet users trying to find the Complainant’s website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. Such confusion is potentially detrimental to the Complainant given that the content of the Website is is related to gambling services and adult content. The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website is authorised or endorsed by the Complainant. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hillsongonline.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 23, 2020