The Complainant is Ya-Ya Shirt Company Holding B.V., Netherlands, represented by Koster & Partner Ltd., Netherlands.
The Respondent is Yang Lin（杨林）, China, represented by 上海市恒业律师事务所, China.
The disputed domain name <yaya.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. 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 September 27, 2020, 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 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent another communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 30, October 5 and October 12, 2020, the Respondent requested that Chinese be the language of the proceeding. The Complainant filed an amended Complaint on October 1, 2020 in which it requested that English be 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 October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. On October 13, 2020, the Complainant offered to purchase the disputed domain name for USD 1,500. The Respondent did not reply to the offer. The Response was filed in Chinese with the Center on October 31, 2020. On November 2, 2020, the Complainant sent an email to the Center stating that it could not understand the Response because it was in Chinese.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 19, 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 Dutch company that sells fashion and home décor under the YAYA brand. It is part of the Yaya corporate group. According to the Complaint, the Complainant has been using the tradename Yaya and Ya-Ya since 1992 in the Netherlands and “since early 00” outside the Netherlands. The Complainant holds trademark registrations for various marks in multiple jurisdictions. Its earliest trademark registrations for each mark are as follows:
Trademark | Jurisdiction | Registration No. | Registration date | Class |
|
YA YA SHIRT COMPANY |
Benelux |
533105 |
February 5, 1993 |
25 |
|
YA-YA |
Benelux |
653148 |
September 8, 1999 |
14, 18, 25 |
|
YA-YA |
International |
835786 |
September 15, 2004 |
25 |
|
YA-YA |
International |
869809 |
February1, 2005 |
14, 18, 25 |
|
YAYA |
European Union |
003586518 |
July 7, 2005 |
18, 25, 35 |
|
YAYA |
Benelux |
851984 |
January 12, 2009 |
14, 18, 25 |
|
YAYA |
International |
1229345 |
October 6, 2014 |
18, 25, 35 |
These trademark registrations remain current. International registration number 869809 designated multiple jurisdictions, including China, where protection was granted in class 25 only. The other international registrations listed above did not designate China. The Complainant also registered the domain name <yaya.nl> on October 19, 1999 and the domain name <yaya.eu> on July 11, 2006, which it uses in connection with online stores.
The Respondent is an individual resident in China.
The disputed domain name was registered on November 27, 1999. It formerly resolved to a webpage in English and Chinese that displayed the following notice:
“[yaya.com] is for sale
If you would like to purchase this domain, please click here to make an offer. Or Contact us.”
Internet users who clicked on the webpage were redirected to a domain name broker’s website that invited them to submit a bid for the disputed domain name. The Complainant began to submit bids for the disputed domain name in 2015. During correspondence with the Complainant in 2016, the broker advised that she had communicated with the owner of the disputed domain name and that his asking price was above USD one million. The Complainant refused to pay that price and continued to submit bids on the broker’s website, the highest of these being USD 25,000. The Complainant’s submitted its last bid on the broker’s website on September 3, 2020, shortly before it filed the Complaint, but it made a further offer to purchase the disputed domain name by email during this proceeding on October 12, 2020, after filing the amended Complaint. At the time of this decision, the disputed domain name no longer resolves to any active webpage; rather, it is passively held.
No reason was advanced for the 21-year delay in bringing the Complaint.
The disputed domain name is identical to the Complainant’s YAYA mark and trade name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant nor otherwise authorized to use the YAYA mark. The Respondent is not known as Yaya and has no relevant trademark rights. The Respondent’s name is Yang Lin: the domain name <yanglin.com> is passively held and the domain name <yanglin.cn> is also for sale with the same sales interface as the disputed domain name. The disputed domain name has not resolved to any active webpage since at least 2016. Yaya does not have a special meaning in Chinese. The Respondent only uses the disputed domain name to offer it for sale.
The disputed domain name was registered and is being used in bad faith. The Respondent has concealed his identity. The Respondent did not acquire the disputed domain name until 1999, years after the Complainant’s first use of its trade name in 1992 and its trademark in 1993, and after the Complainant’s registration of its domain name <yaya.nl> in October 1999. The disputed domain name is identical to the Complainant’s YAYA mark and is clearly intended to mislead and divert the Complainant’s customers. The Respondent has no reasonable justification for choosing the disputed domain name. The Respondent acquired it for the purposes of selling it for an amount in excess of the Complainant’s out-of-pocket expenses (USD one million). The Respondent is preventing the Complainant from registering its YAYA mark in the relevant Top-Level Domain. The disputed domain name has been registered for the purposes of disrupting the Complainant’s business. By using the disputed domain name, the Respondent attracts for commercial gain Internet users to his website to generate traffic. The Respondent’s registration of the disputed domain name prevents the Complainant from selling its products outside the Netherlands. The Registrar, who is most likely the Respondent, or at least communicated in the name of the holder of the disputed domain name, is in the business of registering and passively holding thousands of domain names presumably with the intent to monetize them.
The Respondent submits that the proper language of this proceeding should be in Chinese. The applicable law for this proceeding should be Chinese law. The Registration Agreement is Chinese and the Respondent is Chinese. The webpage to which the disputed domain name resolves is directed at Chinese users. The judgment of whether the Respondent has acted in bad faith should be based on the Respondent’s circumstances.
The disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has no trademark rights in China. Yaya is a Pinyin transcription of many different Chinese characters: 牙牙学语 (“yáyá xuéyŭ”) has referred to the sound of baby talk since the Tang dynasty; 鸭鸭 (“yāyā”) commonly refers to a little duck; while 丫丫(“yāyā”), 雅雅 (“yǎyǎ”), 芽芽 (“yáyá”) and 娅娅 (“yàyà”) are common names. There are many Chinese trademark registrations for YAYA. The Respondent’s use of the disputed domain name will not cause confusion with the Complainant’s mark because he plans to use it in connection with a games website, which is dissimilar from the Complainant’s goods and services; the Complainant’s YAYA mark has no reputation in China; and the website at the disputed domain name used to be in Chinese, foreign consumers cannot understand a website in Chinese, therefore there will not be any confusion. The YAYA trademark is not distinctive in English either: there are many songs and music albums named “yaya”.
The Respondent has rights or legitimate interests in the disputed domain name. The Respondent’s daughter’s nickname is “Yaya” and he always hoped to create a website to express his love for her. The Respondent lawfully acquired the disputed domain name. The letters “yaya” are a common Pinyin transliteration in China. They are also a common song lyric in English. “Yanglin” is a Pinyin transcription of many different Chinese characters. The Complaint refers to the domain name <yanglin.cn> but this has no connection with the Respondent. The Complainant has not proven there is any relationship between the domain name <yanglin.cn> and the disputed domain name <yaya.com>.
The disputed domain name has not been registered and used in bad faith. “Yaya” is a household word in China. YAYA is a trademark with low inherent distinctiveness. “Yaya” is the Respondent’s daughter’s nickname, which is why he registered the disputed domain name. The Respondent’s personal data is privacy protected in the public WhoIs database but this privacy protection is applied by the Registrar, not the Respondent, to comply with the General Data Protection Regulation (GDPR). The Complainant has no trademark registration in China and has not sold goods in China. The Complainant’s trademark is completely unknown in the Chinese market and the Respondent could not have known of it. Because the Complainant’s trademark is completely unknown in China, no customers will be misled in the Chinese market. The Complainant has no business in China. The Complainant can use the domain names <yaya.nl> and <yaya.eu> and does not need the disputed domain name. The Respondent is unwilling to sell the disputed domain name. He did not offer to sell it for USD one million. The Respondent does not know the broker and the Respondent disputes the authenticity of the evidence regarding the broker.
The Respondent submits that the applicable law in this proceeding is Chinese law.
The Panel notes that the Respondent is party to the Registration Agreement, which incorporates the Policy. Paragraph 4 of the Policy provides that the Respondent is required to submit to a mandatory administrative proceeding in a dispute such as the present one. Paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Given that the Policy is designed to operate in a global context, the Panel does not consider itself required, as a general matter, to resort to particular national laws. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.15.
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 the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese; it has corresponded with the Registrar in English; the disputed domain name was offered for sale in English at a price quoted in US dollars; and translation of the Complaint into Chinese would cause undue delay and substantial expense for the Complainant.
The Respondent requests that the language of the proceeding be Chinese. His main arguments are that Chinese is the language of the Registration Agreement. The Complaint is formally deficient because it is in English which deprives the Respondent of a right to reply. The Respondent does not understand English. The Respondent needs to spend a lot of time and energy to understand the Complaint and organize an effective defense.
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 in this proceeding the Complaint and amended Complaint were filed in English and the Response was filed in Chinese. The webpage to which the disputed domain name resolves is in both English and Chinese, from which it can be inferred that the Respondent is able to communicate in those languages. The Response refers to song lyrics in English, which confirms that inference. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. On the other hand, the Complainant submits that it cannot understand the Response. The Panel recalls that the Rules basically provide for a single submission from each Party. The Panel sees nothing in the Response that the Complainant should not have anticipated in the amended Complaint. Therefore, the Panel considers that requiring the Respondent to translate the Response into English would create an undue burden and delay. The Panel does not consider that the above approach causes 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 the Panel will accept all submissions as filed in their original language, 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.
The Panel recalls that the burden of proof of each of the above elements is borne by the Complainant.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the YAYA mark, the YA-YA mark and the YA YA SHIRT COMPANY mark.
The operative element of the disputed domain name is identical to the YAYA mark and, but for the omission of the hyphen, the YA-YA mark. The operative element of the disputed domain name is also the initial element of the YA YA SHIRT COMPANY mark, omitting the space between YA and YA for technical reasons, and the merely descriptive words “shirt” and “company”.
The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). A gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to trademarks 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 disputed domain name formerly resolved to a webpage that merely offered it for sale. The Complainant submits that the Respondent is not a licensee of the Complainant nor otherwise authorized to use the YAYA mark. At the time of this Decision, the disputed domain name no longer resolves to an active website. The Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent has identified himself in the Response as 杨林, which is transliterated in the Registrar’s WhoIs database as “Yang Lin”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The disputed domain name formerly resolved to a website that offered it for sale. It no longer resolves to any active website. The Panel does not consider either use to constitute a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.
In summary, 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.
Turning to the Respondent’s arguments, he points out that “yaya” is a transliteration of various pairs of Chinese characters. He also asserts that it is his daughter’s nickname. He submits that he intended to create a website to express his love for his daughter and to use the disputed domain name with a games website. However, the Respondent does not allege that he has actually used the disputed domain name in this way and he provides no evidence of any demonstrable preparations to do so.
The Respondent argues that he lawfully registered the disputed domain name with the Registrar. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.
Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case regarding the second element of the Policy.
Therefore, based on the record of this proceeding, the Panel finds that 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. It is not an exhaustive list of such circumstances. However, a conclusion that a domain name was registered in bad faith requires a finding that the respondent targeted a complainant’s mark.
The disputed domain name was registered on November 27, 1999, years before the Complainant’s trademark registrations for YAYA and years before all its trademark registrations for YA-YA outside the Benelux. The Panel will not consider these trademark registrations further because, where a respondent registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1.
The disputed domain name was registered years after the Complainant’s trademark registration for YA YA SHIRT COMPANY, and months after it applied for its first trademark registration for YA-YA. Both registrations were made in the Benelux whereas the Respondent is resident in China. The Complainant submits that the disputed domain name is clearly intended to mislead and divert the Complainant’s customers. However, there is no evidence on record of use of the Complainant’s marks prior to the registration of the disputed domain name in 1999 and, by the Complainant’s own admission, it did not begin to sell goods outside the Netherlands until 2000, i.e., after the registration of the disputed domain name. While the Complainant registered its domain name <yaya.nl> shortly before the registration of the disputed domain name, there is no evidence on record that the website was active at that time: the Complainant provides archived screenshots of the Respondent’s webpage but only current screenshots of its own website. While the Complainant’s website includes a map of store locations in the Netherlands and neighbouring countries, there is no evidence of use of any of the Complainant’s marks anywhere else. There is no evidence of any third parties using any mark to refer to the Complainant or its goods and services. Accordingly, this evidence is not sufficient to give rise to an inference that the Respondent was aware, or should have been aware, of the Complainant’s marks at the time he registered the disputed domain name in 1999.
The Complainant submits that “yaya” means nothing in Chinese and that the Respondent has no reasonable justification for choosing the disputed domain name. However, the Panel notes that “yaya” is a transliteration of various pairs of Chinese characters including鸭鸭, 丫丫, 雅雅 and 芽芽with usages that have nothing to do with the Complainant. According to evidence provided by the Respondent, image and text searches in the Baidu search engine for these pairs of characters indicate that they variously refer to ducks, actors’ stage names and fictional characters’ names. Further, there are Chinese trademark registrations that consist of, or incorporate, the letters “yaya” in respect of a range of classes of goods and services, and many more that incorporate as their initial element characters that can be transliterated as “yaya”. Accordingly, there is no reason for the Panel to find that the Respondent’s registration of “yaya” in the disputed domain name implies some prior knowledge of the Complainant or its marks.
The Panel accepts the Complainant’s evidence that a domain name broker, acting on behalf of the Respondent, quoted an asking price for the disputed domain name of over USD one million in 2016. The Respondent’s website invited Internet users to contact that broker regarding the purchase of the disputed domain name and the Respondent is responsible for the broker’s representations in that regard. However, even though the Respondent has not documented any out-of-pocket costs directly related to the disputed domain name, the Panel is unable to draw the inference from the high price that the Respondent knew, or should have known, of the Complainant’s mark seventeen years earlier, in 1999, because there is no evidence of reputation of the Complainant or its marks at that time, and there are alternative plausible explanations for the choice of the disputed domain name.
The Complainant notes the close similarity between the webpage to which the disputed domain name resolves and the webpage to which the domain name <yanglin.cn> resolves, the passive holding of <yanglin.com>, and the use of a privacy service. The Panel sees nothing in this evidence that indicates bad faith in the circumstances of this case.
The Complainant also argues that the Registrar’s domain name portfolio is evidence of bad faith. However, the Complainant provides no evidence to support its assertion that the Registrar is “most likely” the Respondent nor any evidence that the Registrar has registered other domain names in bad faith.
The Complainant argues that it cannot sell its goods outside the Netherlands without the disputed domain name. The Panel finds this argument lacking in a factual basis.
Therefore, the Panel does not find that the disputed domain name has been registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: December 2, 2020