The Complainant is Alibaba Group Holding Limited of British West Indies, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells, China.
The Respondent is Peng Zengli of Xiamen, Fujian, China.
The disputed domain name <alibaba.la> (the “Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2013. On July 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 26, 2013, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 2, 2013. 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 belongs to the “Alibaba Group” originally founded in Hangzhou, China in 1999. The Alibaba Group operates two online business-to-business (B2B) marketplaces: a global trade marketplace (“www.alibaba.com”) for importers and exporters and a Chinese marketplace (“www.alibaba.cn” and “www.1688.com”) for domestic trade in China. The Alibaba Group also offers business management software and Internet infrastructure services for small businesses in China, and incubates e-commerce talent for Chinese small businesses. The Alibaba Group has offices in around the world, including in 70 cities in China. In 2011, the Alibaba Group’s flagship company, Alibaba.com, reported a total revenue of about RMB 6.41 billion.
As of December 31, 2012, the global marketplace (“www.alibaba.com”) had about 36.7 million registered users from over 240 countries and showcased over 2.8 million supplier storefronts. The Chinese marketplace alone had about 77.7 million registered users and showcased over 8.5 million supplier storefronts. The Alibaba Group also operates other online platforms (e.g., “www.taobao.com”, “www.tmall.com”, “www.etao.com”, “www.juhuasuan.com”, “www.alipay.com”, “www.alimama.com”, “www.aliyun.com”).
The Complainant owns various trade mark registrations incorporating the words ALIBABA or ALIBABA.COM, including the following:
Jurisdiction | Trade mark no | Registration date |
|
China |
2021936 |
May 7, 2007 |
|
China |
3068458 |
April 28, 2003 |
|
Australia |
810380 |
October 14, 1999 |
|
European Union (CTM) |
4534319 |
August 2, 2006 |
|
United States of America |
2851634 |
July 17, 2003 |
The Complainant also owns trade mark registration for the Chinese characters 阿里巴巴 (e.g., China trade mark no 1072264 registered on August 7, 1997).
The Complainant is the registrant of a few hundred domain names incorporating the word “Alibaba”, including <alibaba.com>, <alibaba.hk>, <alibaba.net> and <alibaba.cn>, some of which date as far back as 1999.
The Disputed Domain Name was registered on March 25, 2013. As of August 1, 2013, the Disputed Domain Name resolved to a Chinese language website which offered links to the Complainant’s websites as well as to other websites. The website also features prominently the Chinese characters “阿里搜”.
The Respondent is an individual with an address in China. Other than the WhoIs information of the Disputed Domain Name, not much else is known about the Respondent. The Respondent’s address on record refers to the city of Xiamen in China but does not include any street address or zip code. The Respondent has registered 26 domain names including <baiduglass.net> and <baiduyanjing.net>.
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks ALIBABA and ALIBABA.COM. The country code level domain <.la> should be disregarded in comparing the Disputed Domain Name with the Complainant’s trademarks;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent registered the Disputed Domain Name at least 14 years after the Complainant commenced use of the ALIBABA trade mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Respondent does not own any trade mark registrations corresponding to the Disputed Domain Name in China and in the Lao People’s Democratic Republic. The Disputed Domain Name resolves to a search engine and such use does not confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use. The Respondent is aware of the Complainant’s ALIBABA trademarks and its fame and notoriety. The Respondent’s activities are an attempt at trading off the Complainant’s goodwill in the ALIBABA trademarks; and
3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has engaged in a pattern of illegitimate domain name registrations including of <baiduglass.net> and <baiduyanjing.net> which are references to China’s leading search engine <baidu.com>. The Respondent is in the practice of domain name hijacking of famous brands. The Respondent did not seek the Complainant’s consent to use the ALIBABA trademarks. The Respondent is seeking to profit from an unauthorized association with the Complainant’s ALIBABA trademarks with the intent to divert customers away from the Complainant, cause confusion in the market place, or otherwise trade on the goodwill and name of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Complainant is required to establish all three limbs of paragraph 4(a) of the Policy to succeed in this proceeding. The Panel shall consider each of these three limbs in turn.
The Complainant’s trademark registrations for ALIBABA and ALIBABA.COM are direct evidence of their rights in them. Disregarding the country code level domain <.la>, the Disputed Domain Name constitutes entirely the word ALIBABA. As such, the Disputed Domain Name is identical or confusingly similar to the trademark ALIBABA in which the Complainant has rights. The first limb of paragraph 4(a) is clearly established.
The Panel accepts that the trademark ALIBABA is well-known (at least in China) on the evidence. The Disputed Domain Name links to websites associated with the trademark ALIBABA. The Panel is convinced by the evidence in this proceeding that the Respondent is well aware of the Alibaba Group and the trademark ALIBABA. There is no evidence to suggest that the Respondent is in any way commonly known by the Disputed Domain Name. The Complainant has also confirmed that the Respondent has not sought permission from the Complainant to use the trademark ALIBABA. There is also nothing in the evidence that indicates that the Respondent is offering any goods or services in good faith or is using the Disputed Domain Name for a legitimate noncommercial or fair purpose.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Since the Respondent has chosen not to challenge the Complaint by responding, the prima facie case stands. The Panel accordingly holds that the second limb of paragraph 4(a) is also established.
As stated above, the Panel finds it inconceivable that the Respondent is not aware of the trademark ALIBABA. The Respondent’s registration and use of the Disputed Domain Name suggests circumstances of opportunistic bad faith.
Paragraph 4(b)(ii) of the Policy identifies a specific situation of bad faith registration and use:
“you have 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 you have engaged in a pattern of such conduct.”
The Complainant has submitted evidence that the Respondent has engaged in a pattern of conduct of hijacking famous trademarks as domain names, notably <alibaba.la>, <baiduglass.net> and <baiduyanjing.net>. This is a serious allegation which if untrue should in the Panel’s view reasonably elicit a response from a person who registered a domain name in good faith. The Respondent’s silent response is highly telling and encourages the Panel to draw an adverse inference that the Respondent is unable to refute the claim.
Further, the evidence shows that the manner in which the Disputed Domain Name is used indicates an intention on the part of the Respondent to associate the Disputed Domain Name and the website resolved from it to the Complainant’s ALIBABA trademark when no such association is made out on the facts. The totality of the circumstances lead the Panel to conclude that the Respondent has registered and used the Disputed Domain Name in bad faith at least under paragraph 4(b)(ii) and 4(b)(iv) of the Policy. Therefore, the Panel determines that the third and final limb of paragraph 4(a) is hereby established by the evidence.
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 <alibaba.la> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: October 1, 2013