WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alibaba Group Holding Limited v. Tanjiao

Case No. DCC2013-0002

1. The Parties

Complainant is Alibaba Group Holding Limited, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells., China.

Respondent is Tanjiao of Shenzhen, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain name <alimama.cc> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 1, 2013.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 16, 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.

4. Factual Background

Complainant is a global company headquartered Hangzhou, China. Complainant was originally founded in 1999 and is a provider of two online business-to-business marketplaces, one for global import and export (“www.alibaba.com”) and one for domestic trade in the PRC (“www.alibaba.com.cn” and “www.1688.com”). Complainant, through its affiliates, offers business management software and Internet infrastructure services targeted toward small businesses in the PRC. Complainant’s global import and export website (“www.alibaba.com”) had around 36.7 million registered users from more than 240 countries and regions as of December 31, 2012. Complainant’s domestic trade website (“www.alibaba.com.cn” and “www.1688.com”) had around 77.7 million registered users as of December 31, 2012. Complainant is the registered owner of numerous trademarks comprising the word ALIBABA and 阿里巴巴.

in a number of jurisdictions, including countries within Asia, Europe, North America, South America, and Australia. The Panel accepts that ALIBABA is a well-known trademark.

In November 2007, Complainant launched the brand ALIMAMA at “www.alimama.com” and “www.alimama.com.cn”. ALIMAMA is the PRC’s largest online advertising platform. Complainant’s <alimama.com> and < alimama.com.cn> domain names were originally registered on April 21, 1999 and September 28, 1999. As of January 2013, ALIMAMA has more than 6 million domestic and foreign brands and 300 million products. Complainant is the registered owner of various trademarks comprising the word ALIMAMA in a number of jurisdictions, including countries within Asia, Europe, North America, South America, and Australia. The Panel accepts that ALIMAMA is a well-known trademark.

Respondent Tan jiao is based in China. The disputed domain name <alimama.cc> was registered on November 9, 2006 to a Mr. Yang Jincheng. On September 16, 2009 the disputed domain name <alimama.cc> was transferred to Respondent. Respondent and Mr. Yang are listed at the same postal address.

5. Parties’ Contentions

A. Complainant

Complainant claims the disputed domain name is identical or confusingly similar to Complainant’s ALIMAMA trademarks because the disputed domain name contains the trademark in its entirety and because the use of a different domain name extension “.cc” is irrelevant to the determination of whether the disputed domain name is identical to Complainant’s registered trademarks. Complainant further cites a UDRP decision where it was found that the domain name extension is irrelevant to the determination and should be disregarded. See Rhode & Schwarz GmbH & Co. HG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762.

Complainant claims Respondent has no rights or legitimate interests in the disputed domain name because (1) Complainant is the registered owner of the ALIMAMA and 阿里妈妈 trademarks, (2) Complainant’s registration of the trademarks predates Respondent’s registration of the disputed domain name, (3) Complainant’s trademarks have acquired meaning through extensive use by Complainant in commerce, such that ALIMAMA and 阿里妈妈 are recognizable by consumers as being associated with Complainant, (4) the disputed domain name does not correspond to Respondent’s name and, to Complainant’s information and knowledge, Respondent does no own any trademark registrations reflecting or corresponding to the disputed domain name, and (5) the disputed domain name does not resolve to an active website and is being passively held.

Complainant claims Respondent has registered and is using the disputed domain name in bad faith because (1) Respondent has no legitimate rights or interests in the disputed domain name, (2) given the worldwide recognition of the ALIMAMA trademarks, it is inconceivable that Respondent was not aware of Complainant’s trademarks and therefore Complainant’s rights in the disputed domain name at the time of the registration of the disputed domain name, (3) ALIMAMA is a term having no common meaning in English independent of Complainant’s registered trademarks and thus there is a presumption that Respondent registered the disputed domain name motivated solely to take advantage of Complainant’s reputation, (4) Respondent’s registration and use of the disputed domain name must involve mala fides in circumstances where the registration and use of the disputed domain name was and continues to be made in the full knowledge of Complainant’s rights and where Respondent did not seek permission from Complainant for such registration and use, (5) Complainant experiences a high incidence of infringers registering domain names that are confusingly similar to its ALIMAMA trademark, (6) the disputed domain name resolved to a redirected website from around the time the disputed domain name was registered until around May 2010, where the Redirected Website contained references to two of Complainant’s other trademarks: ALIPAY and TAOBAO, (7) around May 2010 the disputed domain name began promoting a barbeque food chain store under Complainant’s registered trademark阿里妈妈 where said barbeque food store was operated by a Master Bing who allegedly registered the 阿里妈妈 trademark in 2000, yet no such registration was discovered upon a search of PRC trademarks, and where Complainant registered the trademark for food and beverage services in 2005, (8) the website at the disputed domain name is not in use as of the date the Complainant filed the Complaint, and (9) Respondent is an accomplice of Mr. Yang Jincheng.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Standard for UDRP Proceedings

According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

B. Identical or Confusingly Similar

There is no doubt that Complainant has rights in the trademark ALIMAMA (and related marks). The record shows Complainant owns trademark rights in ALIMAMA prior to the disputed domain name registration in 2006.

The record further shows that, from 2011 to at least the date of the filing of the Complaint, the disputed domain name was a passive site.

The disputed domain name features Complainant’s trademark in its entirety. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” See Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. In particular, the disputed domain name is identical to Complainant’s ALIMAMA trademark, altering only the country code top level domain “.cc”. The mere alteration of a domain name extension is insufficient to overcome a finding of confusing similarity. “[I]t is a well-established principle that the gTLD extension should be disregarded when considering the issue of whether a disputed domain name is identical or confusingly similar to a complainant’s trademark.” Caviar Petrossian v. Bihua Hosting, WIPO Case No. DCO2013-0004.

The alteration of the domain name extension does not create a new or different mark that is materially different from Complainant’s ALIMAMA trademark. It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain name.

The Panel concludes that the disputed domain name is confusingly similar to Complainant’s ALIMAMA trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the term ALIMAMA. Thus, Complainant has successfully presented a prima facie case, which Respondent has not rebutted. The Respondent has filed no response. There have been no other communications from Respondent in connection with this case. Without a response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. Further, as discussed below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy states (in part) that there is evidence of bad faith registration and use where, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website.

The record shows Complainant owns trademark rights in ALIMAMA that predate creation of the disputed domain name. The disputed domain name is identical to Complainant’s trademark. Given the global recognition of Complainant, the Panel finds that Respondent was likely aware or should have known of Complainant’s rights in the trademark ALIMAMA when registering the disputed domain name. “A finding that a respondent does not have a legitimate interest in a domain name which is confusing similar to the mark of a complainant does not automatically lead to conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.” SeePepsiCo, Inc. v. Amilcar Perez Lista dba Cybersor, WIPO Case No. D2003-0174. The record also shows that Respondent has used the disputed domain name to redirect users to “www.union.alicall.com”, a commercial website offering services related to electronics and which contained links to the Complainant’s websites “www.alipay.com” and “www.taobao.com”. The record also shows that, during the year 2010, the disputed domain name resolved to a website promoting a barbeque food chain store under Complainant’s trademark 阿里妈妈.

From its initial registration in 2006 to 2010, the disputed domain name resolved to a website unrelated to Complainant which offered services for electronic goods and contained links to Complainant’s websites “www.alipay.com” and “www.taobao.com”. This redirected website was commercial in nature. “Using a party’s name to redirect Internet users to an unrelated commercial site for profit is recognized under the Policy as evidence of bad faith registration and use.” See State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432. Further, this evidences Respondent’s familiarity with Complainant’s trademarks. During the year 2010, the disputed domain name resolved to a website for a barbeque food chain store, 阿里妈妈 operating without permission under Complainant’s trademark

The record reflects that the only trademark registration for 阿里妈妈 in relation to food and beverage belongs to Complainant. This use of Complainant’s trademarks evidences Respondent’s intention to attract users, for commercial gain, by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation, or endorsement of the website connected to the disputed domain name. From 2011 to the filing of the Complaint in this case, the disputed domain name did not resolve to an active website. Such inaction, called “passive” holding of a domain name, has been held to constitute use under certain circumstances of the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-00003.

The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <alimama.cc> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: August 30, 2013