WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1Verge Internet Technology (Beijing) Co., Ltd. v. MARY HANSEN/ WhoIsGuard, Inc.
Case No. D2013-2207
1. The Parties
The Complainant is 1Verge Internet Technology (Beijing) Co., Ltd. of Beijing, China, represented by TISIZE Intellectual Property Agency CO., Ltd, China.
The Respondent is MARY HANSEN of Mcdonough, Georgia, United States of America (the “U.S.”); WhoIsGuard, Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <fuckyouku.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed in English and Chinese with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2013, 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 December 24, 2013 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 in both English and Chinese on December 27, 2013.
On December 24, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 27, 2013, the Complainant requested that Chinese be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceeding commenced on December 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 20, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 28, 2014. 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
A. Complainant
The Complainant is a company incorporated in China, the operator of the world’s second largest video sharing website, and the owner of several registrations for the trade mark YOUKU (the “Trade Mark”) in China and the U.S.
B. Respondent
The Respondent appears to be an individual with an address in the U.S.
C. The Disputed Domain Name
The disputed domain name was registered on June 16, 2012.
D. The Website at the Disputed Domain Name
The website at the disputed domain name (the “Website”) is a Chinese language website which offers tips to Internet users on how to disable third party advertising from the videos and other content featured on the Complainant’s “www.youku.com” website (the “Complainant’s Website”).
5. Parties’ Contentions
A. Complainant
The Complainant made the following submissions in the Complaint:
The Complainant was founded in 2005 and commenced use of the Complainant’s Website in 2006. In December 2010, its affiliated entity, YOUKU INC, listed on the New York Stock Exchange. By April 2010, the average number of daily visitors to the Complainant’s Website was 89 million people. By April 2013, the average number of daily visitors to the Complainant’s Website from mobile devices exceeded 150 million people. The Complainant’s Website is the most popular Chinese language video sharing website in the world, and the second most popular video sharing website, after Youtube, in the world.
The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, together with the non-distinctive and generic word “fuck”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not commonly known by the disputed domain name and is not making a bona fide noncommercial use of the disputed domain name.
The disputed domain name has been registered and is being used in bad faith. It has been used by the Respondent in respect of the Website, which features the Trade Mark and has been set up in order to damage the reputation and the commercial interests of the Complainant, by providing Internet users with tips on how to disable third party advertising featured on the Complainant’s Website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is English.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complainant has requested that Chinese be the language of the proceeding for the following reasons:
(1) The Complainant is a Chinese company;
(2) The Website is in Chinese, which shows that the Respondent is familiar with Chinese;
(3) The Respondent’s email address is “[…][email protected]” which includes the term “China”;
(4) The evidence provided by the Complainant is in Chinese.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
The Panel notes, notwithstanding the fact the Website is entirely in Chinese, according to the WhoIs search results for the disputed domain name, the Respondent appears to be an individual resident in the U.S.
The Panel also notes the Complainant has chosen to file the Complaint in both English and Chinese, which demonstrates the Complainant or its legal advisers are proficient in English. In the Panel’s view, the Complainant is therefore unlikely to suffer any significant prejudice if the language of the proceeding is English.
In all the circumstances, consistent with paragraph 11 of the Rules, the Panel determines that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through registration and use which predate the date of registration of the disputed domain name by approximately 7 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662).
The disputed domain name comprises the Trade Mark in its entirety together with the non-distinctive and generic word “fuck”. This does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by approximately 7 years. The Panel finds on the record there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain name is being used in respect of the Website so as to cause harm to the reputation and commercial revenue of the Complainant. The disputed domain name itself, containing the derogatory term “fuck” together with the Trade Mark, coupled with the content of the Website, has clearly been registered and used for the sole purpose of causing harm to the Complainant and the Trade Mark.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
There is no evidence that the disputed domain name has been registered and use for the purpose of legitimate criticism or review. To the contrary, in the Panel’s view, this is a clear cut case of tarnishment, where the disputed domain name (comprising as it does the derogatory term “fuck”) has been deliberately registered and used in respect of the Website, which is designed to harm the reputation and disrupt the business of the Complainant and the Trade Mark, by providing means for Internet users to circumvent the advertising featured on the Complainant’s Website.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, in accordance with paragraph 4(b)(iii) and the Panel’s general discretion under paragraphs 4(a) and 4(b) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <fuckyouku.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: February 11, 2014
