The Complainant is Naspers Ltd, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Wang Peng, China.
The disputed domain name <naspers.club> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 2019, 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.
On November 8, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on November 11, 2019. The Respondent requested that Chinese be the language of the proceeding on November 9, 2019.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent sent emails to the Center on November 8, 2019 and December 9, 2019. The Center proceeded with the Panel Appointment on December 16, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on December 26, 2019. 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 multinational Internet and media group headquartered in South Africa offering services in more than 130 countries. Its principal operations are Internet communications, entertainment, gaming and e-commerce. It was founded in 1915 in South Africa under the name De Nasionale Pers Berpekt (National Press Ltd) and changed its name to Naspers in 1998. In 2016, the Complainant was ranked as the largest company in Africa by market valuation and the seventh largest Internet company in the world. The NASPERS mark is used by the Complainant all over the world including in China. The Complainant is the largest single shareholder in one of China’s most valuable companies, Tencent. It acquired the shareholding in 2001. Evidence has been submitted of the extensive use by the Complainant of the NASPERS mark in China. Other UDRP panels have recognized that the NASPERS trade mark has reputation and goodwill as a result of the Complainant’s extensive use of it.
The NASPERS name is registered as a trade mark in numerous territories including China, the United States of America, the European Union, India and South Africa. The earliest trade mark registration submitted in evidence dates back to 2000 (the “Trade Mark”).
The Domain Name was registered on September 19, 2017 by the Respondent who is based in China. The Domain Name does not appear to have ever been connected to an active website. The Respondent is a domainer who has registered over 1,700 domain names including the following domain names which comprise the well known trade marks of third parties: <facetime.store>, <hisensecloud.com>, <applenewcar.com>, <nikemouse.top> and <taobaoba.org>. All these domain names are also inactive.
Prior to filing the Complaint, the Complainant’s representatives contacted the Respondent on September 3 and October 2, 2019 in an attempt to resolve the matter. No response was received by the Respondent until after the Complaint was filed when the Respondent offered to sell the Domain Name to the Complainant on November 8, 2019.
The Complainant contends that the Domain Name is identical 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 to the Complainant.
The Respondent contends that <naspers.club> stands for NAS (Netword Attached Storage) Pers (Persons) Club. The purpose of registering the Domain Name is to create a community website for web storage applications. The disputed domain name has nothing to do with the Complainant. The Complaint was an attempt by a big company to bully a weak individual. The Domain Name was legitimately registered more than two years ago by the Registrar. The Complainant should compensate the Respondent for the holding of the Domain Name because of the economic loss suffered by him in terms of time wasted.
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 a trade mark or service mark 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, 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 proceedings. 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 Domain Name is registered in the English alphabet;
- The Respondent is also the registrant of other domain names that comprise of English words including <amazingchina.win>, <everyonefantasy.xyz> and <slash.work>;
- The Respondent sent an email in English and Chinese to the Center after receipt of the Complaint;
- The Respondent corresponded with the Complainant’s representatives in English after receipt of the Complaint;
- The above indicates that the Respondent has knowledge of the English language;
- The Complainant should be spared the burden of dealing with Chinese as the language of the proceeding which will incur additional costs and cause delay because of the need for translation;
- The Respondent would have an unfair advantage if the proceeding was conducted in Chinese.
The Respondent requested that Chinese be the language of proceeding but did not submit any arguments or evidence to support such request.
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 notes that the Respondent has corresponded with both the Complainant and the Center in English which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
The Panel is satisfied that the Complainant has established that it has registered and unregistered 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 distinctive Trade Mark in its entirety. For the purposes of assessing identity and 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 “.club”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical to the Trade Mark 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 non-commercial 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 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 evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of 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 been able to find any evidence that the Respondent has any rights or legitimate interests in respect of the Domain Name. Further, the Trade Mark is well known and has no other significance other than being obviously connected to the Complainant. The Respondent has not made any 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, and is not making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent’s explanation in the Response that NASPERS is a combination of the acronyms for Network Attached Storage (NAS) Persons (Pers) and is to be used for a community who desire to build a web storage application is highly dubious especially since the combination does not make any sense and is not a common meaning associated with the term. It is typical of cybersquatters trying to make up the provenance of a word after the event. The fact that the Respondent is a domainer who has registered other domain names which comprise the famous brand names of other third parties adds to the incongruity of the explanation. There is no evidence provided that this was the intention of the Respondent when he registered the Domain Name as the Domain Name has been inactive since registration.
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 a distinctive and well known trade mark and has been recognised by other UDRP panels as such.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well known trade mark when it registered the Domain Name given the fame of the Trade Mark. It is implausible that it was unaware of the Complainant when it registered the Domain Name.
“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 3.1.1 of 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 used in bad faith. The Domain Name directs to an inactive page. WIPO Overview 3.0 states that: “from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In this case, the circumstances to be considered in combination are as follows: the Trade Mark is well known; the Respondent is a domainer; he has filed multiple domain names which comprise trade marks belonging to third parties; the explanation as to the meaning of the Domain Name is highly dubious and likely to be untrue; if in fact the Domain Name would be used as indicated, it would highly likely been to attract for commercial gain by misleading Internet users into believing that the website is authorised by or somehow connected to the Complainant; there is an indication in the Response and the correspondence between the Parties after the filing of the Complaint that the Respondent is interested in selling the Domain Name to the Complainant and the Respondent did not respond to the Complainant until after the Complaint was filed. In any event, it is implausible that there can be any good faith use to which the Domain Name may be put. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., 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 <naspers.club> be transferred to the Complainant.
Date: January 14, 2020
Stay updated! Get new cases and decisions by daily email.