The Complainant is Alibaba Group Holding Limited, Cayman Islands, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is De Chinese Handelsplaats B.V., the Netherlands, self-represented.
The disputed domain name <taobao.nl> is registered with SIDN through Herakles B.V.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2019. On the same day, the Center transmitted by e-mail to SIDN a request for registrar verification in connection with the disputed domain name. On July 22, 2019, SIDN transmitted by e-mail 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2019. In accordance with the Regulations, article 7.1, the due date for Response was August 12, 2019. The Center received various e-mails from the Parties between August 10 and 26, 2019, including an e-mail dated August 10, 2019, from the Respondent in which the Respondent consented to the requested transfer and an e-mail from the Complainant, dated August 19, 2019, in which the Complainant requested the Center to continue the proceedings. As the Respondent did not submit a substantial response, the Center notified the Parties of the Commencement of Panel Appointment Process on August 26, 2019.
The Center appointed Alfred Meijboom as the panelist in this matter on September 4, 2019. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
The Complainant is an Internet-based business that was formed in 1999 and has since then established leading market positions in multiple industries around the world, including commerce, online payment, cloud computing, digital media and entertainment initiatives. The Complainant owns at least 16 Chinese trademarks, with registrations dating back to 2003, that all consist of the word “taobao”, as well as registered trademarks, which are valid in the Netherlands, including:
- European Union trademark TAOBAO with number 009080029, filed on May 5, 2010, and registered on October 21, 2011, for goods and services in classes 9, 16, 35, 38, 41 and 42;
- European Union trademark TAOBAO.COM with number 006725964, filed on March 5, 2008, and registered on September 4, 2009, for goods and services in classes 9, 35, 38 and 42.
The European Union trademarks listed above are hereinafter referred to as the “TAOBAO trademarks”.
According to the Complainant the word “taobao” translates to “search for treasure” in Chinese. The Complainant uses the TAOBAO trademarks in connection to one of China’s largest online consumer-to-consumer marketplaces. The Taobao Marketplace was valued as China’s largest mobile commerce destination in terms of gross merchandise value (“GMV”) in the twelve months ended March 31, 2019. The GMV for 2018 was estimated at RMB 2,689 billion.
Based upon the information from the Registrar, the disputed domain name was registered on November 23, 2005. At present the disputed domain name resolves to a blank page. According to the Complainant, the disputed domain name resolved to an inactive site from 2014 to 2018, and to an online shopping site before 2014. The Complainant has provided historical screenshots that show that the disputed domain name redirected to the websites at “www.aliexcpress.com” and “www.kopeninchina.nl” (“www.buyinchina.nl”) in 2014 and that these websites featured the Complainant’s ALIEXPRESS and TAOBAO.COM logos.
The Complainant claim that the disputed domain name is identical or confusingly similar to the TAOBAO trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was clearly registered in bad faith, with the TAOBAO trademark in mind, and has been used in bad faith ever since.
The Respondent did not reply to the Complainant’s contentions substantively. In an e-mail to the Center dated August 10, 2019, the Respondent stated the following:
Without acknowledging the complaint (in my opinion several claims are not accurate), i do not have any problem with giving the domain away.
The authorization code to transfer and trade the domain is: [...]
I assume this will do.”
As a threshold matter, the Panel must decide whether to address the conditions for transfer under article 2.1. of the Regulations, or rather to grant a transfer as requested by the Respondent in its e-mail of August 10, 2019, without assessment of these conditions. Prior decisions in proceedings under the Uniform Domain Name Dispute Resolution Policy (“UDRP”1) (that served as a basis for the Regulations) illustrate that it is within the Panel’s discretion to choose either approach (e.g., United Pet Group Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039 finding that a detailed merits discussion is not necessary when both parties have consented to a transfer order, and finding that a full discussion of the merits was appropriate despite Respondent’s alleged willingness to unilaterally transfer).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that is also relevant for the interpretation of the Regulations, states in section 4.10 that a panel, at its discretion may find it appropriate to provide a substantive decision on the merits, regardless of the Respondent having given its consent to transfer of the disputed domain name. Scenario’s in which a panel may find it appropriate to do so include – in so far as relevant for this matter – (i) where the panel finds a broader interest in recording a pattern of bad faith conduct or (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith.
In this case, the Panel considers that the Complainant has alleged that the Respondent owns at least one other domain name containing the TAOBAO trademarks. A substantive decision may therefore be of assistance to the Complainant and other panels under the Regulations. The Panel further notes that the Respondent, although consenting to the requested transfer, has done so explicitly without acknowledging the claims of the Complaint. Furthermore, the Panel notes that the Complainant, in its e-mail of August 19, 2019 has requested the Center to proceed with the case. Under these circumstances the Panel shall provide a substantive decision on the merits.
Based on article 2.1 of the Regulations, a request to transfer the disputed domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie’) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. the respondent has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith.
It is established case law under the Regulations that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the trademark(s) on the one hand and the disputed domain name(s) on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
According to article 2.1(a) of the Regulations the Complainant can only rely on a trademark protected under Dutch law in which the Complainant has rights. Therefore, the Complainant cannot rely on its Chinese trademark registrations which are not protected under Dutch law, but only on the TAOBAO trademarks.
The Panel finds that the disputed domain name is identical to the Complainant’s relevant TABAO trademarks.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(a) of the Regulations.
Article 2.1(b) of the Regulations requires the Complainant to establish that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008‑0002).
The Panel is satisfied that the Complainant has made such a prima facie case, asserting, undisputed by the Respondent, that the Complainant never authorized the Respondent to use or register a domain name which includes the Complainant’s TAOBAO trademarks, that the Respondent was or are not known by the disputed domain name and that the Respondent does not own any registered trademarks containing the word “taobao”.
Under these circumstances, the Panel finds that the Complainant has satisfied the requirement of article 2.1(b) of the Regulations.
Article 2.1(c) of the Regulations requires the Complainant to show that the disputed domain name was registered and/or is being used in bad faith.
Although the registration date of the disputed domain name predates the registration dates of the Complainant’s respective TAOBAO trademarks, relevant to standing under the Regulations, the Respondent has not disputed the Complainant’s contention that the Respondent, at the time of registration of the disputed domain name, must have been aware of the Complainant’s Chinese trademarks for TAOBAO and its use of such trademarks for the Complainant’s online marketplace. The Complainant has demonstrated that, prior to 2014, the disputed domain name resolved to a shopping website, which in turn referred to two websites that incorporated the Complainant’s ALIEXPRESS and TAOBAO.COM logo’s. The Panel is satisfied that the Respondent purposely designed the website to which the disputed domain name resolved to deceive Internet users into believing that such website and the disputed domain name were associated with the Complainant. The Respondent’s attempt to establish affiliation with the Complainant is in itself evidence of the fact that Respondent is using the disputed domain name in bad faith (e.g., Roraj Trade LLC v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Cathusia Orna, WIPO Case No. DNL2018-0047). The current passive holding of the disputed domain name does not prevent a finding of bad faith use.
As the finding of use of the disputed domain name in bad faith is sufficient to satisfy the requirement of article 2.1(c) of the Regulations, there is no need for the Panel to decide if the Respondent registered the disputed domain name in bad faith under the circumstances that the disputed domain name was registered several years prior to the Complainant’s first application for the TAOBAO trademarks in the European Union, while the Respondent, at the time of registration of the disputed domain name was very likely aware of the Complainant having and using use Chinese trademarks, including for TAOBAO.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(c) of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <taobao.nl> be transferred to the Complainant.
Date: September 18, 2019
1 While the Complaint is brought under the Dispute Resolution Regulations for .nl Domain Names, and not the UDRP, given the similarities between the two, where applicable, the Panel considers UDRP precedent and the WIPO Overview 3.0 relevant to the current proceeding, and will refer to it where appropriate.
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