Complainant is Alize-SFL, of France, represented by Inlex IP Expertise, of France.
Respondent is Ali Inc., Ali B Abook, Malaysia.
The disputed domain name <alibabook.com> is registered with UK2 Group Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 17, 2008, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On December 22, 2008, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing that the Registrar's contact information for the disputed domain name differed from the indicated Registrar's contact information in the Complaint. The Center sent an email communication to the Complainant on December 24, 2008 providing the Registrar's current contact information, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 29, 2008. The Center verified that the Complaint together with the amendment to 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 January 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 2, 2009.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on February 6, 2009. 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.
Complainant is the owner of the mark ALIBABOOK, registered in France and Benelux in 1998. Complainant conducted Internet business under the domain name <alibabook.com> from 1998 to 2008, when an error caused the registration to expire. Respondent's predecessor registered the domain name when it expired and, shortly after being contacted by Complainant, transferred it to Respondent. The domain name resolves to a website containing links to competitors in the bookselling business.
A. Complainant makes the following assertions:
1. Respondent's <alibabook.com> domain name is confusingly similar to Complainant's ALIBABOOK mark.
2. Respondent does not have any rights or legitimate interests in the <alibabook.com> domain name.
3. Respondent registered and used the <alibabook.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
1. the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Complainant has multiple registrations of its ALIBABOOK mark with French and Benelux trademark authorities. The Panel finds this is sufficient to establish Complainant's rights in the ALIBABOOK mark pursuant to Policy paragraph 4(a)(i). See Trip Network Inc.d/b/a Cheap Tickets, Inc. v. Sigfredo Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant's federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy paragraph 4(a)(i)); see also Metropolitan. Life Insurance. Company v Robert Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant's rights in a mark under Policy paragraph 4(a)(i)).
Respondent's <alibabook.com> domain name incorporates Complainant's entire mark, merely adding “.com.” The generic top-level domain “.com” is irrelevant in determining similarity, as it is a necessary part of the Internet address. The Panel finds the disputed domain name is confusingly similar to Complainant's mark pursuant to Policy paragraph 4(a)(i). See Jerry Damson, Inc. v Texas. International Property. Associates., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”)
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).
Complainant has the initial burden to make a prima facie case in support of its allegations. Once complainant has accomplished this, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy paragraph 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Document Technologies, Inc v. International Electronic. Communications Inc., WIPO Case No. D2000-0270 (“[O]nce a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
In the appropriate circumstances, a respondent's lack of response to the complaint may be interpreted by the Panel as an admission that respondent has no rights or legitimate interests in the disputed domain names. See Bank of America. Corporation. v. Bill McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel chooses to examine the record in accordance with the factors listed under Policy paragraph 4(c). The Panel may also accept the allegations in the Complaint as true unless clearly contradicted. See Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398 (finding that failing to respond allows a presumption that the complainant's allegations are true unless clearly contradicted by the evidence).
At the time of this decision the disputed domain name resolves to a website offering competing products and, when consumers order a book, they are immediately redirected to “www.amazon.com”. “www.amazon.com” is in direct competition with Complainant's parent company. Respondent's website is presumed to be a pay-per-click (“PPC”) site generating income for Respondent when confused Internet users click through. This use by Respondent is evidence of intent to divert Internet users from Complainant by incorporating Complainant's mark, creating confusion concerning Complainant's affiliation with Respondent's website. The Panel finds that this is neither a bona fide offering of goods and services under Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy paragraph 4(c)(iii). See Disney Enterprises., Inc. v. Dayanand Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii)).
The initial registrant of the domain name was an Australian company named ZOOMCITIES, who then transferred to a Malaysian company named Ali, Inc. However, the website resolving from the domain name <alibabook.com> remained unchanged after the transfer to Ali, Inc. There is no evidence that Respondent conducts any business under the name “alibabook”, nor has Complainant authorized Respondent to use its ALIBABOOK mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <alibabook.com> domain name.
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).
Respondent's <alibabook.com> domain name resolves to a website providing competing products and an automatic link to a major competitor. The Panel finds that this use by Respondent constitutes an intent to disrupt Complainant's business. Therefore, the Panel concludes that this use of the <alibabook.com> domain name constitutes bad faith pursuant to Policy paragraph 4(b)(iii). See EthnicGrocer.com, Inc. v. Latin Grocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent's sites pass users through to the respondent's competing business); see also EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent's use of the <alibabook.com> domain name, which is identical to Complainant's ALIBABOOK mark, is likely to cause confusion to customers searching for Complainant's goods and services. This is particularly true when Complainant conducted business under that same domain name for 10 years. There may well be confusion regarding Complainant's affiliation, endorsement, or sponsorship of Respondent's website. The Panel assumes Respondent is commercially benefiting from this confusion. Based on these findings, the Panel concludes that Respondent's registration and use of the <alibabook.com> domain name constitutes bad faith under Policy paragraph 4(b)(iv).
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <alibabook.com> be transferred to the Complainant.
Sandra J. Franklin
Dated: February 13, 2009