WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cleankeys Inc. v. Registrant : Bing Liu
Case No. D2010-1810
1. The Parties
The Complainant is Cleankeys Inc. of Edmonton, Alberta, Canada, represented internally.
The Respondent is Registrant : Bing Liu of Guangzhou, Guangdong, the People’s Republic of China, represented by himself.
2. The Domain Name and Registrar
The disputed domain name <cleankeys.com> (the “Domain Name”) is registered with Silverbackdomains.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2010. On October 27, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 27, 2010, 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 of the Domain Name. On November 1, 2010, the Center informed the Complainant of Complaint deficiencies. On November 2, 2010, the Complainant submitted an amended Complaint.
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, and the proceedings commenced on November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Response was filed with the Center on November 24, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on November 30, 2010. 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.
On December 3, 2010, the Complainant submitted an unsolicited supplemental filing. In its discretion, the Panel has elected to receive and consider this supplemental filing.
On December 10, 2010, the Panel requested a supplementary statement from the Respondent clarifying the meaning of certain expressions used by the Respondent in the Response. The Respondent’s supplementary statement was received on December 13, 2010.
4. Factual Background
According to the Complaint, “Cleankeys” is a unique computer keyboard for use in any environment where there is a high risk of contamination, such as use environments where the keyboard is shared. The product incorporates a smooth flat surface that makes it easy to clean. The Complainant says that its Cleankeys product has now been available for 4 years, and that it is sold worldwide through a network of more than 40 distributors and dealers.
The Complainant holds Community Trademark registrations for the word mark CLEANKEYS, dating from July 28, 2009, in respect of “computer keyboards; computer terminals; computer printers”. The Complainant also holds a registration on the principal register of the United States Patent & Trademark Office, for a stylized CLEANKEYS mark, in respect of similar goods, dating from May 1, 2008.
The Complainant has applications pending in China for the registration of its CLEANKEYS mark. Those applications were filed on June 8, 2010, and do not appear to have yet proceeded to registration.
The Complainant provided almost no information in the Complaint about the Respondent. The Complainant simply noted that the WhoIs information for the Domain Name had recently changed, indicating a change in registered owner, and that the Respondent had suggested that the Domain Name could be bought for a minimum of USD7,500. The Complainant did not say where or how that suggestion had been made by the Respondent.
The Respondent and the Domain Name
According to the advice given to the Center by the Registrar on October 27, 2010, the Domain Name record was created on October 5, 2010, and last updated on October 27, 2010.
In his Response, the Respondent said that he bought the Domain Name at auction on October 19, 2010. He produced a page from the website at “www.snapnames.com” which appears to show that the Domain Name changed hands on that date at a purchase price of USD1,760.
The Respondent went on to say that he has been using the Domain Name, since shortly after he acquired it, for a website (“the Respondent’s website”) providing “daily deals information”. He denied that he has ever suggested that the Domain Name could be for sale.
The Respondent produced a page from the Respondent’s website printed on November 24, 2010. The page was substantially in the Chinese language, but the word CLEANKEY (in upper case, as a single word) appeared prominently near the top of the web page and in a copyright claim at the foot of the page. The page showed pictures and text apparently advertising or offering for sale a variety of consumer products, complete with pricing information (the Panel takes these offerings to be the “daily deals” to which the Respondent referred in the Response).
The Respondent explained his use of the Respondent’s website as follows. In order to access or buy “deals”, most “deal websites” require the users to provide “website keys”. By visiting the Respondent’s website, users could access all the deals from more than 100 deal sites without having to take the trouble to remember or enter any website keys.
The Respondent stated that the items advertised on the Respondent’s website are not covered by the Complainant’s trademark (computer keyboards, computer terminals, and computer printers).
The Panel visited the Respondent’s website on December 3, 2010. It appeared to be substantially in the form of the web page dated November 24, 2010 which the Respondent attached to his Response.
The Complainant’s Supplementary Filing
In its supplementary filing, the Complainant acknowledged that its original Complaint had been directed not to the Respondent, but to “[…]@hotmail.com”, the owner of the Domain Name immediately before it was acquired by the Respondent. The Complainant referred to an offer and a counter-offer which had passed between “Superroue” and it in the days immediately prior to October 19, 2010, and stated that it lodged the present proceeding on October 26, 2010 when it had received no response to its most recent proposal to “Superroue”. It said that it only learned that the Domain Name had been transferred to the Respondent when it was so advised by the Center after it had filed the Complaint. The Complainant then amended the Complaint, naming the Respondent as respondent.
The Respondent’s Supplementary Filing
In his supplementary statement, the Respondent explained that in using the expression “website keys” in his Response, he was referring to the information that website visitors typically have to provide in order to see the deal information on a deal website – such things as the visitor’s email address, zip code and city. He referred the Panel to the website at “www.dealon.com” as an example.
The Respondent noted that daily deal websites provide a very limited number of deals per day, and that, in order to find a deal of interest, a user might have to visit several daily deal sites and enter the information several times. Some deal websites might also use the email information entered by a user to send the user unwarranted advertising material in the future.
By contrast, the “deals” on the Respondent’s website are collected automatically, using an “application programming interface”, and the information for each deal is displayed directly on the Respondent’s website. Visitors to the Respondent’s website do not need to enter any information to see all the deals gathered by the Respondent. In that sense, the Respondent says that the “website keys” have been “cleaned”.
The Respondent referred to the definition of “key” at “http://dictionary.reference.com/browse/key” - “something that affords a means of access” – in support of a contention that a “website key” is “something that affords a means of access to a website” (in this case, the information entered by the website visitor). The Respondent said that he had used the expression “website keys” in this sense.
The Respondent did not respond to the Panel’s request for a reference or references to other (English language) websites where the expression “website keys” has been used in the sense in which the Respondent used that expression in the Response. Instead, the Respondent stated that other domain names which would have been appropriate to describe a “deals” website were either not available or were too expensive. The Respondent said that he chose the Domain Name “because it is affordable and described at least some aspect of the website”.
5. Parties’ Contentions
The Complainant contends:
(1) The Domain Name is identical to the Complainant’s mark CLEANKEYS, which is trademarked in the United States and in the European Union.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has been unable to find any evidence of the Respondent having used the Domain Name (or any name corresponding to it) in connection with any bona fide offering of goods or services, or of the Respondent having made demonstrable demonstrations to do so. Nor has the Complainant been able to find any evidence that the Respondent has been commonly known by any name which would associate with the Domain Name.
(3) The Doman Name was registered and is being used in bad faith. A recent change in the WhoIs information for the Domain Name indicates a charge in the registered owner. The Respondent has suggested that the Domain Name can be bought for a minimum of USD7,500, which is a valuable consideration well in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
The Respondent contends:
(1) The Complainant has not trademarked CLEANKEYS in China.
(2) The Respondent has a right or legitimate interest in respect of The Domain Name. The Respondent bought the Domain Name at auction on October 19, 2010, and shortly thereafter established the Respondent’s website. The Respondent chose the Domain Name because it is a simple combination of the generic terms “clean” and “keys”, and it describes the services provided at the Respondent’s website – clean the annoying website keys (of more than 100 deal sites and get all the deal information directly in one location).
(3) If the Complainant had typed the Domain Name into its browser it would have found out that the Respondent has been using the Domain Name for its daily deals website (i.e. the Respondent’s website).
(4) When the Respondent registered the Domain Name, he had no knowledge of the Complainant’s business or trademark. The Respondent’s website does not offer any services which are similar to those offered by the Complainant, and it is unlikely to cause confusion with, or trade on the goodwill of, the Complainant’s trademark.
(5) The Respondent has never suggested that the Domain Name is for sale. The Complainant has either lied about this or communicated with the wrong party. The Complainant’s allegation of bad faith without evidence, is insufficient to shift the burden of proof to the Respondent.
C. Complainant’s Supplementary Filing
The essence of the claim remains the same, notwithstanding that the Complaint was originally framed as a complaint against the Respondent’s predecessor in title to the Domain Name. The “Cleankeys” name has been in the worldwide marketplace since 2008, and the Complainant holds trademark rights in Europe and the United States. Cleankeys, is an identifiable brand, with more than 40 distributors worldwide.
D. Respondent’s Supplementary Filing
Whether the Domain Name is a perfect match or just an “ok” match for the Respondent’s website, the Respondent’s website is a legitimate use of the Domain Name, and the Respondent has a legitimate interest in the Domain Name.
6. Discussion and Findings
A. The language of the proceeding
The language of the Registration Agreement is English, and under paragraph 11 of the Rules, English is to be the language of the proceeding, subject to the Panel’s authority to determine otherwise. Although the Respondent in this case resides in China, and the Respondent’s website is written in Chinese, the Respondent has responded to the Complaint and to the Panel’s request for a Supplementary Statement, in perfectly competent English, and has not sought any determination that the proceeding should be dealt with in Chinese. In those circumstances, the Panel is satisfied that English is the appropriate language for the proceeding.
B. What the Complainant must prove under the Policy – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
C. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. The Domain Name is identical to the Complainant’s Community Trademark registration. The fact that the Complainant does not hold a registered mark in China is not relevant to the question to be decided under paragraph 4(a)(i) of the Policy.
The “.com” suffix is not taken into account in the comparison required by paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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) Where [the respondent is] making a legitimate non-commercial 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.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“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, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is identical to the Complainant’s Community Trademark, and the Complainant has not authorized the Respondent to use the Domain Name. There is nothing in the record to suggest that the Respondent is commonly known by the Domain Name, and therefore there is no basis for any right or legitimate interest under paragraph 4(c)(ii) of the Policy. The Respondent’s use of the Domain Name appears to have been commercial in nature, so paragraph 4(c)(iii) of the Policy appears to have no application.
Those matters in combination are sufficient to establish a prima facie case under paragraph 4(a)(ii) of the Policy, so that the evidentiary burden shifts to the Respondent.
The Respondent argues that he is operating a legitimate business at the Respondent’s website, as an “aggregator” of deals from various third party “deal websites”. He argues essentially that that business constitutes a bona fide offering of goods or services, which he commenced before receiving any notice of the Complainant’s Complaint, and that he therefore has a legitimate interest in the Domain Name under paragraph 4(c)(i) of the Policy. But it is not just the offering of particular goods or services which has to be bona fide for the Respondent to bring himself within paragraph 4(c)(i) of the Policy – the Respondent’s use of the Domain Name in connection with that offering of goods or services must also have been bona fide (see in that regard Cattlecare Limited v. Wairua Holdings Pty Limited, WIPO Case No. D2001-1373, followed by this Panel in Harvey World Travel Limited v. GamCo, WIPO Case No. D2003-1023). In this case, the Panel is not satisfied that the Respondent’s choice and use of the Domain Name has been bona fide. The Panel has come to that view for the following reasons:
1. The expression “clean keys” has no obvious connection with, or relevance to, the business operated through the Respondent’s website. The Respondent has not properly explained the business model he is apparently operating at the Respondent’s website, but it appears to involve the aggregation of “deals” from the websites operated by numerous third party retailers, in one online location. The Respondent presumably receives some commission or fee for sales made through the Respondent’s website by a third party retailer. The Panel found it difficult to see how the expression “keys” could have any relevance to such a business, let alone the combined expression “clean keys”.
2. The Respondent’s answer was that “keys” was intended as a shorthand reference to the expression “website keys”. But when the Panel asked the Respondent to refer the Panel to two or three English language websites where the expression “website keys” has been used in the same sense in which the Respondent used the expression in the Response, the Respondent was apparently unable to do so.
3. The Respondent offered “something that affords a means of access” as one definition of the expression “key”, and the Panel accepts that that is a generally accepted meaning of the word “key” in ordinary English usage. But the “key” which the Respondent says he had in mind, is nothing more than an individual Internet user’s email address, city, and zip code. While it appears that it may be necessary on some deal websites for the user to enter that information before he or she can gain access to the web page on which a particular “deal” is displayed, it seems to the Panel to be an unusual use of English to describe that sort of information, personal as it is to each Internet user, as a “key” to that web page. The Panel doubts that many Internet users would consider that, when they were entering their email addresses, cities, and zip codes, they were using a “website key”.
4. The Panel also notes that the Respondent in his Response said that users of the Respondent’s website could access all the deals from more than 100 deal sites without the trouble to remember or enter any website keys (the Panel’s emphasis). If in using the expression “website keys” the Respondent was in fact referring to nothing more than an individual user’s email address, city, and zip code, it is difficult to see how any issue of “remembering” could arise. In the Panel’s experience, most people know those things and do not have any difficulty remembering them.
5. If the concept of a “website key” is somewhat obscure, the concept of a “clean” website key is even more difficult and remote from what the Panel believes would be the experience of ordinary users of the English language (and well beyond the reach of those for whom Chinese is their first language). The Respondent’s argument seems to be that the expression “clean keys” was intended to convey to Internet users the idea that no “website keys” would be required for the user to fully access the website at the Domain Name. If one accepted the Respondent’s concept of a website “key” one might have understood the choice of “nokeys”, or “nowebsitekeys”, as a domain name designed to convey that impression, but “clean keys” seems to the Panel to require several additional mental connections which few, if any, Internet users would be likely to make. There is no sense in which the Respondent’s “website keys” can be said to be “clean”, or even “cleaned”.
Nothing in the Domain Name is suggestive of the deals website which the Respondent in fact operates at the Respondent’s website, and the Panel cannot accept the Respondent’s claim that he “selected this domain because it describes the services provided by the Respondent’s website [...]” Without stretching English usage beyond breaking point, that proposition is quite clearly wrong.
6. The Respondent also attempted to categorize the Domain Name as a simple combination of two generic terms, “clean” and “keys”. But in the Panel’s view that is no argument. A combination of two generic terms does not necessarily create a generic combination, and as the Panel has said, the Domain Name is not, in the Panel’s view, descriptive of the services provided at the Respondent’s website.
7. The expression “clean keys” is, in the Panel’s view, a sufficiently uncommon combination of English words that it is difficult to see how or why anyone setting up a “deals” website would think of it, unless of course that person was aware of the Complainant and its operations. The Respondent denies any knowledge of the Complainant or its mark, but the Panel notes that the Respondent has not only adopted an improbable domain name for a “deals” website, but has also used the expression CLEANKEYS, in upper case lettering and with the two words run together as they are in the Complainant’s mark, on the Respondent’s website. There is even a 2010 copyright claim by CLEANKEYS. Why have the expressions “clean” and “keys” been run together on the Respondent’s website, in the same manner as they appear in the Complainant’s mark? It was a point calling for an explanation, but the Respondent offered none.
Having regard to the foregoing factors, the Respondent has failed to persuade the Panel that he has a right or legitimate interest in the Domain Name, whether under paragraph 4(c)(i) of the Policy or on any other basis.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii)the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Respondent has also proved this part of the Complaint, substantially for the reasons set out in section 6.D. of this Decision. In the Panel’s view, the Respondent’s reasons for registering the Domain Name are implausible, and give the appearance of being contrived in order to create a defense to the Complaint. Specifically, there does not appear to be any genuine connection between the expression “clean keys” and the activities conducted by the Respondent at the Respondent’s website, and even if one were to accept the Respondent’s explanation as to what he intended by his use of the word “keys” in the Domain Name, the word “clean” seems a highly improbable qualifier to add to the word “keys”.
The Respondent has denied knowledge of the Complainant or its mark when he registered the Domain Name, but the Panel does not find that denial credible in circumstances where the expression “clean keys” appears to have no real connection with the activities conducted by the Respondent through the Respondent’s website, it is hard to see how or why anyone would think of the expression (especially in connection with a deals website) if one were not already familiar with the Complainant, and the Respondent appears to have used CLEANKEYS (as one word) in a trademark sense on the Respondent’s website.
The Complainant has acknowledged in its supplementary filing, and the Panel accepts, that the indication that the Domain Name could be acquired for USD 7,500 was not given by the Respondent, but by an earlier owner of the Domain Name. Nevertheless, the fact that the Respondent has registered the Complainant’s mark as a domain name and then offered an implausible reason for doing so, strongly suggests that the Respondent was targeting the Complainant and its mark in some way. The fact that there are several instances of the expression CLEANKEYS (in upper case, as a single word) appearing on the Respondent’s website as a standalone expression, separated from the “.com” suffix, confirms that impression.
If the Respondent was aware of the Complainant’s mark, as the Panel has found to be the case, the Respondent must have expected that numerous Internet users who were familiar with the Complainant would mistakenly enter the Domain Name in their browsers and arrive at the Respondent’s website. While any Chinese language speakers among them could then be diverted to the various “deals” offered through the Respondent’s website, the main impact on the Complainant would appear to be the “nuisance value” and disruption to its business created by having customers unable to find the Complainant online. The Respondent would have expected the Complainant to appreciate that that could be easily fixed if the Complainant acquired the Domain Name from the Respondent.
In either case, it seems to the Panel that the Respondent’s registration and use of the Domain Name has been in bad faith, whether under paragraph 4(b)(i) of the Policy or under 4(b)(iv).
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, <cleankeys.com>, be transferred to the Complainant.
Date: December 14, 2010