World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ValueClick, Inc. v. Zhifeng Gao

Case No. D2012-1745

1. The Parties

1.1 The Complainant is ValueClick, Inc., Westlake Village, California, United States of America, (the “Complainant”) represented by Abrams Garfinkel Margolis Bergson, LLP, United States of America.

1.2 The Respondent is Zhifeng Gao, Shenzhen Guangdong, Shenzhen, China (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed Domain Name <valueclickchina.com> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2012. On August 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On August 29, 2012, 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.

3.2 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”).

3.3 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 September 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2012.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on October 11, 2012. 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

4.1 The Complainant in these administrative proceedings is ValueClick Inc. a company incorporated in Delaware United States of America but located in California United States of America. The Complainant is an online advertising company which is said to have been launched in April 1998 and is said to provide online advertising campaigns and programs for advertisers and advertising agency customers in the United States and internationally. The Complainant is said to have in August 2011 acquired Dotomi, a dynamic display ad optimization firm for US D295 million. The Complainant is said to be a leader in the fields of media, affiliate marketing, online publishing, mobile and technology and therefore enjoys significant fame and notoriety.

4.2 The Respondent in these administrative proceedings is Zhifeng Gao who resides in or has its principal place of business in Shenzen, China. According to the publicly available WhoIs database the Respondent registered the disputed Domain Name <valueclickchina.com> on July 11, 2012.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that the disputed Domain Name is identical or confusingly similar to the several trademarks owned by the Complainant. In support the Complainant states that it registered: (i) on October 24, 2000 the word mark VALUECLICK for advertising services , dissemination of advertising via on-line communications network, business marketing, promotions and advertising consulting services in International Class 35 at the United States Patent and Trademark Office; (ii) on September 12, 2000 the word mark VALUECLICK for providing temporary use on non-downloadable software used to facilitate the tracking, administration, billing and reporting of banner advertising via online communications in International Class 42 at the United States Patent and Trademark Office and (iii) on September 29, 2009 the design mark VALUECLICK for information and data compiling and analyzing relating to business management and advertising and various other services in International Classes 35 and 42.

5.2 The Complainant further contends that the disputed Domain Name is also identical or confusingly similar to the Complainant’s website at “www.valueclick.com” which prominently displays its registered marks and states that the Respondent who is resident in China is not affiliated with the Complainant nor is it in any way authorized to use the VALUECLICK registered trademarks.

5.3 The Complainant submits that the Respondent has no rights or legitimate interests in the disputed Domain Name and neither is the Respondent a licensee of the Complainant. The Complainant therefore asserts that the Respondent’s use of the VALUECLICK marks as part of the <valueclickchina.com> domain name cannot be described as use for any legitimate noncommercial or fair use purposes. The Complainant further submits that the Respondent registered the disputed Domain Name with the intent of profiting from the use of the Complainant’s mark and or with the intent to sell the domain name to the Complainant, the trademark owner for an inflated price. The Complainant also reveals that the Respondent has used the Complainant’s registered trademark on its website and copied Complainants’ copyrighted content and posted it on the website at the disputed Domain Name.

5.4 On the question of bad faith registration and use the Complainant advances the following submissions. First, the Respondent failed to respond to a cease and desist letter dispatched by those representing the Complainant on or about July 19, 2012. Secondly, the Respondent is using the VALUECLICK trademark in the disputed Domain Name in order as to confuse consumers into believing that its website is somehow sponsored by or affiliated to the Complainant. Thirdly, the disputed Domain Name and the content featured on the website are likely to cause confusion, mistake and to deceive consumers as to the origin sponsorship or approval of the Respondent’s commercial activities by the Complainant. Fourthly, it is said that the Respondent has no intention of creating a legitimate website.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings, the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark which the Complainant has rights; (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.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds that the disputed Domain Name <valueclickchina.com> is confusingly similar to the Complainant’s trade marks registered repeatedly at the United States Patents and Trademarks Office, since September 2000 and indeed its website at “www.valueclick.com”. In arriving at this finding the Panel has taken into account the trademark registration certificates attached to the Complaint by the Complainant and a downloaded copy of the Complainant’s website’s main page. Clearly, the disputed Domain Name wholly incorporates the Complainant’s trademark VALUECLICK and the Panel is satisfied that the mere addition of the word “china” does nothing to prevent a finding of confusing similarity. The Panel in this regard relies on a previous WIPO UDRP decision in Sanofi-Aventis v. Ambien-meds.com, WIPO Case No. D2006-0859 where the addition of the word “meds” to the disputed domain name <ambient-meds.com> was found not only to do nothing to preclude the finding of confusing similarity but also was found to heighten the risk of confusion.

6.4 The Panel is accordingly satisfied that the Complainant has established that the disputed Domain Name <valueclickchina.com> is confusingly similar to the Complainant’s trademark, VALUECLICK.

B. Rights or Legitimate Interests

6.5 The Panel also finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has failed to provide any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant submits, the Respondent undoubtedly registered the disputed Domain Name well after the Complainant had acquired and established exclusive rights to the VALUECLICK trademark, and the Respondent has never been granted any license or authority to use the Complainant’s trademark as part of the disputed Domain Name or for any purpose. In addition the Panel has found no evidence to suggest that the Respondent is connected or affiliated to the Complainant or that the Respondent is commonly known by the disputed Domain Name.

6.6 The Panel is satisfied that the Respondent has used the Complainant’s trademark and copyrighted material on the disputed Domain Name’s website with the sole aim of deceiving customers as to the origin, sponsorship or approval of the Respondent’s commercial activities by the Complainant. The Panel therefore finds that such unauthorized usage cannot be said to constitute a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the disputed Domain Name. In this regard see generally, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903 on the concept of rights and legitimate interests in a disputed Domain Name.

6.7 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights of legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 With specific reference to the issue of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and continued to engage in bad faith use. The Panel has taken into account a number of salient issues raised by the Complainant which the Respondent has failed or is unable, to rebut. In the first instance, the Panel finds that the Respondent must have known of the existence of the Complainant’s exclusive and well established rights in the VALUECLICK trademark since September 2000 before registering the disputed Domain Name on July 11, 2012. The Panel finds that the Respondent must have had constructive if not actual notice of the Complainant’s rights see in this regard GOOGLE, Inc. v. Abercrombie1, NAF Claim No. 101579 where the panel decided that for a well known trademark such as GOOGLE, constructive notice is sufficient to fix the Respondent with notice or knowledge of the existing trademark. Secondly, the Respondent evidently failed to respond to a cease and desist letter dated July 19, 2012 and dispatched by the Complainant. Thirdly, the Panel finds that the Respondent is using the Complainant’s trademark in the disputed Domain Name to confuse consumers into believing that its website is one of the Complainant’s brands or are somehow sponsored or affiliated with the Complainant. Fourthly, as indicated in paragraph 5.4 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to challenge the evidence and submissions provided by the Complainant in these proceedings.

6.9 Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For all 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, <valueclickchina.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: October 26, 2012

 

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