WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HID Global Corporation v. richard8017@126.com, Richad Yu/Guangzhou You Yang Network Technology Co., Ltd.

Case No. D2015-0059

1. The Parties

The Complainant is HID Global Corporation of Austin, Texas, United States of America, represented by Cohausz & Florack, Germany.

The Respondent is richard8017@126.com, Richad Yu of Shenzhen, Guangdong, China; Guangzhou You Yang Network Technology Co., Ltd. of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <higlobal.com> is registered with Guangzhou Ming Yang Information Technology Co., Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2015. On January 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “richard8017@126.com, Richad Yu” is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on January 21, 2015 informing that the Respondent’s information confirmed by the Registrar was different from the named Respondent, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 23, 2015.

On January 21, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 22, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English, and the proceeding commenced on January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. On January 27, 2015, the Center received an email communication from the Respondent requesting that Chinese be the language of the proceeding. The Response was filed with the Center on February 12, 2015.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 25, 2015. 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 April 28, 2015, the Panel instructed the Center to issue the Administrative Panel Procedural Order No. 1. (“Panel Order No.1”) On April 30, 2015, the Complainant submitted further submissions in accordance the Panel Order No.1 and on May 6, 2015, the Respondent submitted comments on the Complainant’s further submissions. The Panel extended the decision due date to May 11, 2015.

4. Factual Background

The Complainant, HID Global Corporation, owns registered trademark rights in the signs HID and HID GLOBAL in many countries.

The Complainant also uses its trademarked names in connection with the promotion and marketing of its products and services on its various Internet web sites among which “www.hidglobal.com”, “www.hidglobal.co.uk”, “www.hidglobal.de”, “www.hidglobal.es” and “www.hidglobal.se”.

The Respondent registered the disputed domain name <higlobal.com> on December 18, 2007.

5. Parties’ Contentions

A. Complainant

First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:

1. The Complainant and its parent company own registered trademark rights in the signs HID and HID GLOBAL in many countries, among those at the International Bureau WIPO and in China.

2. The Complainant also uses its trademarked names in connection with the promotion and marketing of its products and services on its various Internet web sites among which “www.hidglobal.com”, “www.hidglobal.co.uk”, “www.hidglobal.de”, “www.hidglobal.es” and “www.hidglobal.se”.

3. The word elements of the disputed domain name “higlobal” is (quasi)-identical to the word elements of the above-cited trademarks and the domain names owned by the Complainant. The missing letter “d” in the first element “hi” compared to “hid” is likely to be overseen by Internet users especially when typing the website address.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:

1. The Respondent has no rights or legitimate interests in the disputed domain name, as it is not using the disputed domain name for a bona fide offering of goods or services.

2. The Respondent does not own any right in any trademark, service mark or any other sign such as corporate names, trade names or shop sign corresponding to the words HID or HID GLOBAL.

3. The Complainant has not licensed or permitted in any way the Respondent’s use of the HID or HID GLOBAL trademark.

4. The Respondent has not used, is not using and has not shown any intention of using the disputed domain name or names corresponding to it in connection with a good faith offering of goods and services.

Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:

1. The Respondent has registered and has been using the disputed domain name in bad faith, evidenced by the fact that the website corresponding to the disputed domain name is used to offer goods for sale to customers preferably which are protected by the United States of America trademarks HID and HID GLOBAL of the Complainant.

2. This is an indication for bad faith use of the disputed domain name as the Respondent wants to make a link to the marks of the Complainant.

B. Respondent

The Respondent filed a Response which may be summarized as follows:

1. The disputed domain name is not identical or confusingly similar to a mark in which the Complainant has rights on the following grounds:

a. “higlobal” is a combination of two English terms “hi” and “global”. This is different from the Complainant’s mark HID GLOBAL.

b. The Complainant has registered trade mark rights on the mark HID GLOBAL but that does also not mean the Complainant equally has registered trade mark rights over “higlobal”. There is also no evidence that the Complainant has substantial use of the term “higlobal”.

c. The Respondent’s domain name <higlobal.com> provides speedy information on products to Internet users within China and not outside of China. The Complainant is unable to show that it has registered trade mark rights of HID GLOBAL in China.

d. The Complainant has no business or goodwill in China in respect of the application of the mark HID GLOBAL on goods or services.

e. That there is no confusion between “higlobal” and HID GLOBAL.

2. The Complainant has not established that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

a. The Complainant has registered trade mark rights on the mark HID GLOBAL but that does also not mean the Complainant equally has registered trade mark rights over “higlobal”. There is also no evidence that the Complainant has substantial use of the term “higlobal”.

b. The Respondent has registered the disputed domain name for the past seven years and has been providing speedy services for the sale and purchase of goods over the Internet. In this way, the Respondent has rights or legitimate interests in respect of the disputed domain name.

3. The Complainant has not established that the Respondent has registered and is using the disputed domain name in bad faith on the following grounds:

a. The Respondent has been using the disputed domain name for the past seven years as a portal to provide speedy services for the sale and purchase of goods over the Internet.

b. The Respondent has not registered the disputed domain name for the purpose of selling or renting to third parties for a profit.

c. The Respondent has never made such an offer of sale or rental of the disputed domain name to any third parties.

d. The Complainant has approached the Respondent on several occasions with a view to purchase the disputed domain name <higlobal.com> and the Complainant has conceded that it does not have registered trade mark rights in the term “higlobal”, only in the marks HID and HID GLOBAL. This proves that the Complainant has no rights over the use of the term “higlobal” by the Respondent.

e. The Respondent has registered the disputed domain name for the past seven years and has been providing speedy services for the sale and purchase of goods over the Internet. On the contrary, the Complainant has no business or goodwill in respect of the application of the mark HID GLOBAL on such goods or services.

f. Results of search engines cannot be conclusive evidence that there is confusion amongst Internet users between <higlobal.com> and HID GLOBAL.

g. The Respondent’s target customers are Chinese Internet users and the Respondent has never offered services to customers in the United States.

h. The Respondent’s domain name offers speedy services for the sale and purchase of goods over the Internet whilst the Complainant’s marks HID and HID GLOBAL are used in respect of identity cards, semi-conductors etc.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented to the Panel, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. The Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:

1. That the website hosted at the disputed domain name is in English;

2. The above clearly demonstrates that the Respondent has proficiency and is able to communicate in English.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-script and could be pronounced phonetically in English; (b) the website which was connected to the disputed domain name was in English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent has filed a Response in Chinese.

Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to show that it has registered trademark rights and continues to have such rights in the HID; HID CONNECT; HID GLOBAL; HID ON THE DESKTOP; HID ON DEMAND; HID IDENTITY ON DEMAND; HID PROGRAMMING ON DEMAND; HID SIO; HID MOBILE ACCESS (“HID marks”) marks for identity cards, semi-conductors etc. in many countries in the world. In the case of China, the Complainant’s trade mark applications for the HID mark were filed in September 2014 and their application status remains pending. In 2006, the Complainant had secured one trade mark registration for HID GLOBAL in China whilst three other applications for HID GLOBAL filed in 2014 remain pending.

The Panel thus accepts that the Complainant has registered trade mark rights in the HID GLOBAL mark in many countries in the world including China.

It may be said that the disputed domain name <higlobal.com> is a combination of two English terms “hi” and “global”. Based on a comparison between the Complainant’s registered word mark HID GLOBAL and the disputed domain name “higlobal” without the suffix “.com”, the Panel finds that the only difference between the two is that the letter “d” is missing from the disputed domain name. On the authority of numerous previous UDRP decisions, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trade mark in which it has rights.

The Panel finds in favour of the Complainant in the first part of the test.

B. Rights or Legitimate Interests

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).

Based on the following grounds, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name:

1. The Complainant has registered trade mark rights in the HID and HID GLOBAL marks in many countries in the world including China.

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the HID or HID GLOBAL mark.

3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services.

As such, the burden shifts over to the Respondent to rebut the Complainant’s contentions. According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has argued that it has registered the disputed domain name for the past seven years and has been providing speedy services for the sale and purchase of goods over the Internet. In this way, the Respondent claims to have rights or legitimate interests in respect of the disputed domain name.

However, the Panel notes that the website to the disputed domain name <higlobal.com> does not appear to have a relationship to its claimed generic meaning, but appears to contain links targeting the Complainant’s area of commerce. As such, the Panel by Panel Order No. 1 dated April 28, 2015, ordered the Respondent to “provide comments on the fact that when the Respondent argued that the disputed domain name <higlobal.com> contains two generic English terms “hi” and “global”, the website to the disputed domain name <higlobal.com> has no relationship to its claimed generic meaning, but appears to contain links targeting the Complainant’s area of commerce.” In response, the Respondent merely pointed out that a search from “www.baidu.com” for “hi global” did not display the contents of the Complainant’s website or the webpages provided by the Complainant.

Considering all the evidence adduced before it, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant that the Respondent lacks rights or legitimate interests in the disputed domain name

Accordingly, the Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark 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 domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a 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 above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive.

Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the concerned trademark. It is true that in this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks often transcend national borders but given that the disputed domain name is comprised of two English words one important factor is the level of notoriety and fame of the Complainant’s marks at the time of registration of the disputed domain name.

In the particular circumstances of this case, the Panel is of the view that the mere fact that the Complainant has registered trade mark rights in the said trade mark HID or HID GLOBAL in many countries does not necessarily prove that it is a well-known mark in the relevant jurisdiction.

To assist the Panel to make a judgment on the fame of the Complainant’s HID family of marks, the Panel, by Panel Order No. 1 dated April 28, 2015, “request[ed] that the Complainant provide actual evidence of its historical trademark HID and HID GLOBAL reputation globally, including in China. Such evidence may include length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”

In response, the Complainant adduced the following evidence before the Panel:

1. A list including information on the HID marks portfolio (Annex 1);

2. Evidence of trade mark use in magazines and other media (Annex 2);

3. A case study of Aspectus (Annex 2);

4. Issue 104 of the Nilson Report August 2014 where the Complainant is mentioned on page 3 as producer of non-payment cards offered by MBANK to its client, and on page 9 as the tenth biggest manufacturer of non-payment cards (Annex 3);

5. An article dated February 11, 2015 reporting that one of HID’s global partner in China is Ricoh China (Annex 4); and

6. An article dated December 17, 2014 of FindBiometrics that HID GLOBAL is named one of China’s Top 10 brands for access control.

The Respondent responded by pointing out the following:

1. The Complainant’s trade mark applications in China were filed in 2014 and they remain in a pending status.

2. The Complainant’s trade mark rights are in the HID mark and this is to be distinguished from “Hi Global”.

3. That the evidence in Annex 3 and 4 are extracted from the Complainant’s own website and should not carry any weight.

4. That the main e-commerce websites in China such as “www.taobao.com” and “www.alibaba.com” do not feature or carry any of the Complainant’s products. This shows that the Complainant’s mark and products do not enjoy the fame as claimed by the Complainant.

5. That a search on “www.baidu.com” in China reveals a return of 17,600,000 responses for “hi global” but a merely 46,900 returns for “hid global”. This shows that in China HID GLOBAL does not enjoy the fame claimed by the Complainant.

6. That according to “www.alexa.com”, a website that measures Internet traffic, the website “www.hidglobal.com” does not enjoy high Internet traffic.

The Panel notes that the Complainant’s HID logo mark was first registered in 1999 in the United States. The other HID family of marks such as HID GLOBAL were registered only at a much later date, in 2006. The Complainant began to register other associated HID marks such as HID CONNECT; HID ON THE DESKTOP; HID ON DEMAND only in 2009.

The Panel finds that the evidence adduced by the Complainant on the alleged fame and notoriety of the HID family of marks is somewhat thin. On a balance of probabilities, the Panel finds that the Complainant has not sufficiently demonstrated that its marks HID and HID GLOBAL are well known or highly distinctive marks, such that the Respondent could not have legitimately adopted other than for the purpose of creating an impression of an association with the Complainant.

The Respondent has registered the disputed domain name in 2007, seven years ago. Based on the limited record before the Panel in this administrative proceeding, the Complainant has not demonstrated that at that time of the registration, the Complainant and its HID family of marks, in particular its HID GLOBAL mark, enjoyed a sufficient level of notoriety or fame such that the Panel can conclude that the Respondent had the Complainant in mind then. The Panel’s view is buttressed by the fact that following the Panel Order, little or no evidence was adduced by the Complainant about its HID or HID GLOBAL mark and its goodwill in China.

On balance, the Panel finds that the Complainant has not satisfied the third part of the test.

7. Decision

For the foregoing reasons, the Complaint is denied.

Susanna H.S. Leong
Sole Panelist
Date: May 11, 2015