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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baidu Online Network Technology (Beijing) Co., Ltd. v. Registration Private / Chen Chunsheng

Case No. D2016-1417

1. The Parties

The Complainant is Baidu Online Network Technology (Beijing) Co., Ltd. of Beijing, China, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.

The Respondent is Registration Private of Scottsdale, Arizona, United states of America / Chen Chunsheng of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <baidu.car> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2016. On July 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2016 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 14, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. On August 17, 2016, the Respondent filed a late Response with the Center.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on August 24, 2016. 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

The Complainant offers the Internet search engine services through the website “www.baidu.com” in China as well as in the world. The Complainant owns the trademark registrations over the marks BAIDU, BAIDU & device and BAIDU百度& device in China and many other countries.

The Respondent registered the disputed domain name <baidu.car> on January 20, 2016. The disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <baidu.car> is confusingly similar to its registered BAIDU marks.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <baidu.car>.

The Complainant contends that the disputed domain name <baidu.car> was registered and is being used in bad faith.

The Complainant requests that the disputed domain name <baidu.car> be transferred to it.

B. Respondent

The Respondent responds to the Complaint that it assumed that all the domain names published or sold on the Registrar GoDaddy’s website can be used legally. The Respondent states that it had no intention to violate the Complainant’s trademark and had already removed the disputed domain name from the website and had not used the disputed domain name since the incident. The Respondent states that this is inappropriate to embezzle the Complainant’s trademark and would like to apologize for the inconvenience caused.

6. Discussion and Findings

A. Late Response

The Respondent was supposed to submit a response on or before August 15, 2016. The Respondent did not submit any response by the due date. Accordingly, the Center notified the Respondent’s default on August 16, 2016. However, on August 17, 2016, the Respondent filed the Response with the Center.

According to the Rules, the Panel shall ensure that the administrative proceeding takes place with due expedition. The Response’s late submission may not be accepted. The Panel, however, based on the general powers prescribed by the Rules, decides to accept the late Response submitted by the Respondent, to ensure that both Parties are treated with equality and that each Party is given a fair opportunity to present its case.

B. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark or service mark right and the similarity between the disputed domain name and its trademark or service mark.

The Panel examines the Trademark Registration Certificates issued by the Chinese trademark authority and registration records acquired through the international trademark registration system submitted by the Complainant and finds that, long before the registration of the disputed domain name <baidu.car> on January 20, 2016, the Complainant had registered the trademarks and service marks BAIDU, BAIDU百度& device and BAIDU & device (BAIDU marks) in China and many other countries.

The disputed domain name <baidu.car> consists of “baidu” and the new generic Top-Level Domain (“newgTLD”) suffix “.car”. Apart from the gTLD suffix “.car”, the second level domain name “baidu” is confusingly similar to the Complainant’s registered BAIDU marks. While it is well-established under UDRP precedents that gTLD suffix would be disregarded under the confusingly similarity test as it is a technical requirement. A new gTLD suffix, like “.car”, may have semantic meaning that should be taken into account for the assessment of the confusingly similarity. It’s therefore prudent to compare the disputed domain name (both the second level and the gTLD suffix) as a whole with the Complainant’s marks to assess the confusingly similarity test. Where the disputed domain name <baidu.car> is compared with the Complainant’s registered BAIDU marks, “baidu” is still the most distinctive part and the addition of the generic word “car” to “baidu” does not diminish the overall likelihood of confusing similarity to the Complainant’s registered marks. Accordingly, the Complainant has proven the element required by paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant asserts, and provides evidence to demonstrate, that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, although apologetic to the Complainant and stating that it had no intention to violate the Complainant’s trademark, does not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name <baidu.car>.

The Respondent states that it had assumed that all the domain names published or sold on the Registrar GoDaddy’s website can be used legally. The Panel finds that whether the disputed domain name may be registered through the Registrar is irrelevant to whether the same domain name may be used legally or confer any rights or legitimate interests to the domain name holder.

Although the Respondent states that it had already removed the disputed domain name from the website and had not used the disputed domain name since the incident, the Panel notes that the Respondent fails to prove that it had used or is using the disputed domain name for any noncommercial or legitimate commercial purposes.

Since there is no evidence before the Panel that may prove the Respondent has any rights or legitimate interests in the disputed domain name <baidu.car>, the Panel finds that the Complainant has proven the element required by paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name <baidu.car> in bad faith.

The Respondent states that it had no intention to violate the Complainant’s trademark. The Complainant has registered the mark BAIDU with the Trademark Clearinghouse, which provides the Trademark Claim services. Based on the notice of the Trademark Claim provided by the Complainant, the Panel, however, finds that the Respondent who was well aware of the Complainant’s BAIDU marks after receiving the notice but proceeded to register the disputed domain name must have the intent to conflict with the Complainant’s BAIDU marks.

The disputed domain name is not active at the time of the decision. It has been established in previous UDRP decisions that the apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition”, paragraph 3.2).

Given that the Complainant’s BAIDU marks are well-known in China and in other countries, that the Respondent used a privacy service, and that the Respondent knowingly registered the disputed domain name confusingly similar to the Complainant’s marks, the Panel finds the Respondent has provided no evidence of any plausible actual or contemplated good faith use of the disputed domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b). Therefore, the Complainant has successfully proven the element required by paragraph 4(a)(iii) of the Policy.

7. Decision

For 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 <baidu.car> be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Date: September 7, 2016

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