WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alibaba Group Holding Limited v. Teresa Bostle

Case No. DAU2014-0041

1. The Parties

The Complainant is Alibaba Group Holding Limited of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Mayer Brown JSM, China.

The Respondent is Teresa Bostle of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <aliexpress.com.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2014. On December 30, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 5, 2015, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. On January 6 and 7, 2015, the Center received email communications under the name of the person identified in the WhoIs record as the Respondent’s contact and technical contact. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on February 5, 2015.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 16, 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.

4. Factual Background

According to the Complaint, the Complainant was established in China in 1999. It became publicly listed on the New York Stock Exchange on September 19, 2014. According to the South China Morning Post, at USD25 billion it was the world’s biggest initial public offering to that date.

The Complaint further states that the Complainant through its subsidiaries and affiliates has offices in about 70 cities in China, as well as Hong Kong, China, Taiwan, Province of China, the Republic of Korea, India, Japan, Singapore, the United States of America (“USA”) and Europe. In each of the last 2 years the group has had revenues in excess of USD 4 billion.

The Complainant’s group operates 2 online business-to-business marketplaces under the ALIBABA “brand”; one for Chinese domestic trade and another for a global trading market place.

In September 2009, it launched a beta test version of an online marketplace for consumers wishing to buy products directly from Chinese manufacturers and wholesalers under the “brand” ALIEXPRESS from a website at “www.aliexpress.com”. The marketplace launched officially in April 2010. According to the Complaint, the ALIEXPRESS business generated USD 2 billion in revenues for the 12 months ending December 2013.

There is an array of other “ALI” services or businesses associated with these activities such as ALIPAY which is said to be China’s most widely used third party payment solution.

The Complainant certificates of registration for the following trade marks:

- Australian trade mark “AliExpress”, registration number 1314820, classes 9, 35, 36, 38, 41 and 42, registered on August 11, 2009;

- Australian trade mark ALI~XPRESS (stylized), registration number 1339078, classes 9, 35, 36, 38, 41 and 42, registered on December 31, 2009;

- New Zealand trade mark ALIEXPRESS, registration number 817839, classes 9, 35, 36, 38, 41 and 42, registered on July 8, 2010;

- New Zealand trade mark ALI~XPRESS (stylized), registration number 817841, classes 9, 35, 36, 38, 41 and 42, registered on July 8, 2010;

- Chinese trade mark ALIEXPRESS, registration number 8032464, class 9, registered on April 7, 2011;

- Chinese trade mark ALIEXPRESS, registration number 8032493, class 35, registered on March 14, 2011;

- Chinese trade mark ALIEXPRESS, registration number 8032513, class 36, registered on March 28, 2011;

- Chinese trade mark ALIEXPRESS, registration number 8032553, class 38, registered on March 28, 2011;

- Chinese trade mark ALIEXPRESS, registration number 8032574, class 41, registered on February 28, 2011;

- Chinese trade mark ALI~XPRESS (stylized), registration number 7558799, class 35, registered on December 7, 2010;

- Chinese trade mark ALI~XPRESS (stylized), registration number 8017387, class 36, registered on March 28, 2011;

- Hong Kong, China trade mark ALIEXPRESS, registration number 301402983AA, classes 9, 35, 38 and 42, registered on August 10, 2009;

- Hong Kong, China trade mark ALIEXPRESS, registration number 301402983AB, classes 36 and 41, registered on August 10, 2009;

- Hong Kong, China trade mark ALI~XPRESS (stylized), registration number 301508328, classes 9, 35, 36, 38, 41 and 42, registered on December 24, 2009;

- USA trade mark ALI~XPRESS (stylized), registration number 4092736, classes 9, 35, 36, 38, 41 and 42, registered on January 31, 2012.

According to the Complainant, the disputed domain name was registered on March 4, 2010. According to the Registrar, it was first registered in the name of the current registrant on February 1, 2014.

On December 22, 2014, the disputed domain name resolved to a website which listed websites in China in the business to consumer (B2C) space. On December 30, 2014, however, the disputed domain name resolved to a website which said that the website was temporarily unavailable. At the time this Decision is being prepared, it resolves to a page which is essentially blank other than the logo of “Just Host.com” and links to that entity’s business.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Although there has been no formal response from the Respondent, the Complaint has been served on the address confirmed as correct by the Registrar. The emails received by the Center have come under the name of the person who is identified in the WhoIs details as the registrant’s contact and also the technical contact for the disputed domain name. Those details have been confirmed as correct by the Registrar. Accordingly, the Panel considers the Complaint has been duly served and the Respondent has been given a fair opportunity to respond. The Panel will also treat the emails received by the Center as constituting the Respondent’s response so far as they go.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trade mark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trade mark.

The Complainant has proven ownership of the several registered trade marks referred to above.

The disputed domain name is identical to the Complainant’s ALIEXPRESS trade marks, disregarding the “.com.au” domain suffix which is a functional component of the domain name system: See e.g., MapQuest.com, Inc. v. William Scully Power and MapQuest Australia, WIPO Case No. DAU2006-0016; Jenna IP Holding Company LLC v. Mobile Alive Pty Limited, WIPO Case No. DAU2006-0013.

The inquiry in the present context is a different inquiry to that prescribed by trade mark law. It requires only the comparison of any relevant rights proved by the Complainant to the disputed domain name. Other considerations such as the priorities in time of the respective claims or the nature of the respective uses do not fall for consideration under this paragraph of the Policy, but may arise under the other paragraphs. See e.g., Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007.

As the disputed domain name is identical to the Complainant’s proven ALIEXPRESS trade mark on the relevant tests, therefore, the Panel finds that the Complainant has established the requirement under the first limb of the Policy. In the circumstances of this case, it is unnecessary to consider whether the disputed domain name is also confusingly similar to the Complainant’s stylized ALI~XPRESS trade marks.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., Jenna IP Holding Company LLC v. Mobile Alive Pty Limited, WIPO Case No. DAU2006 0013.

It is not in dispute between the parties that the Respondent is not authorised by the Complainant to use ALIEXPRESS or in any other way associated with the Complainant. Having regard to this and the way the Respondent was apparently using the disputed domain name as recently as December 22, 2014, the Complainant has shown a prima facie case under this heading.

In the email Response submitted for or on behalf of the Respondent, the Respondent states that the disputed domain name was registered to help people involved in international trade. He says the name was chosen because the name of one of the founders of the Respondent’s enterprise is “A Li”, which is said to be the name of over several million people in China. Further, he says that neither of the Complainant’s ALIBABA nor ALIEXPRESS “brands” were really a “brand at all in 2010”.

First, whatever the scale of the Complainant’s ALIBABA and ALIEXPRESS businesses in March 2010, the Complainant’s Australian trade mark No. 1314820, “AliExpress”, was registered from August 11, 2009, about 7 months earlier.

Secondly, as the Complainant points out, the name of the Respondent is Teresa Bostle, which does not obviously reduce to “ali” or some variant thereof. Assuming in the Respondent’s favour that Ms. Bostle registered the disputed domain name for Mr. Li or was in some form of partnership with him, almost the last paragraph on the webpage downloaded from the disputed domain name on December 22, 2014 stated:

“Who am I? My name is An Li, that’s why my domain is aliexpress.com.au. lt is accidently same as the Chinese alibaba site aliexpress.com. LOL. I am doing international business for many years ….”

It would appear therefore that the founder’s name was “An Li” rather than “A Li”. No doubt this gentleman might be addressed on formal occasions as “Mr. A Li”. However, it would be very unusual for someone called “An Li” to be commonly referred to just as “A Li”. That is not how Mr. Li apparently refers to himself on the website. One might expect therefore that the most likely domain name for Mr. Li to register would have been “anliexpress”. The evidence in the form of the succinct email submitted on behalf of the Respondent falls a long way short of enabling the Panel to draw the conclusion that Mr. Li is commonly known as “A Li”.

Further, the email says only that, relevantly, the ALIEXPRESS business was not really a brand in 2010. This is not an express denial of any knowledge of the Complainant’s business or trade mark. The Panel accepts it may be inferred from the succinctly worded email that the Respondent, or Mr. Li and any other “founders”, did not know of the Complainant or its ALIEXPRESS “brand”. Further, the material on the website shows that the Respondent, or Mr. Li, had a very close awareness of the international trading market and claimed considerable knowledge and expertise in online international trade even before 2010.

The email submitted for the Respondent appears to claim that the Respondent and her associates are associated with the business operating at “www.alibaba.com.au”. As directed by the email, the Panel has visited that site. It relates to a food business which has apparently been operating since 1979, well before either the Complainant or the Respondent and her associates entered the field. Most tellingly, the persons operating the business are identified as two brothers whose names are nothing like the name of the Respondent, Mr. Li or the person who sent the email on the Respondent’s behalf.

The intended business model of the Respondent as explained in the email submitted on her behalf indicates a considerable degree of conflict with the Complainant’s prior registered trade mark. In these circumstances, the Panel considers that, as under section 122 of the Trade Marks Act 1995, it fell to the Respondent (including Mr. Li) to explicitly deny knowledge of the Complainant’s business and not leave that to inference.¹

On the very limited state of the evidence submitted by or for the Respondent, the Respondent has not demonstrated that Mr. Li was commonly known as “A Li” or that the disputed domain name was adopted without knowledge of the Complainant’s business or trade mark. The disputed domain name was being used, however, to resolve to a website which directed users to services which included the Complainant’s service, but also included many other competitive services. That type of use of the Complainant’s trade mark to direct the public to sites including competitive sites does not qualify as use in good faith under the Policy. Accordingly, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.

C. Registered or Subsequently Used in Bad Faith

Unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”), this requirement under the auDRP is disjunctive. It is necessary for the Complainant to show only registration in bad faith or use in bad faith.

It would appear from the email received on behalf of the Respondent, however, that the way the disputed domain name was being used until around December 22, 2014 is indicative of the purpose for which the disputed domain name was registered.

As noted in section 5.B above, the use of the Complainant’s ALIEXPRESS trade mark in the disputed domain name to direct potential customers to the services of the Complainant and its competitors is typically use in bad faith under the Policy. Typically, such use involves revenue generation through services such as pay-per-click advertising. It is not at all clear that such an element is present in this case. Nonetheless, the Panel considers the redirection of users to competitive websites in the way the Respondent’s website was doing qualifies as use in bad faith. The continued use of the disputed domain name to, in effect, advertise the services of “Just Host.com” also qualifies as bad faith under the Policy.

Accordingly, the Panel finds that the Complainant has also established the third requirement under the Policy.

6. Decision

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 <aliexpress.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: February 27, 2015

¹ Aneuser-Busch Inc. v Budejovicky Budvar Narodni Podnik [2002] FCA 390.