WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beijing Qunar Information Technology Co., Ltd. v. Whois Privacy Protection Service, Inc./ Shanghai shebai industrial co., ltd
Case No. D2013-1174
1. The Parties
The Complainant is Beijing Qunar Information Technology Co., Ltd. of Beijing, China, represented by Kirkland & Ellis International LLP, China.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Shanghai shebai industrial co., Ltd of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <qunaer.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2013. On July 1, 2013, the Center transmitted by email to the Registrar eNom, Inc. a request for registrar verification in connection with the disputed domain name. On July 2, 2013, the Registrar eNom, Inc. disclosed to the Center that the registration of the disputed domain name has been transferred to the Registrar HiChina Zhicheng Technology Ltd. On July 2, 2013, the Center transmitted by email to the Registrar HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On July 3, 2013, 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 3, 2013 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 8, 2013. On July 3, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 6, 2013 and July 8, 2013, the Complainant confirmed its request that English be the language of the proceeding. On July 6, 2013 and July 7, 2013, the Respondent submitted its request that Chinese be the language of the proceeding.
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 (both in Chinese and in English),, and the proceeding commenced July 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2013. On July 27, 2013, the Respondent requested that the due date for Response be extended and provided its reasons. Upon receipt of the Complainant’s comment on this matter, the Center decided that the due date for Response be extended to August 7, 2013. The Response was filed with the Center on August 7, 2013.
The Center appointed Sebastian M.W. Hughes, Christopher J. Pibus and Ping Zhang as panelists in this matter on August 29, 2013. The Panel finds that it was properly constituted. Each member of 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 is a company incorporated in China offering travel services since 2005 and the owner of several registrations in China for the trade mark QUNAR.COM (the “Trade Mark”).
The Respondent is a company incorporated in China which provides online ticketing and travel services.
C. The Disputed Domain Name
The disputed domain name was registered on December 27, 2005.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant was founded in 2005. It operates the most popular travel website in China, “www.qunar.com”, under the Trade Mark (the “Complainant’s Website”). The Complainant registered its domain name <qunar.com> on May 9, 2005, and the Complainant’s Website was activated in September, 2005.
In 2011, Apple Inc. named the Complainant’s mobile application – which had over 11.8 million users by the end of June 2012 – the “Best Chinese-Made Travel App” in 2011.
The Complainant has received considerable media attention for its success in attracting high-profile venture capital. In June, 2011, Baidu, China’s largest search engine company, invested USD 306 million in the Complainant for the purpose of developing new services.
The Complainant has spent substantial time, effort and money over the years to extensively advertise the Complainant’s Website, both online and offline, through print advertisements, banners, and keyword advertising, all of which feature the Trade Mark. The Complainant has spent millions of dollars annually to advertise the Trade Mark, and has increased its sales and marketing expenses by a factor of twenty over the past four years.
Unlike the traditional travel agent, the Complainant provides its search services free of charge. The Complainant’s revenue comes substantially from cost-per-click fees and advertising fees. The revenue generated through the Complainant’s Website totals hundreds of millions of dollars annually. The Complainant has grown rapidly with an average annual growth rate of approximately 200% during the past four years.
Following Baidu’s high-profile investment in the Complainant in June of 2011, the Complainant has demonstrated profit generation with a total revenue of USD 23.37 million (RMB 143.23 million) from the acquisition date to December 31, 2011. The high revenue growth of the Complainant would not have been achieved without the wide recognition of the Trade Mark and the high quality of the services exclusively offered under and associated with the Trade Mark.
In addition to its registrations for the Trade Mark, the Complainant relies upon “common law” rights arising in respect of its use of the Trade Mark and of its name “Qunar” since 2005, and refers to the decision in Beijing Qunar Information Technology Co., Ltd. v. Zhou Xiangsheng, WIPO Case No. D2012-2410, in which the Panel concluded that, based on the Complainant’s continuous and extensive use of the Trade Mark and Qunar in commerce, the Trade Mark and Qunar have become the distinctive identifiers associated exclusively with the Complainant’s services.
The disputed domain name is confusingly similar to the Trade Mark in which the Complainant has well-established rights. It comprises a slightly misspelled version of the Trade Mark, the only difference being the addition of the letter “e”. The Respondent is therefore engaging in typosquatting.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no rights in respect of the disputed domain name and has not been licensed or authorised by the Complainant to use the Trade Mark.
The Respondent has registered and used the disputed domain name in bad faith to intentionally attract Internet users, for commercial gain, to the Respondent’s website (“the Website”), by creating confusion with the Trade Mark.
The disputed domain name is being used in respect of the Website which provides numerous links to the website of the Complainant’s main competitor in the Chinese online travel service market, Ctrip, at “www.ctrip.com”. In this regard, the Complainant submits as follows:
(1) The front page of the Website resembles the front page of the Complainant’s Website, with the same Chinese characters for QUNAR (去哪儿) used on the Complainant’s Website, similar logos on the upper left side of the Website, similar search boxes for similar types of travel services, and a similar blue color theme;
(2) The front page and subpages of the Website provide multiple advertisement links to Ctrip websites;
(3) When one uses the search function on the front page, clicks any links on the menu bar of the front page, or clicks any links of the subpages, the Website redirects to a Ctrip website, a website with Ctrip URL, or a website associated with Ctrip; and
(4) The logo on the Website states that the Website is Ctrip’s partner.
The Complainant also draws attention to the fact that ownership of the disputed domain name has apparently changed hands several times, and submits that, for the purposes of the Policy, domain name transfer equals a new registration, and, accordingly, bad faith should be measured from the date of transfer.
Further, regarding bad faith, the Complainant has exhibited to the Complaint a copy of an email dated August 6, 2012 to the Complainant from a person named Zhang Fajian, claiming to be the owner of the disputed domain name, and offering to sell the disputed domain name to the Complainant. The Complainant submits that, in the week of September 10, 2012, the Complainant’s Marketing Director, Qiang Zhou, and Legal Manager, Haie Ping, had a meeting with the person purporting to be Zhang Fajian, who offered to sell the disputed domain name to the Complainant for RMB 1,800,000.
The Respondent made the following submissions in the Response.
The date of registration of the disputed domain name predates the earliest application date for the Complainant’s Trade Mark registrations, October 17, 2006. Accordingly, the Complainant did not have any rights in respect of the Trade Mark at the time the disputed domain name was registered. The press articles relied upon by the Complainant promoting the launch of the Complainant’s Website1 are insufficient to establish sufficient rights in the Trade Mark before the date of registration of the disputed domain name, and there is insufficient evidence to suggest that the Trade Mark was a well-known mark at that time.
Whereas “qunaer” is the pinyin (romanised Chinese text) for “去哪儿” meaning “where are you going?”, “qunar” doesn’t have any particular meaning. Furthermore, as the contents of the Complainant’s Website and the Website are different, there is no likelihood of consumer confusion. Amongst other things, the Website features a snail logo, whilst the Complainant uses a camel logo.
The Respondent claims that the Respondent’s predecessor in title registered the disputed domain name, via a friend based in the United States of America, Wu Yao, with the intention of setting up a legitimate online travel business, however, due to limited funding at the time, the venture failed to commence at that time. In January 2013, the company Shanghai Shebai Industrial Co., Ltd. was incorporated, with Zhang Fajian as the majority shareholder, holding 85% of the shares of the company. The company is a legitimate organisation with all the requisite business licences. It is this company that currently operates the Website. The company has entered into cooperation agreements with several entities, including Ctrip, and is making a legitimate use of the disputed domain name in good faith to provide online ticketing and travel services.
The Respondent denies bad faith registration and use. In particular, the Respondent asserts that, at the time the disputed domain name was registered, the Complainant had no reputation in the Trade Mark, and the Respondent did not know of the existence of the Complainant.
The Respondent does not deny that Zhang Fajian sent the email exhibited to the Complaint to the Complainant, nor does the Respondent deny that the meeting took place in Beijing on September 10, 2012. The Respondent asserts that the email and the meeting amounted to no more than normal business communications, and that the mention by Zhang Fajian during the meeting of a sale price of RMB 1,800,000 for the disputed domain name was no more than idle chat.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; and Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Respondent is fully capable of proceeding in English, as evidenced by the following:
(a) the Respondent appears to have registered five domain names with Registrars which operate only in English;
(b) some of the other domain names apparently registered by the Respondent contain English language words; and
(c) the Website is resolved directly to the English language “www.ctrip.com” website of the Complainant’s competitor, which shows that the Respondent is using the disputed domain name to target English language speakers;
(2) The Respondent has engaged in “cyberflight” by changing the Registrar from eNom, Inc, a Registrar which only operates solely under an English language Registration Agreement, to a Registrar with a Chinese language Registration Agreement, just one day after the Complaint was filed, and after having received notice of the Complaint;
(3) The proceeding will be delayed and the Complainant will be unduly burdened if the proceeding is conducted in a language other than English.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(1) The disputed domain name is now registered with HiChina Zhicheng Technology Ltd, and the language of the current Registration Agreement is Chinese. According to the Policy, the language of the proceeding should therefore be Chinese;
(2) The Respondent is a Chinese citizen and the Respondent’s company is a Chinese company which operates mainly in China. For these reasons, it would be more appropriate for the language of the proceeding to be Chinese;
(3) The Respondent and the Respondent’s colleagues do not understand English and it would be very difficult for them to understand if English is used as the language of the proceeding;
(4) The disputed domain name is the pinyin (romanised text) for “where are you going?” in Chinese, so it would be best to have a Chinese speaking panel, and for the proceeding to be conducted in Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Notwithstanding the Respondent’s assertions that it cannot understand English, the Respondent has nonetheless proceeded to file a lengthy Response with numerous annexures. The Panel finds, in all the circumstances, that sufficient evidence has been adduced by the Complainant to suggest that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. It will accept the filing of the Complaint in English;
2. It will accept the filing of the Response in Chinese; and
3. It will render its Decision in English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that for the purposes of the Policy the Complainant has rights in the Trade Mark acquired through use which predate by several months the date of registration of the disputed domain name.
The Panel concludes, on the totality of the evidence, this is likely a case of typosquatting. In any event, the Panel concludes that the only difference between the disputed domain name and the Trade Mark, the addition of the letter “e”, is not sufficient to distinguish the disputed domain name from the Trade Mark. The Panel would further note that there are two commonly accepted ways of writing the Chinese characters for “去哪儿” (meaning “where are you going?”) in pinyin – either “qunar” or “qunaer”. In the Panel’s view, this serves to heighten the likelihood of confusion.
The Panel notes that both parties to this proceeding are based in China. The Respondent asserts that, at the time of registration of the disputed domain name, the Complainant had not yet filed applications for registration of the Trade Mark in China. This gives rise to an interesting issue in that Chinese trade mark law does not normally recognise unregistered trade mark rights, unless it can be shown that the mark in question has been recognised, either in court proceedings, or in administrative trade mark proceedings, as a well-known mark.
It is however trite that, for the purposes of the first element under paragraph 4(a) of the Policy, the date the Complainant acquired trade mark rights (whether registered or unregistered) is immaterial. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use 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) 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) the Respondent is making a legitimate noncommercial 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.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior unregistered trademark rights in QUNAR.COM which precede the Respondent’s registration of the disputed domain name. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence shows that, at least since January 2013, the disputed domain name has been used in respect of the Website, which contains the same Chinese language characters for QUNAR (“去哪儿”) used on the Complainant’s Website as well as similar logos, layout and corporate livery, and contains numerous links to the websites of the Complainant’s competitor, Ctrip.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
Circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.
The Panel does not find the Respondent’s explanation regarding the email of August 6, 2012 and the meeting of September 10, 2012 at all convincing. In all the circumstances, the Panel concludes that the conduct of Zhang Fajian in arranging the meeting and during the course of the meeting offering to transfer the disputed domain name for the amount of RMB 1,800,000 amounts to bad faith for the purposes of paragraph 4(b)(i) of the Policy.
Accordingly, the requisite element of bad faith has been made out and the Complainant has prevailed.
Although it is not therefore strictly necessary for the Panel to determine whether or not any other conduct of the Respondent amounts to evidence of bad faith, the Panel will also address the assertion of the Complainant that the Respondent’s use of the Website amounts to bad faith registration and use of the disputed domain name.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Respondent seeks to argue that, as at the time of registration of the disputed domain name, the Trade Mark was not a well-known trade mark. Whilst, on the evidence, this may be the case (in that there is no evidence on the record of the Trade Mark having been recognized by the relevant authorities in China as a well-known mark at the relevant time), it is not the relevant test for the purposes of the Policy. Provided the Complainant is able to show either registered or unregistered rights in respect of the Trade Mark which predate the date of registration of the disputed domain name, then this is not a case where, at the time of registration of the disputed domain name, the Respondent could not have contemplated the Complainant’s then non-existent rights, and, accordingly, the third element under paragraph 4(a) of the Policy (which requires bad faith registration and use) would not be made out (see WIPO Overview 2.0, paragraph 3.1).
The Complainant seeks to rely on what it refers to as “common law” rights arising in respect of its use of the Trade Mark from May 2005. This is a somewhat inappropriate choice of language seeing as both parties to this proceeding are Chinese entities, and China of course is a civil law jurisdiction that does not recognise common law rights. The Policy does however recognise the concept of unregistered trade mark rights and, in all the circumstances, the Panel considers the use of the phrase “common law rights” as the equivalent of a reference to unregistered trade mark rights. The Panel notes the Complainant’s legal representatives are apparently representatives of the Beijing office of a law firm headquartered in the United States of America, which is of course a common law jurisdiction. This would likely explain the use of the term “common law rights” instead of “unregistered trade mark rights” (see also paragraph 1.7 of the WIPO Overview 2.0).
There remains nonetheless an apparent conflict between Chinese trade mark law, which, as stated above, does not usually recognise unregistered trade marks per se, and the Policy. In this regard, however, the Panel notes it has a wide discretion regarding the rules and principles of law it deems applicable. See paragraph 4.15 of the WIPO Overview 2.0:
“Paragraph 15(a) of the UDRP provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable. Rooted in generally-recognized principles of trademark law, and designed to operate in the context of the world wide web, the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist)”.
Furthermore, it is well-established under UDRP jurisprudence that transfer of a domain name to a third party may amount to a new registration for the purposes of paragraph 4(b)(iv) of the Policy (see WIPO Overview 2.0, paragraph 3.7). Accordingly, the submissions of the Respondent regarding the use of the disputed domain name prior to January 2013 are of no relevance for the purposes of this proceeding. In all the circumstances, the Panel has no hesitation in finding that the use by the current Respondent of the Website from January 2013 amounts to bad faith registration and use of the disputed domain name for the purposes of paragraph 4(b)(iv) of the Policy.
As regards the requirement to show registration in bad faith, the Panel concludes, in all the circumstances of this proceeding, and given in particular the large amount of pre and post launch publicity in respect of the Complainant’s Website, as well as the somewhat limited explanation given by the Respondent as to the circumstances surrounding the registration of the disputed domain name, apparently by a predecessor in title to the Respondent, the Complainant has adduced sufficient evidence to enable the Panel to draw the conclusion that the disputed domain name has been both registered and used in bad faith.
The Panel therefore finds the requisite element of bad faith has been satisfied, under both paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <qunaer.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Christopher J. Pibus
Date: September 12, 2013
1 An August 3, 2003 Financial Times article, and two September 23, 2005 and September 25, 2005 New York Times articles.