WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
China Ready and Accredited Pty Ltd v. Warren Weitzman, Caramba LLC
Case No. D2015-2164
1. The Parties
The Complainant is China Ready and Accredited Pty Ltd of New South Wales, Australia, represented by Axis Legal (Australia) Pty Limited, Australia.
The Respondent is Warren Weitzman, Caramba LLC of Bethesda, Maryland, United States of America (“United States”), represented by Greenberg & Lieberman, LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <chinaready.com> (the “Disputed Domain Name”) is registered with EPAG Domainservices GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2015. On November 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. The Response was filed with the Center December 18, 2015.
The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 5(b)(iv) and (v), the Respondent requested a three-member Panel.
On December 23, 2015, the Complainant filed a Supplemental Filing with the Center in the name of China Ready and Accredited Company Ltd, while the Complaint was filed in the name of China Ready and Accredited Pty Ltd.
The Center appointed Gabriela Kennedy, Philip N. Argy and The Hon Neil Brown Q.C. as panelists in this matter on January 25, 2016. 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.
The Supplemental Filing will not be accepted by the Panel. The Panel finds that it does not add any new argument and considers it is not necessary to take it into consideration.
4. Factual Background
The Complainant is stated to be China Ready and Accredited Company Ltd, a Chinese corporation with subsidiaries in a number of territories including Australia and is engaged in the provision of certified training services for tourism, retail, corporate, hospitality and financial services. However, the Complaint has been filed in the name of China Ready and Accredited Pty Ltd, the Australian subsidiary of the so-called Complainant. As most of the submissions put forward before the Panel relate to China Ready and Accredited Company Ltd, the Panel will treat this entity as the actual Complainant. Since 2012, the Complainant has supplied its goods and services to numerous individual and business consumers across the globe.
The Respondent is in the business of providing online advertising and domain monetizing services for others. The Disputed Domain Name was registered on March 21, 2006.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant has been using the CHINA READY mark continuously and extensively since 2012. The Complainant has also since 2012 been operating its website “www.chinareadyandaccredited.com”, establishing a number of significant global alliances and partnerships, and using various social media platforms to promote its services. Since May 2013, the Complainant has registered trade mark rights in CHINA READY. As a result of the extensive use of the CHINA READY mark, the CHINA READY brand of services has gained a substantial reputation in the tourism, hospitality, corporate and education sectors and holds significant goodwill.
(b) The Disputed Domain Name wholly incorporates and is identical to the Complainant’s business name, company name and trade marks.
(c) The Respondent is not commonly known by the Disputed Domain Name. There is minimal information about the Respondent’s business online, none of which evidences any intention to use the Disputed Domain Name. The Respondent’s LinkedIn page suggests that the business of the Respondent is the development and monetization of domain names. According to a reverse WhoIs search for the Respondent, it owns 11,755 current domain names.
(d) The Respondent has not at any time used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a parking site and only includes the Registrar’s sponsored links. It appears to the Complainant that the Respondent registers bulk domain names with the sole intention of parking them thereby preventing a registered trade mark owner from using its brand as a domain name or for the purpose of redirecting traffic. A respondent’s use of a domain name which incorporates a third party’s trademark in connection with an Internet website merely listing links to third party websites (including those offering goods and services in direct competition with a complainant’s products) is not a bona fide offering of services and is not a legitimate noncommercial or fair use of the disputed domain name.
(e) The Respondent’s use of the Disputed Domain Name to monetize the Disputed Domain Name gives rise to presumption of bad faith pursuant to paragraph 4(iv) of the Policy.
(f) The Complainant contends that “China ready” does not have any ordinary meaning in the English language and is associated with the Complainant’s services. The Complainant’s international trade mark registrations evidence this assertion. The Complainant submits that the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the website at the Disputed Domain Name, which domain name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant and the “www.chinareadyandaccredited.com” website.
The Respondent’s contentions can be summarized as follows:
(a) The Respondent asserts that the Disputed Domain Name is a generic phrase widely used around the world as an English language “shorthand phrase” for “China is ready” and or an area’s level of readiness for Chinese tourists and visitors. The common phrase “China Ready” is and was used by numerous individuals and entities since long before Complainant chose to make use of the phrase as its trade name and its alleged use for numerous goods and services.
(b) Other people or entities use the same type of common phrase to denote a city’s or state’s preparedness for engagement with visitors of other country. For example, US Ready, Inc. uses the common informational phrase “US Ready” to help prepare international students with necessary information about the United States in order for the students to be prepared for relocation. Moreover, it is also common to include a geographical area with the term “ready” to denote “preparedness”.
(c) Although the Complainant asserts a number of trademark registrations for the term “China Ready”, it is clear that it has yet to use the phrase in the United States as a trademark or service mark and thus, it is merely using the term as an informational generic phrase and as the name of its company. The mark the Complainant shows consistently on its English language webpages is “China Ready & Accredited & Design” with the word CHINA within a stylized circle design, as seen on the Complainant’s site at “www.chinareadyandaccredited.com”. Newspaper articles on the Complainant’s own website make it clear that the phrase “China ready” is a generic phrase as it is used repeatedly in sentences.
(d) The Respondent has rights in the Disputed Domain Name. The Respondent registered and has been using the Disputed Domain Name in association with commercial advertising services since 2006, notably almost six years before the Complainant’s claimed 2012 date of first use. As a result of the Respondent’s registration and use of the Disputed Domain Name, the Respondent acquired common law rights to the CHINA READY trademark and is using it to generate income by providing online advertising and marketing services for others.
(e) In a United States District Court for the Eastern District of Virginia federal court matter, Warren Weitzman v. Lead Networks Domains PVT., LTD, Case No. 1:09-cv-01141 (USDC EDV, 2010), the Respondent litigated the issue of whether the use of domain names resolving to a landing page is permissible and rises to the level of trademark usage. In Magistrate Davis’ Sept. 24, 2010 Report and Recommendations, which were adopted in Judge Claude M. Hilton’s Oct. 26, 2010 Order, under “II. Findings of Facts” the Court stated at pages 7-8:
“Since 1994, through licensing agreements, Plaintiff [Respondent] has entered into contracts with registries, Verisign, Inc. and Public Interest Registry, Inc., to acquire ownership of over 12,000 domain names. Plaintiff is allegedly the rightful owner of the disputed Domain Names. As a result of Plaintiff’s registration and use of the Domain Names, Plaintiff now owns common law rights to the trademarks and is using them to generate income by providing online advertising and marketing services for others. In addition, Plaintiff’s pervasive use of the Domain Names transposed the trademarks into valuable assets to Plaintiff, representing Plaintiff’s substantial goodwill and solid reputation with consumers. Therefore, through Plaintiff’s longstanding, continuous, and exclusive use of the Domain Names, Plaintiff owns valid and enforceable rights to each of the registered Domain Names.”
(f) The Respondent has used the Disputed Domain Name since as early as 2006 as a domain name and as a distinctive mark at common law in association with advertising and domain monetizing services for others.
(g) The Complainant fails to make any arguments about the Respondent’s actual actions other than to indicate that the Respondent allows the Disputed Domain Name to resolve to a landing page and does not allege that the “www.chinaready.com” webpage has links pertaining to the goods or services of the Complainant, which it does not.
(h) It is also well-established that domain names containing common dictionary words or phrases may be registered in good faith and, per se, establish the Respondent’s legitimate interest. Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105(“use of short terms [...] even for sale, is a legitimate business”).
(i) The first to register a domain name containing a generic mark should prevail absent bad faith (see CRS Technology v. Condenet Inc. NAF Claim No. 93547). A person may register a common, generic, word or phrase on a first come, first served basis as a general rule (see Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161). see also Scorpions Musikproductions und Verlagsgesellschaft MBH v. Alberta Hot Rods, WIPO Case No. D2001-0787).
(j) The Disputed Domain Name was not registered in bad faith with the intentions to prevent the Complainant from obtaining the domain name, or to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
(k) The Respondent registered the Disputed Domain Name because it was and is a generic informational phrase. In accordance with the federal court ruling referenced above Respondent has common law rights to the name “China Ready” for advertising and marketing for others and as such, one cannot show the Respondent is using the domain name in bad faith.
(l) The Complainant asserts rights to “China Ready” as of 2012, presumably when the Complainant formed its company. The Complainant did not exist when the Disputed Domain Name, <chinaready.com>, was registered by the Respondent. The Respondent has used the Disputed Domain Name in the same manner since registration. Upon information and belief, the Complainant most likely knew of the Disputed Domain Name registration when it registered its current domain name <chinareadyandaccredited.com> in 2011. Upon information and belief, the Complainant has not filed any actions against any of the other domain names Top-Level Domains, many of which offer goods / services in the same channels of trade as the Complainant. The English language informational phrase “China Ready” is a generic phrase used 1) as a shorthand contraction for “China is ready for something and 2) to denote a level of readiness for Chinese tourists and visitors.
(m) When the Respondent registers a domain name before the Complainant’s relied-upon trademark rights are shown to have been first established, the registration of the domain name could not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. See, John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.
(n) The Complainant has most likely known of the Respondent and its ownership of the Disputed Domain Name since 2011 as <chinareadyandaccredited.com> was registered on December 12, 2011. Upon information and belief, most likely the Complainant attempted to register <chinaready.com> and other domain names which include “China Ready,” and determined these domain names were not available at that time.
(o) The Complainant does not own <chinaready.cn>, as it is owned by an information technology company which seems to provide classes online. It is telling that the Complainant, a Chinese company claiming exclusive rights to the term “China Ready” has not attempted to obtain the following domain names: <chinaready.cn>; <chinaready.com.cn>; <chinaready.co.uk>; and <chinaready.us>. Upon information and belief, all of these “China Ready” domain names were registered and used for many years for the same or similar goods and services as Complainant, yet there is no indication that the Complainant has complained of these companies’ registrations and use of “China Ready.”
(p) The Respondent asserts that the Complainant brought this action in bad faith and as such, constitutes an instance of Reverse Domain Name Hijacking within the meaning of paragraph 15(e) of the Rules, based upon the complete lack of evidence that the Disputed Domain Name, consisting of generic terms, was a bad faith registration and is not being used legitimately by the Respondent. The Complainant knew, or should have known, that it could not have the exclusive rights to the informational phrase “China Ready”, because it is generic and/or it has become heavily diluted by common law use by other entities.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a 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 and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the CHINA READY mark based on its trade mark registrations since May 2013 and/or its common law rights in the CHINA READY mark since 2012. While both the Complainant’s first use of the CHINA READY mark and its registrations postdate the Disputed Domain Name’s registration, paragraph 4(a)(i) does not require that the trade mark be registered prior to the Disputed Domain Name. This may be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii), which is considered below.
The Disputed Domain Name incorporates the Complainant’s CHINA READY mark in its entirety. It is well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the CHINA READY mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the CHINA READY mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it 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 was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it 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.
The Disputed Domain Name currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.6 of the WIPO Overview 2.0, use of a domain name to post parking pages or pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ […] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder”. A common example of permissible use of parking pages or pay-per-click links, which may amount to a right or legitimate interest, is a domain name that consists of a dictionary or common word, and the pay-per-click links genuinely relate to the generic meaning of the domain name and the respondent had no intention of targeting the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; US Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. 365884).
In this case, the Panel considers that the Disputed Domain Name consists of the common phrase “China Ready” and the pay-per-click links come within at least a generally understood meaning of the phrase i.e. “ready for China”. Considering this against the background of the Respondent’s apparent business in advertising and domain monetizing services for others using numerous domain names over the years, and that there is no evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name, the Panel considers the Respondent has rights or legitimate interests in the Disputed Domain Name.
The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not need to consider whether the requirements of paragraph 4(a)(iii) are met.
D. Reverse Domain Name Hijacking
The Respondents request a finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The onus is on the respondent to prove that the complainant filed its complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.
In this case, the Complainant correctly identified that the Disputed Domain Name was registered in 2006. However, as stated by the Complainant, the earliest date of its registration or use of the CHINA READY mark was in 2012. As such, the registration of the Disputed Domain Name could not have been in bad faith. This point is specifically discussed in paragraph 3.1 of the WIPO Overview 2.0 that “[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”. In the light of the above, the Panel considers that the Complainant could never have prevailed and that it is unlikely that this obvious deficiency in its case could have been overlooked by the Complainant, who is represented by counsel.
The Panel, therefore, finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complainant engaged in Reverse Domain Name Hijacking.
Philip N. Argy
The Hon Neil Brown Q.C.
Date: February 11, 2016