WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xfera Moviles, S.A. v. lihongbo / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Case No. D2015-2284
1. The Parties
The Complainant is Xfera Moviles, S.A. of Madrid, Spain, represented by Abril Abogados, Spain.
The Respondent is lihongbo of Beijing, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <miyoigo.com> (“the Domain Name”) 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 December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2015 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 December 18, 2015.
On December 17, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 18, 2015, the Complainant submitted a request that English be the language of the proceeding. On the same day, the Respondent requested that Chinese or English and Chinese be the language of the proceeding. On December 29, 2015, the Respondent requested that Chinese only 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceeding commenced on December 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2016. The Response was filed with the Center on January 18, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on January 27, 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 was established in 2006 and is one of the four mobile phone operators in Spain. It provides its products and services under the trade mark YOIGO. The Complainant offers its services online through its website “www.yoigo.com”. At the end of 2014, the Complainant had more than four million customers in Spain. The Complainant owns the following Spanish and Community trade marks for YOIGO:
Spanish Trademark No. 2730813
YOIGO (filed September 18, 2006)
Community Trademark No. 5416904
YOIGO (filed October 25, 2006)
Community Trademark No. 5417324
YOIGO (filed October 25, 2006)
Community Trademark No. 5417373
YOIGO (filed October 25, 2006)
Community Trademark No. 5417381
YOIGO (filed October 25, 2006)
The Complainant also owns a number of domain name registrations comprising the YOIGO mark. These include: <yoigo.es>, <yoigo.com>, <yoigo.eu>, <yoigo.mobi>, <yoigowebmail.com>, <yoigo.biz>, <yoigo.us>, <yoigo.bz>, <yoigo.biz>, <facturayoigo.es>, <yoigonline.es> and <yoigowebmail.com>.
UDRP panelists have acknowledged in a previous decision that YOIGO is a notorious sign which the panel understands to mean that it is well known. The Domain Name has been subject of a UDRP complaint under WIPO Case No. D2013-2114 where the panelist ordered the Domain Name to be transferred to the Complainant. However, the Complainant said that they lost the Domain Name due to “involuntary mismanagement”.
The Complainant has a service called MI YOIGO which allows consumers to check their accounts online. The service can be accessed through “www.miyoigo.yoigo.com”.
The Domain Name was registered by the Respondent on March 19, 2014. The Domain Name is connected to a website (“the Website”) which is a pay-per-click (“PPC”) parking page with links under changing headings which include:
“Yoigo, Factura Electronica, Yoigo Moviles, Tarifas Movil, Free Mobile App Software, A Free Dating Site, A Forex, A Chat Room, M Games, Dating Apps, Free Movie Apps, A Game Online Games, Mobile Phone Songs and Online Chat Room for Singles.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trade mark YOIGO, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent denies all of the claims in the Complaint. He contends as follows:
- The Domain Name was registered through the proper channels for personal use.
- The YOIGO trade mark is not a world famous trade mark and he had not heard of it.
- The Complainant does not have a trade mark registration for YOIGO in China.
- There is no confusion between “miyoigo” and YOIGO.
- The Domain Name is a combination of common ordinary words. “miyoigo” is the English phonetic translation of a Chinese phrase meaning “rice friend shopping”, hence there was no bad faith in the registration.
- The Website is a parking page service which is an industry accepted practice.
- The Complainant failed to renew the Domain Name and therefore gave it up. There was no bad faith on the part of the Respondent when he registered it.
- The Complainant has not provided sufficient evidence to show bad faith or an intention on the part of the Respondent to mislead Internet users.
- The Complaint should be dismissed.
- The Complainant is guilty of reverse domain name high jacking.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following three elements, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and in an email to the Center on December 18, 2015 that the language of the proceeding should be English. The Complainant contends that the links on the Website are in English demonstrating that the Respondent has knowledge of the English language. The Registrar is the sister company of the global online marketplace Alibaba where English is used. English is the international language of business. The time taken for the Complainant to translate all the documents would result in undue delay. Using English is in line with the objective of ensuring fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. The language decided by the panel should not be prejudicial to either one of the parties in their abilities to articulate the arguments for the case.
The Respondent submits in its Response and in an email on December 29, 2015 that Chinese or a combination of Chinese and English should be the language of the proceeding. The Registrar is a company incorporated in China as is its sister company, Alibaba. He does not speak English and therefore unable to properly and accurately communicate in English.
The Panel accepts that the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. From the Website, the Respondent appears to understand English. He also filed the Response in Chinese responding to the allegations in the Complaint. The Panel accepts the Response in Chinese. As such, the Respondent will not be disadvantaged by the proceeding being conducted in English. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has clearly established rights to the trade mark YOIGO. The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the trade mark YOIGO in its entirety together with the prefix, “mi” which is “my” in Spanish. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) suffix. Further, the term “mi” before the word YOIGO does not negate the identity or confusing similarity encouraged by the Respondent’s use of trade mark YOIGO in the Domain Name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to 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 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 has been commonly known by the domain name, even if it 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Respondent has no relationship with it or with YOIGO evidenced by it performing a Google search. The Respondent is not a distributor, reseller or client of the Complainant. The Complainant has never authorized him to use the YOIGO trade mark.
The Respondent alleges that the Domain Name was registered through proper channels and for personal use and seems to suggest that because the trade mark has not been registered in China, is in his view not well known and also because the words have an ordinary meaning in Chinese, he has rights or legitimate interest to the Domain Name. He also appears to suggest that since PPC parking pages are commonplace and accepted in the industry, this too gives him rights and legitimate interests to the Domain Name. The Panel finds that the Complaint has made out a prima facie case.
The Respondent’s allegations and evidence submitted have not been sufficient to demonstrate rights or legitimate interests in the name YOIGO. The fact that another party does not have registered rights of a trade mark in the country where the registrant is based and a domain name which includes the trade mark is available for registration does not give a registrant rights or legitimate interests to that domain name. No convincing explanation has been given as to how and why the Domain Name was chosen. The expression “rice friend shopping” is not a commonplace combination of words in the Chinese language. That the Website has the Complainant’s YOIGO trade mark and reference to “Factura Electronica” (electronic invoice), Yoigo Moviles, Tarifas Movil, Free Mobile App Software, Mobile Phone Songs suggests that there is knowledge of the Complainant’s mobile phone operator services. It would be too much of a coincidence otherwise. A PPC parking page of this kind cannot be said to be a bona fide offering of goods or services where no authorization have been given by the owner of the trade mark. No submissions have been made that the Respondent is commonly known by the Domain Name or has trade mark rights in China or elsewhere. A PPC site cannot be considered noncommercial fair use of the Domain Name.
In the circumstances, the Panel finds that the Respondent has failed to establish that he has rights or legitimate interests in respect of the Domain Name. The Panel finds that the Complainant has satisfied the second element of the UDRP.
E. Registered and Used in Bad Faith
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true. Conclusory allegations without supporting evidence would usually not suffice. To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The YOIGO trade mark was registered and used for some nine years before the Domain Name was registered. The Complainant in fact owned the Domain Name but failed to keep it through administrative error. The term “yoigo” does not have any ordinary meaning in the Spanish or the English language. Neither does “miyogo”. The Respondent’s explanation of its meaning in Chinese is disingenuous. All individual Chinese characters have a meaning. Combining a group of characters and ascribing the meaning to be a combination of all the individual characters does not mean that they have a meaning in the Chinese language.
“Rice friend shopping” is not a commonplace expression. Further the Website itself has no reference to this combination of the words rice, friend or shopping. The panel does not find the vague explanation of how the Domain Name came to be registered as being believable. A simple search on the Internet would have revealed the existence of the Complainant. The Website itself indicates knowledge of the Complainant’s trade mark especially since the actual trade mark YOIGO also appears on the Website. The Complainant also uses the name MI YOIGO to provide a service. It would be inconceivable that the Respondent had no knowledge and actual notice of the trade mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The Website is a PPC site with links to third-party websites, some of which relate to the mobile phone industry. This shows a clear intention of capture of Internet traffic from Internet users who are looking for the Complainant’s products and services. The Domain Name and the content of the Website is calculated to confuse Internet users into believing that the Respondent is part of the Complainant, an authorized agent or somehow connected to the Complainant when this is not the case.
There is also a possibility that the Website can be used for phishing activities given that the Complainant’s service under the mark MI YOIGO requires user names and passwords to access the site. This is the sort of activity which is ripe for scammers to phish for customer personal information. The use of the Domain Name shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website and the products on display are authorized or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
F. Reverse Domain Name Hijacking
The Respondent submits that the Panel should make an order finding Reverse Domain Name Hijacking under paragraph 15(e) of the Rules. As is clear from the findings above, this request is completely without merit and the Panel rejects making such a finding.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <miyoigo.com>, be transferred to the Complainant.
Date: February 16, 2016