WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Admixer limited v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Li Hui
Case No. D2016-2388
1. The Parties
The Complainant is Admixer limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Anna Stankevich, United Kingdom.
The Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China / Li Hui of Hangzhou, Zhejiang, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <admixer.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2016. On November 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 November 30, 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 December 5, 2016.
On November 30, 2016, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on December 2, 2016. The Respondent requested that Chinese be the language of the proceeding on the same day. On November 30, 2016, the Respondent submitted two Chinese language emails providing an extra postal address.
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 in English and Chinese, and the proceeding commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. On December 9, 2016, the Respondent submitted a Chinese language email indicating that he is unable to understand English and requesting the Complainant to provide a Complaint in Chinese. On December 26, 2016 and December 27, 2016, the Respondent submitted three emails requesting an extension of Response due date. Accordingly, the Center extended the Response due date to January 3, 2017. The Response was filed with the Center in Chinese on January 2, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 10, 2017. 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 is a company incorporated in the United Kingdom and the provider of services for monetization of advertising under the trade mark ADMIXER (the “Trade Mark”).
The Trade Mark was first used by the Complainant’s predecessor in title in the Ukraine in 2007 and was assigned to the Complainant in 2014.
The Complainant is the owner of several registrations for the Trade Mark, including Ukrainian registration No. 120753, registered on March 25, 2010; and international registration No. 1251547, registered on April 7, 2015. Protection under the Complainant’s international trade mark registration for the Trade Mark was extended to China on February 25, 2016.
The Complainant is also the owner of several domain names comprising the Trade Mark.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on July 19, 2000. The disputed domain name has been transferred to new registrants several times over the years since its first registration. It was apparently transferred to the Respondent sometime between September 2, 2015 and October 27, 2016.
D. The Website at the Disputed Domain Name
The disputed domain name is resolved to an English language website providing sponsored links to third party websites which relate to sound and audio mixers (the “Website”).
The Website also contains, at the top of the website, the wording “The domain admixer.com may be for sale for US$15,000.00. Click here to purchase this domain”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent contends that:
(1) The Complainant’s main business is in Ukraine, the Complainant and its Trade Mark are not well-known worldwide, and the Complainant does not possess any relevant rights in the Trade Mark in China;
(2) The Respondent has rights and legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name was not registered and has not been used in bad faith.
6. Discussion and Findings
6.1 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.
Paragraph 11(a) of the Rules 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 order 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.
The Complainant has requested that English be the language of the proceeding for several reasons, including the following reasons:
1. The disputed domain name is an English language domain name;
2. The Website is entirely in English; and
3. Pre-Complaint negotiations between the Parties were conducted in English.
The Respondent requested that Chinese be the language of the proceeding. The Respondent asserted that he can only understand simple English and not complex, professional English, and asked to be provided with a Chinese language translation of the Complaint (but did not specifically request that the language of the proceeding be 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.
The Panel considers the evidence demonstrates the likelihood that the Respondent is sufficiently proficient in English. Moreover, the Panel notes the Respondent has been able to file the Response notwithstanding his submissions regarding his English language proficiency. 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 filings herein on behalf of the Complainant in English;
2. It will accept the filing of the Response in Chinese; and
3. It will render this Decision in English.
6.2 Substantive Elements of the Policy
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
It is well-established that, at least for the purposes of the first limb under paragraph 4(a) of the Policy, the location of the Complainant’s relevant trade mark rights is irrelevant, and it is not necessary for the Complainant to demonstrate any relevant trade mark rights in the jurisdiction in which the Respondent is based. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which provides as follows:
“Consensus view: If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The disputed domain name comprises the Trade Mark in its entirety. The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
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 a respondent has rights or legitimate interests in a 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.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. 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.
The Respondent asserted that his original rationale in purchasing the disputed domain name from its previous owner was due to a request from his friends in the advertising industry to help them choose a domain name. Whilst the Panel considers such evidence is pertinent to the question of bad faith, it is not strictly speaking relevant to the question of rights or legitimate interests, unless the Respondent’s use of the disputed domain name suggests a connection with the Complainant or with advertising related services competitive with those offered by the Complainant under the Trade Mark.
Notwithstanding the Respondent’s claimed initial reason for purchasing the disputed domain name, the Respondent has in fact been using the disputed domain name in respect of the Website, to earn pay-per-click revenue through sponsored links to third party websites relating to sound and audio mixers. It is readily apparent that such use is focused on the second word “mixer” contained in the disputed domain name, not the letters “ad” which is the commonly used abbreviation for “advertising”.
It is well-recognised that the use of a domain name to gain pay-per-click revenue can amount to a legitimate use, particularly where such use does not result in a connection to goods competitive with those of a complainant (see WIPO Overview 2.0, paragraph 2.6).
In the circumstances, the Panel concludes that the Respondent’s use of the disputed domain name in such manner in connection with the Website, without making any reference to advertising or to advertising related goods or services, adequately rebuts the Complainant’s prima facie case.
C. Registered and Used in Bad Faith
The Respondent asserted that the Complainant’s business is largely based in the Ukraine, that the Complainant’s business is not a truly global business, and that the Complainant has no business in and little visibility in China. The Respondent further asserted that it had no knowledge of the Complainant and of its rights in the Trade Mark at the time of registration of the disputed domain name.
At first blush, this assertion does not sit well with the Respondent’s evidence as to its claimed reason for purchasing the disputed domain name. The Panel considers however that there is some merit in the Respondent’s contention that the disputed domain name consists of the basic combination of the generic English language abbreviation for “advertising” and the word “mixer”. It is not therefore inconceivable that the Respondent’s professed rationale for registering the disputed domain name was based upon the generic meaning of the words “ad” and “mixer” and not due to any perceived connection with the Complainant and its Trade Mark.
The Panel notes that the Complainant has not apparently commenced activities in the Chinese marketplace to date. Nor does the evidence submitted with the Complaint demonstrate that the Complainant has obtained any country code Top-Level Domains (“ccTLDs”) comprising the Trade Mark for the Chinese marketplace.
The Panel also notes that the Complainant’s “www.admixer.net” website is available in English and in Russian language only, and that the world map at the bottom of the Complainant’s website indicates that the Complainant has a presence in five locations (one apparently in the United Kingdom, and four apparently in Eastern Europe), but no presence in China.
It is also noteworthy that protection under the Complainant’s international registration for the Trade Mark was only recently extended to China on February 25, 2016. Whilst this date pre-dates the Respondent’s deemed date of registration of the disputed domain name of as early as September 2, 2015 but no later than October 27, 2016 (see WIPO Overview 2.0, paragraph 3.7 – “the transfer of a domain name to a third party does amount to a new registration”), absent any evidence of some particular renown of the Trade Mark at that time, the Panel considers that it is bound to accept the Respondent’s denial of knowledge of the Complainant and of the Trade Mark at the relevant times at face value.
The matter is further confused by the Respondent’s attempt to rely on the number one Chinese search engine, Baidu, in support of its contention that the Complainant has no goodwill or reputation in the Trade Mark in the Chinese market. Contrary to the Respondent’s assertions, it appears that the Complainant and its Trade Mark do feature on the first page of searches conducted for “ADMIXER” using the Baidu search engine. The Panel notes however that none of the Baidu search results point to websites that target the Chinese market (indeed many of the hits are in Russian language). This would perhaps demonstrate that, given the global nature of the Internet, the use of search engines as evidence in UDRP proceedings (irrespective of the country in which the search engines are based, or in which they otherwise command a large market share) should ideally be supported by further corroborating evidence to assist UDRP panels.
In all the circumstances, the Panel concludes therefore that the disputed domain name was not registered in bad faith.
In respect of the offer for sale of the disputed domain name on the Website, in light of the Panel’s acceptance of the Respondent’s denial of knowledge of the Complainant and of the Trade Mark, the Panel feels bound to conclude also that bad faith use has also not been made out under paragraph 4(b)(i).
The Panel therefore considers that, in all the circumstances, and notwithstanding the apparent contradictions between the Parties’ evidence, the Complainant has, on balance, not been able to establish that the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Dated: January 24, 2017