WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guinness World Records Limited v. 张旭升
Case No. D2017-0228
1. The Parties
The Complainant is Guinness World Records Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Goldberg Kohn Ltd., United States of America.
The Respondent is 张旭升 of Hengshui, Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <guinnessworldrecords.xin> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 10, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On February 13, 2017, the Complainant requested that English be the language of the proceeding. On February 10 and February 14, 2017, the Respondent requested that Chinese be the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceedings commenced on February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017.
On February 17 and February 24, 2017, emails were received from the Respondent respectively.
On March 9, 2017, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Karen Fong as the sole panelist in this matter on March 14, 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, Guinness World Records Limited (“GWR”) is the keeper of records and publisher of the world famous publication “Guinness World Records”, formerly named the “Guinness Book of World Records”. The Complainant also publishes related media offerings featuring superlative achievements and record attempts. In 1954, the Complainant was incorporated in the United Kingdom, and it first published a book featuring world records in 1955. The annual Guinness World Records book is now published in more than 100 countries and in 25 languages. In addition to the book, more than a dozen television series have been filmed documenting world record breaking attempts in various countries including the United Kingdom, China, the United States of America, Australia, Italy, Spain, and India, to name a few. Presently, the Complainant maintains offices and representatives in London, New York, Tokyo, Dubai, Sydney, Beijing, Mumbai, and Latin America.
The Complainant owns at least 242 trade mark registrations worldwide. Of those, it owns 119 registrations for GUINNESS WORLD RECORDS (the “Trade Mark”) and 92 registrations for GUINNESS WORLD RECORDS & Design (Logo) (collectively, the “GWR Marks”). The earliest GUINNESS WORLD RECORDS trade mark registered in China dates back to 1996.
In 2000, the Complainant began online publishing at “www.guinnessworldrecords.com”. The Complainant has a number of other websites including a Chinese website at “guinnessworldrecords.cn”. In 2016, there were over 19.2 million viewings of the Complainant’s websites. The Complainant’s Chinese website had over half a million viewings in the last two years, and the Complainant’s three social media platforms in China collectively have over 600,000 fans. As of December 2016, over a million people subscribe to the Complainant’s YouTube channel. Additionally, since at least as early as 2006, the Complainant has produced television programs in China called the “Guinness China Night” where people attempt record‑breaking challenges in front of a national audience. Between the years 2011 and 2016, unique viewership of the Complainant’s live television programs, excluding repeats, exceeded 2,458 billion viewers per show, and in 2016 alone, more than 241 million unique Chinese viewers watched the Complainant’s television program.
The Respondent registered the Domain Name on March 30, 2016. At the time of the filing of the Complaint, the website connected to the Domain Name offered the Domain Name for sale (the “Website”). On or before February 14, 2017 (Valentine’s Day), the Website was changed to a “valentine” declaration of love between a couple. The Domain Name appears now to be inactive.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the GWR Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent contends that the Domain Name does not infringe the GWR Marks. The Website was automatically generated by the host platform that was used. There was no intention to infringe the Complainant’s rights at the time of registration. The Domain Name should belong to the first person who registers it. The Website was being built and will be used as a mailbox which is a legitimate use. The Complaint in fact interferes with the Respondent’s rights as the Respondent has the right to the Domain Name till it expires. The Website was set up as a testament to the love between a husband and wife. As such there is no violation of the Complainant’s rights.
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, 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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – 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 is Chinese.
The Respondent submits in its emails to the Center on February 10 and 14, 2017 that Chinese should be the language of the proceeding. The Respondent’s English is very poor and he/she has to use the online translation tool in order to understand the Complaint. As the language of the Registration Agreement is Chinese, the language of the proceeding should be Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on February 13, 2017 that the language of the proceeding should be English. The Complainant contends that the Domain Name was offered for sale on the Website in both English and Chinese. In addition, the Respondent responded to the language request from the Center which meant that he/she understood the Complaint.
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 finds that the Website has content in the English language. Further the Respondent did respond to the Complaint which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered and unregistered rights to the GWR Marks which pre-date the Domain Name.
The threshold test for confusingly 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 is identical to the Trade Mark. It is accepted that the inclusion of the generic Top-Level Domain (“gTLD”) denomination “.xin” shall be disregarded for the purpose of these proceedings.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the 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 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 in the domain name. 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 rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services. Rather it resolves to a page offering the Domain Name for sale. The Respondent is not legally or commonly known by the Domain Name. Neither is the Respondent able to show that he/she is engaged in a legitimate noncommercial or fair use of the Domain Name. At no time did the Complainant authorise the Respondent to use the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any evidence that sensibly could show that he/she has any rights or legitimate interests in respect of the Domain Name. The use of the Domain Name from February 14, 2017 as a Valentine declaration does not create a right or legitimate interest.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The GWR Marks were registered and used long before the Domain Name was registered. There are several factors which clearly indicate that the Respondent had knowledge of the GWR Marks. The GWR Marks are well known and distinctive. It has no other meaning other than the meaning ascribed to the GWR Marks. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name and such registration was made in bad faith.
The Domain Name is also being used in bad faith. The Website offered the Domain Name for sale. It was not until the Respondent had received the Complaint that he/she changed the Website to the Valentine’s message. The Respondent has not offered any sensible explanation as to why he/she registered and used the Domain Name as he/she did. Given the world wide fame of the GWR Marks including in China, the Panel considers that in all these circumstances, the Respondent has used the Domain Name in bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <guinnessworldrecords.xin> be transferred to the Complainant.
Date: March 31, 2017