WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agence France Presse v. Pan Li Qiang
Case No. D2017-1861
1. The Parties
The Complainant is Agence France Presse of Paris, France, represented by Cabinet Pascale Lambert & Associés, France.
The Respondent is Pan Li Qiang of Tianjin, China, self- represented.
2. The Domain Names and Registrar
The disputed domain names <afp.news>, <agencefrance-presse.news>, and <agencefrancepresse.news> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 26, 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 September 28, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on September 29, 2017, and filed an amended Complaint in response to the Center’s request. The Respondent did not comment on the language of the proceeding by the specified due date.
On September 30, 2017, the Respondent submitted an email in Chinese indicating that it would like to negotiate with the Complainant and transfer the disputed domain names to the Complainant. Accordingly, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by October 9, 2017. On October 2, 2017 and October 4, 2017, the Respondent submitted three further emails indicating that it would like to transfer the disputed domain name <afp.news> for a fair price and transfer the other disputed domain names for free to the Complainant. On October 6, 2017, the Complainant confirmed to the Center that no agreement could be reached and requested to continue 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 English and Chinese of the Complaint, and the proceedings commenced on October 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2017. On October 10, 2017, the Respondent submitted an email indicating it can’t understand English. The Respondent did not file a formal response. Accordingly, the Center notified the Parties of the commencement of panel appointment process on October 31, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on November 16, 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 leading global news agency, operating in more than 150 countries. The Complainant owns trade mark registrations in many countries across the word including:
a) A.F.P. (French Trade mark No. 1330067, filed on November 7, 1985 and European Union Trade mark No. 187286, filed on April 2, 1996); and
b) AGENCE FRANCE-PRESSE (French Trade mark No. 1330068, filed on November 7, 1985 and European Union Trade mark No. 187310, filed on April 2, 1996).
These trade marks were filed and registered before the registration dates of the disputed domain names. The trade marks of the Complainant have been used for many years, in particular for a news and information agency, and associated goods and services. The Complainant contends that it’s A.F.P. and AGENCE FRANCE-PRESSE marks are well known, including in China, where the Respondent is located.
The disputed domain name <afp.news> was registered on November 3, 2016; the disputed domain names <agencefrance-presse.news> and <agencefrancepresse.news> were registered on July 3, 2017. The disputed domain names do not resolve to any active websites but to error pages.
A cease and desist letter was sent by the Complainant to the Respondent on June 30, 2017. The Respondent responded in Chinese, offering to sell the domain name <afp.news> to the Complainant for around USD 543,000.
5. Parties’ Contentions
1. The disputed domain names are identical and/or confusingly similar to the Complainant’s AFP and AGENCE FRANCE-PRESSE trade marks. The trade marks are, respectively, clearly and immediately recognizable within the disputed domain names. The disputed domain names include the entirety of the respective trade marks of the Complainant. The only difference between the Complainant’s trade marks and the disputed domain names is essentially the “.news” generic Top-level domain (“gTLD”). This additional suffix, being a gTLD, is not a distinguishing factor. The choice of the gTLD “.news” is no mere coincidence as the Complainant’s trade marks are well known in the information/news field, and relates specifically to the Complainant’s core activity. The “.news” gTLD therefore adds to the risk of confusion, rather than diminishing it.
2. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not an authorized dealer, licensee or commercial partner of the Complainant. The Complainant never authorized the Respondent to register or to use its AFP or AGENCE FRANCE-PRESSE trade marks as domain names, nor has there been any relationship between the parties. The Respondent is moreover not commonly known by the disputed domain names. There has been no bona fide offering of goods and services by the Respondent under the disputed domain names.
3. The disputed domain names were registered and are being used in bad faith. Considering that the Complainant’s AFP and AGENCE FRANCE-PRESSE trade marks are widely used and well known, the Respondent could not have been unaware of the Complainant’s trade marks. The disputed domain names do not resolve to an active website, and there is no evidence that the Respondent is taking steps to put the disputed domain names to use. The previous exchanges between the Complainant and the Respondent regarding the matter in dispute clearly show that the Respondent registered the disputed domain names for the sole purpose of selling them to the Complainant at a very high price. Notably, on July 3, 2017, after having received the Complainant’s cease and desist letter, the Respondent went on to register the other two domain names, <agencefrance-presse.news> and <agencefrancepresse.news>. For these two disputed domain names, the Respondent wanted consideration in the amount of about USD 271,240 each. The amounts demanded by the Respondent far exceed reasonable out-of-pocket expenses incurred in registering the disputed domain names. A further cease and desist letter sent to the Respondent remained unanswered. These circumstances are all indicators of bad faith registration and use.
The Respondent did not file any formal Response.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement is in Chinese. However, the Complainant requested that English be treated as the language of the proceeding since it is obvious that the Respondent understands English. The Respondent was able to respond (albeit in Chinese) to the Complainant’s representative’s cease and desist letter which was in English, by offering to sell the disputed domain names. Furthermore, the disputed domain names are in Latin and not Chinese script. The Complainant does not have knowledge of the Chinese language. Requiring the Complainant to have the Complaint translated into Chinese would pose a high financial burden on the Complainant and unnecessarily delay the proceedings.
The Respondent did not comment on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding. ”
In view of the mandate the Panel has, namely to ensure that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules) and of the rather apparent circumstance, that the Respondent is familiar with the English language, the Panel determines that it would be appropriate for English to be the language of the proceeding.
The Panel is persuaded that the Respondent has a level of understanding of the English language and would not be prejudiced if the language of the proceeding were English. The Respondent did not claim that it does not understand English, nor did it ask to file a Response in the Chinese language. It made no effort to rebut the Complainant’s assertions. On the other hand, requiring the Complainant to undertake English translations of the Complaint and annexes thereto would pose a time and financial burden upon the proceeding which has no merited in the instant case.
The Panel therefore determines that English shall be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade marks AFP and AGENCE FRANCE-PRESSE. These trade marks have been incorporated in their entirety in the respective disputed domain names <afp.news>, <agencefrance-presse.news>, and <agencefrancepresse.news>. The Complainant’s trade marks are immediately identifiable in the disputed domain names. The omission of the hyphen in the <agencefrancepresse.news> domain name is of no significance, and insufficient to remove the identity with the Complainant’s AGENCE FRANCE-PRESSE trade mark. The Panel agrees that the confusing similarity is supported by the use of these Trade Marks with the <.news> gTLD, as the latter corresponds with the industry and business of the Complainant.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant is required under the Policy to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of panellists is that complainants are only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case in support. Thereafter, the burden moves to the respondent to establish, with evidence, showing that it has rights or legitimate interests in the domain name in dispute.
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case. There is no evidence of any relationship between the Complainant and the Respondent, nor of the Respondent being commonly known by the disputed domain names.
In this case, the Respondent not only chose not to file a response to demonstrate its rights or legitimate interests in the disputed domain names but also (i) sought to derive exorbitant sums of money for the transfer of the disputed domain names and (ii) registered the disputed domain names <agencefrance-presse.news> and <agencefrancepresse.news> right after having received the communication from the Complainant’s representative regarding the <afp.news> domain name. These actions reflect a clear lack of rights or legitimate interests in the disputed domain names, as well as bad faith.
In the circumstances, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the reasons mentioned in the preceding section, the Panel has no difficulty concluding that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent. One of these is:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name”.
The Panel finds that the instant case falls within squarely paragraph 4(b)(i) of the Policy. It is obvious that the Respondent registered the disputed domain names in bad faith, being well aware of the Complainant and its rights in the AFP and AGENCE FRANCE-PRESSE trade marks.
In the premises, the Panel finds that the third element of paragraph 4(a) 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 disputed domain names <afp.news>, <agencefrance-presse.news>, and <agencefrancepresse.news> be transferred to the Complainant.
Date: November 29, 2017