WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
iCard AD v. Yongchang Zhang, Zhangyongchang
Case No. D2018-0151
1. The Parties
The Complainant is iCard AD of Sofia, Bulgaria, represented by /c law, Luxembourg.
The Respondent is Yongchang Zhang, Zhangyongchang of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <leopay.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2018. On January 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2018, 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.
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 proceeding commenced on February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. On February 21, 2018, the Center received an email communication from the Respondent requesting an automatic four-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was March 5, 2018. The Response was filed with the Center (in English) on March 3, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 7, 2018. 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. On March 8, 2018, the Respondent filed a translation of the Response in Chinese. For the purpose of this decision, and as the language of the Registration Agreement is English, the Panel will rely upon the English language version of the Response filed with the Center on March 3, 2018 (which is basically the same as the Chinese language translation filed with the Center on March 8, 2018).
4. Factual Background
The Complainant is a company incorporated in Bulgaria and a provider of e-money services and prepaid payment cards in Europe under the word and device trade mark LEUPAY (the “LEUPAY Trade Mark”).
The Complainant is the owner of registrations for the LEUPAY Trade Mark in the European Union (registration No. 13728027, registered on July 10, 2015) and in Bulgaria (registration No. 134694, registered on January 22, 2016). The Complainant is also the owner of a registration in the European Union for the word and device mark LEUPAY WALLET (registration No. 15593271, registered on November 15, 2016); and the applicant for registration of the LEUPAY Trade Mark in the United States of America, under application Nos. 87334286 and 87334313, filed on February 13, 2017.
The Complainant is also the non-exclusive licensee of European Union registration No. 13324975 for the word mark LEOPAY (the “LEOPAY Trade Mark”), registered on February 19, 2015 in the name of a company incorporated in Jersey, EE Capital Limited, and licensed to the Complainant under a non-exclusive licence agreement dated January 15, 2017 (the “Licence Agreement”).
The Complainant also claims to be the owner of the domain name <leupay.eu> containing the LEUPAY Trade Mark and registered on October 3, 2014; and is the owner of the domain names <leopay.eu>, <leopay.uk>, <leopay.fr>, <leopay.ch>, <leopay.nl> and <leopay.us> containing the LEOPAY Trade Mark, registered on various dates in 2017.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on December 4, 2008.
D. The Website at the Disputed Domain Name
The disputed domain name has been used:
(i) In relation to the Respondent’s personal blog from 2009 to 2017; and
(ii) For development and testing of projects by Beijing Saint Technology Co., Ltd.(北京圣斗士科技有限公司), a company incorporated by the Respondent on March 15, 2016.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the LEUPAY Trade Mark and the LEOPAY 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 the disputed domain name is not confusingly similar to the LEUPAY Trade Mark; the Complainant is not the owner of the LEOPAY Trade Mark and the Complainant’s licence to use the Trade Mark was obtained maliciously and should not be recognised by the Panel; the Respondent has rights and legitimate interests in respect of the disputed domain name; and the disputed domain name was not registered and has not been used in bad faith. The Respondent also requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
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
Absent clear authorisation from the trade mark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1). Under the Licence Agreement, the owner of the LEOPAY Trade Mark has granted a non-exclusive licence to the Complainant to use the Trade Mark in Europe for a term of 10 years. The Licence Agreement authorises the Complainant to take legal action for the “defense” of the LEOPAY Trade Mark, provided that the Complainant informs the owner of the LEOPAY Trade Mark prior to taking any such action.
The Complainant has not filed any evidence with the Complaint to demonstrate that it has complied with its notification obligation under the Licence Agreement prior to filing the Complaint, or that the Complainant has otherwise obtained clear authorisation from the owner of the LEOPAY Trade Mark to file the Complaint. The Panel notes also that the Licence Agreement does not grant the Complainant any rights in respect of the LEOPAY Trade Mark outside Europe and, in particular, in China where the Respondent is based.
In all the circumstances, the Panel finds that the Complainant does not have standing, for the purposes of the UDRP, to include the LEOPAY Trade Mark in the Complaint.
The Panel finds that the Complainant has rights in the LEUPAY Trade Mark acquired through use and registration. Although the disputed domain name was registered several years before the Complainant commenced using the LEUPAY Trade Mark, and several years before the Complainant obtained its registrations for the LEUPAY Trade Mark, this is not relevant to the first element test under paragraph (4)(a) of the Policy (see WIPO Overview 3.0, section 1.1.2). The jurisdiction(s) in which the LEUPAY Trade Mark is registered is also not a relevant consideration for the purposes of the first element.
This is not a proceeding where the disputed domain name comprises a common, obvious or intentional misspelling of the LEUPAY Trade Mark (see WIPO Overview 3.0, section 1.9), as the disputed domain name was registered several years before the Respondent first commenced use of and obtained registrations for the LEUPAY Trade Mark.
The Panel nonetheless finds that, on a straightforward comparison between the LEUPAY Trade Mark and the disputed domain name (see WIPO Overview 3.0, section 1.7), the disputed domain is confusingly similar to the LEUPAY Trade Mark for present purposes. Discounting the Top-Level Domain “.com”, the only difference between the disputed domain name and the LEUPAY Trade Mark is the third letter, “o”, instead of “u”.
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 LEUPAY 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.
In light of the Panel’s findings below on the question of bad faith, it is not strictly necessary for the Panel to make any findings under this element.
The Respondent has in any event filed evidence to demonstrate his use of the disputed domain name from 2009 until 2017 in relation to his personal blog, including the reprinting of some of his articles on Wordpress and Blogger, some of which can be found using the Google search engine. The Respondent has also filed evidence of the use by his company of the disputed domain name for various business concepts and projects in China.
In light of the above, the Panel finds that the Respondent has rebutted the Complainant’s prima facie case.
C. Registered and Used in Bad Faith
Where a domain name has been registered before a complainant has acquired trade mark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith (see WIPO Overview 3.0, sections 1.1.3, 3.8). This is not such an exceptional case.
C.1. Offer to Sell
The Complainant relies upon the Respondent’s pre-Complaint offer to sell the disputed domain name to assert bad faith under paragraph 4(b)(i) of the Policy.
The Panel considers the Complainant unable to avail itself of this ground of bad faith, as the Complainant did not possess any rights in the LEUPAY Trade Mark at the time of registration of the disputed domain name. The Complainant is therefore unable to establish that the disputed domain name was registered in order to profit from or exploit the Complainant’s (then non-existent) LEUPAY Trade Mark (see WIPO Overview 3.0, section 3.1.1).
Furthermore, in light of (i) the Panel’s finding as to the Complainant’s failure to satisfy the lack of rights and legitimate interests in the disputed domain name; and (ii) the manner in which the Complainant’s representative solicited the Respondent’s offer, the Panel finds that the circumstances of this proceeding do not support a finding of bad faith under paragraph 4(b)(i) in any event.
The evidence relied upon by the Complainant is the following email chain:
“Subject: leopay.com quote
On Tuesday, August 15, 2017… [the Complainant’s representative] wrote:
Hi, what is the price of leopay.com?
I have a client who is ready to buy it for 1000 EUR.
Thank you very much…
Wednesday, September 13, 2017… Yongchang Zhang wrote:
This is my seller price
Contact me, please hit my cell phone number…
On Friday, September 22, 2017… [the Complainant’s representative] wrote:
my client offers 5000 EUR final price,
thank you very much,
From: Yongchang Zhang
To: [the Complainant’s representative]
Sent: Monday, September 25, 2017…
my final price 100000 EUR,
Contact me, please hit my cell phone number… “
The Panel accepts the Respondent’s submissions that, when he received this anonymous email, he did not know who the other side was, he thought the offer to buy the disputed domain name may have been a joke, and he casually replied (with a high counter-offer) for interest’s sake and in order to find out if the disputed domain name was popular. The Respondent submits that, as the sender of the email did not respond further, and did not contact the Respondent by telephone as requested, he thought the offer to buy the disputed domain name from a stranger was not genuine.
The Respondent asserts that he really likes the disputed domain name and that he will never sell it.
The Respondent further asserts that the solicitation of his offer was undertaken in bad faith in order to obtain evidence in support of this proceeding.
C.2. Assertion of Well-Known Mark Status
The Complainant asserts that the LEUPAY Trade Mark has a strong reputation and is well-known, as evidenced by its substantial use in the European Union.
Irrespective of whether the evidence filed with the Complainant supports such a conclusion, the Panel notes that the Complainant did not possess any relevant trade mark rights at the time of registration of the disputed domain name; and there is in any event no evidence that the Complainant has made any use of the LEUPAY Trade Mark outside Europe and in particular in China, where the Respondent is based. It is not therefore necessary for the Panel to make any findings as to whether or not the LEUPAY Trade Mark was, at the time of filing of the Complaint, well-known in Europe.
C.3. UDRP Paragraph 2
Given the timing of the registration of the disputed domain name and of the LEUPAY Trade Mark, the Complainant seeks to rely on the Respondent’s representation and warranty, under paragraph 2(d) of the UDRP, that the Respondent “will not knowingly use the domain name in violation of any applicable laws or regulations”.
The Panel notes that the concept of “retroactive” bad faith registration is not recognised by panelists in UDRP proceedings (see WIPO Overview 3.0, section 3.2.1). The Panel further finds that, in any event and in all the circumstances, there is no evidence to support the conclusion that, for the purposes of this proceeding, both at the time of registration of the disputed domain name and up to the present, the Respondent has violated any applicable laws or regulations in registering and using the disputed domain name.
C.4. Conclusion – Bad Faith
For all the foregoing reasons, the Panel concludes that the disputed domain name has not been registered and used in bad faith.
D. Reverse Domain Name Hijacking
(i) The Complainant is represented and should be held to a higher standard than an unrepresented complainant;
(ii) The disputed domain name was registered well before the Complainant obtained relevant trade mark rights;
(iii) Reasonably diligent enquiries by the Complainant and the Complainant’s representatives would have provided evidence of the Respondent’s rights and legitimate interests in the disputed domain name;
(iv) The assertions in Section C of the Complaint that the Respondent has made no use of the disputed domain name at all, which are contradicted by the submissions in Section B that “the domain name indeed leads to a website that contains numerous links to other websites in Chinese or English language”;
(v) The Complainant’s representatives have unreasonably ignored established Policy precedent set out in WIPO Overview 3.0, in particular in seeking to assert “retroactive” bad faith registration; and
(vi) The manner in which the Complainant’s representatives sought to obtain evidence of bad faith by anonymous email solicitation.
The Panel further finds that, in light of the above factors and in all the circumstances, the following submissions included in Section A of the Complaint highlight the ill-founded nature of the Complaint, and provide further support for a finding of reverse domain name hijacking:
“The Complainant intends to concentrate all its activities, in the near future, under the brand “LEOPAY”, and therefore to make an extensive use of the trade mark LEOPAY and domain names <leopay.eu>, <leopay.uk>, <leopay.fr>, <leopay.ch>, <leopay.nl>, and <leopay.us>”.
In all the circumstances, the Panel makes a finding of reverse domain name hijacking against the Complainant.
For the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Dated: March 21, 2018