WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alibaba Group Holding Limited v. Huang Guofeng

Case No. D2018-2450

1. The Parties

The Complainant is Alibaba Group Holding Limited of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Mayer Brown LLP, China.

The Respondent is Huang Guofeng of Seoul, Republic of Korea, self-represented.

2. The Domain Names and Registrar

The disputed domain names <jackmafoundation.com> and <jackmafoundation.org> are registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 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.

On November 2, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On November 5, 2018, the Complainant requested that English be the language of the proceeding. On November 6, 2018, the Respondent requested that Korean 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 of the Complaint, and the proceedings commenced on November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Response was filed with the Center on November 27, 2018.

On November 30, 2018, the Complainant submitted an unsolicited Supplemental Filing.

The Center appointed Andrew J. Park as the sole panelist in this matter on December 12, 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.

4. Factual Background

Alibaba Group Holding Limited (Chinese: 阿里巴巴集团控股有限公司) is a Chinese multinational conglomerate specializing in e-commerce, retail, Internet, AI and technology. Founded on April 4, 1999, the company provides consumer-to-consumer, business-to-consumer, and business-to-business sales services via web portals, as well as electronic payment services, shopping search engines and cloud computing services. It owns and operates a diverse array of businesses around the world in numerous sectors, and is named as one of the world’s most admired companies by Fortune.

The Complainant owns trademark registrations for marks comprising of or incorporating JACK MA on which the Complaint is based, including registrations in the Republic of Korea, Hong Kong, mainland China, Taiwan and Macau.

Jack Ma (“Mr. Ma”) is the lead founder of the Complainant since 1999, and in 2014, he established the Jack Ma Foundation, a charitable organization of which the aim is to promote human development in harmony with both society and the environment; the foundation is currently focused on education. The Foundation has also registered the domain name <jackmafoundation.org.cn>, which resolves to the Foundations’s official website.

The Respondent submitted the Response on November 27, 2018.

The disputed domain names <jackmafoundation.com> and <jackmafoundation.org> were registered by the Respondent on November 24, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names should be transferred to the Complainant because:

1) the disputed domain names <jackmafoundation.com> and <jackmafoundation.org> are identical and confusingly similar to the Complainant’s trademark or service mark in which the Complainant has rights.

The Complainant has registered numerous trademarks comprising of the JACK MA trademarks to protect its interests around the world including in the Republic of Korea, China, Singapore and Hong Kong and these registrations are all prior to the registration of the disputed domain names by the Respondent. The disputed domain names incorporate the Complainant’s JACK MA trademark in its entirety and the only difference between the disputed domain names and the Complainant’s trademark is the inclusion of the word "foundation" as a suffix. The addition of a generic term as a prefix or a suffix does nothing to distinguish the disputed domain names from the Complainant’s trademark; in fact, it adds to the confusing similarity, because it cannot be mere coincidence that the Respondent registered the disputed domain names within seven months of the Complainant’s announcement that Mr. Ma was setting up a charitable foundation called the Jack Ma Foundation. Also the generic Top-Level Domain (“gTLD”) extensions, “.com” and “.org” may be disregarded in assessing the similarity.

2) the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorized or licensed the Respondent to use of its JACK MA trademark, nor is the Respondent an authorized representative or partner of the Complainant. The Respondent does not own any trademark registrations reflecting or corresponding to the disputed domain names. The Respondent has no evidence of the use of the disputed domain names in connection with a bona fide offering of goods or services and furthermore, it has never been commonly known by the JACK MA trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent of commercial gain. In fact, the Respondent has been using the disputed domain names to unfairly capitalize upon or otherwise take advantage of the confusing similarity between the Complainant’s JACK MA trademark and the disputed domain names, to pass itself off as the official website of Mr. Ma and/or the foundation and to attract Internet users to sell them books and clothes via the Respondent’s website for commercial gain.

3) the disputed domain names were registered and are being used in bad faith. The Complainant’s trademark registration of JACK MA is much prior to the Respondent becoming the owner of the disputed domain names in 2014. Since the Complainant and its affiliates have acquired distinctiveness through their extensive use of the JACK MA trademark, it is obvious that the Respondent registered the disputed domain names despite being aware of the Complainant’s exclusive rights to the Jack Ma trademark to take advantage of the Complainant’s reputation.

The Complainant contends that in 2015, the disputed domain names resolved to a website in relation to YunFeng Capital (“YF Capital”) which was Mr. Ma’s private equity firm founded in 2010. The Respondent’s website was a direct copy of the official website of Mr. Ma’s company, YF Capital, and later in 2016, they resolved to a website in relation to the Jack Ma Foundation which displayed news articles concerning Mr. Ma and the Complainant’s business operations. In 2018, the Respondent’s website offered for purchase a book entitled “Alibaba: The House that Jack Ma built”, written by Duncan Clark and a t-shirt incorporating the words “Jack Ma Foundation”. Currently, the disputed domain names are automatically redirected to a parking website “www.orgparking.cafe24.com” which shows, inter alia, a declaration in Simplified Chinese stating that the Respondent is willing to transfer the disputed domain names to the Complainant for free.

The Respondent has been using the website to which the disputed domain names resolved to take unfair advantage of the Complainant’s reputation in the JACK MA trademark in bad faith in order to redirect Internet users to the Respondent’s website for commercial gain. Notwithstanding the Respondent’s declaration, the Respondent did not contact the Complainant about the transfer of the disputed domain names which makes it impossible for the Complainant to believe that the Respondent genuinely intends to transfer the disputed domain names to the Complainant for free.

B. Respondent

The Respondent argues that the Complainant’s statements and claims are unfounded. It first argues that pursuant to paragraph 11 of the Rules, the language of the proceeding shall be the language of the registration agreement. The registration agreement for the disputed domain names is in Korean. Therefore the language of the proceeding should be Korean.

The Respondent then argues that all materials submitted by the Complainant appear to have been tampered with, and because the Complainant’s JACK MA FOUNDATION trademark is not a registered trademark, the Complainant cannot claim that the Respondent has infringed the Complainant’s trademark.

The Respondent also argues that it registered the disputed domain names on November 24, 2014, and the Complainant established the Jack Ma Foundation in December 2014. In other words, the Respondent claims that it had legitimate ownership of the two disputed domain names without knowing the existence of the Complainant. The Complainant is actively seeking to steal the two disputed domain names from the Respondent on the grounds that those two disputed domain names are identical to the English name of the Complainant’s company.

C. Supplemental Filing

In the Complainant’s supplemental filing, the Complainant denies all of the Respondent’s assertions. It specifically argues that:

1) the Complainant did not tamper with any evidence.

2) even though the Complainant does not hold registered rights in the “JACK MA FOUNDATION” mark, the Complainant has registered rights in the JACK MA trademark, which it obtained many years prior to the registration of the disputed domain names.

3) Mr. Ma announced that he intended to set up a charitable foundation in 2014. It cannot be mere coincidence that the Respondent registered the disputed domain names within seven months of the Complainant’s announcement of the Jack Ma Foundation. The Respondent clearly became aware of the announcement and registered the disputed domain names in bad faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain names to the Complainant. Those requirements are: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.

A. Language of Proceeding

The registration agreement for the disputed domain names is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The disputed domain names resolved at some point in time to a website which was in English;

3) The Response has been submitted in Korean;

4) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. English would be the fair language for both Parties.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain names are identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the marks, JACK MA and that the disputed domain names are confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s trademark in their entireties, and adding the word “foundation” does nothing to avoid a finding of confusing similarity to the Complainant's trademark. The addition of the gTLD extension “.com” and “.org” in domain names may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

The Respondent’s assertion that the Complainant’s JACK MA FOUNDATION trademark is not a registered trademark and the Complainant cannot claim that the Respondent has infringed the Complainant’s trademark is not valid since the Panel finds that the Complainant has registered the JACK MA trademark and that it precedes the registration of the disputed domain names by the Respondent.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain names. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain names or has been commonly known by the disputed domain names. Also, there is no evidence that the Respondent has an intention to use the disputed domain names in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain names.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain names in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Respondent created the disputed domain names which are confusingly similar to the Complainant’s trademark, JACK MA with the knowledge of the Complainant’s famous JACK MA trademark and its business. The Complainant argues that the facts that the website with the disputed domain names show the Complainant’s registered trademark and the Respondent was offering the purchase of a book and a t-shirt relating the Complainant and Mr. Ma create the impression that there is a business relationship between the owner of the website and the Complainant, or that the parties are affiliated companies, which is not the case. The Respondent has purposefully registered the Complainant’s famous trademark in an effort to divert Internet users from the Complainant’s actual website and to cause confusion among Internet users as to the source of the disputed domain names.

The Respondent raised a number of arguments to claim that it did not register nor use the disputed domain names in bad faith. The Respondent claims that there is no evidence that it knew of the existence of the Complainant’s trademark when the Respondent registered the disputed domain names because the Respondent registered the disputed domain names on November 24, 2014 and the Complainant established the Jack Ma Foundation in December 2014. In other words, the Respondent had legitimate ownership of the two disputed domain names without knowing the existence of the Complainant.

However, the Panel recognizes the fact that the Complainant’s trademark registration of JACK MA is much prior to the Respondent becoming the owner of the disputed domain names in 2014.

The Panel finds that the Complainant’s trademark, JACK MA is well known, that it has been used since 2011. The disputed domain names are identical or confusingly similar to the Complainant’s trademark and the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain names with a bona fide purpose or that it is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain names or the name “Jack Ma Foundation”. It is clear that the Respondent registered the disputed domain names with the knowledge of the Complainant’s famous trademark and its business.

Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain names and the Complainant’s trademark in violation of paragraph 4(b)(iv) of the Policy.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

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, <jackmafoundation.com> and <jackmafoundation.org>, be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: December 26, 2018