WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AIH General Merchandise UG (haftungsbeschränkt) & Co. KG v. Zhang Jun

(张俊)

Case No. D2019-1108

1. The Parties

The Complainant is AIH General Merchandise UG (haftungsbeschränkt) & Co. KG, Germany, represented by Rösler Rasch van der Heide & Partner, Germany.

The Respondent is Zhang Jun (张俊), China, represented by 广东星辰律师事务所, China.

2. The Domain Name and Registrar

The disputed domain name <jumiapay.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint in English. On the same day, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Respondent requested that Chinese be the language of the proceeding. On May 24, 2019, the Complainant filed an amendment to the Complaint in English and requested that English be the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 English and Chinese of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was June 18, 2019. The Response was filed with the Center on June 15, 2019 and again on June 17, 2019. The Complainant sent an email communication to the Center on June 21, 2019 foreshadowing a supplemental filing and it made such a filing on June 28, 2019. The Respondent sent an email communication to the Center on July 1, 2019 foreshadowing a supplemental filing and it made such a filing on July 8, 2019. The Complainant made a further supplemental filing on July 10, 2019. The Respondent made a further supplemental filing on July 14, 2019.

The Center appointed Matthew Kennedy, Jacob (Changjie) Chen, and Francine Tan as panelists in this matter on July 16, 2019. The Panel finds that it was properly constituted. Each member of 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 German holding company with subsidiaries that operate the Jumia e-commerce platform. Jumia was launched by Africa Internet Group (“AIG”) in Nigeria, Morocco, South Africa, and Egypt in 2012. Jumia Nigeria won the best new retail launch award at the world retail awards in 2013. Africa Internet Group rebranded in 2016 as “Jumia”, which is now operated in 13 African countries. The Complainant holds multiple trademark registrations, including international trademark registrations numbers 1138171 and 1168947, both for JUMIA, registered on August 31, 2012 and December 6, 2012, respectively, and specifying goods and services in classes 3, 6, 8, 11, 14, 18, 20, 21, 24, 25, 28, and 37 and classes 9, 16, 35, 36, and 39, respectively. Both registrations remain current. The Complainant is also the registrant of the domain name <jumia.com>, created on September 4, 2005, that is used in connection with the Jumia e-commerce platform. Jumia’s online payment system is known as “JumiaPay”. Evidence from the Internet archive submitted by the Complainant shows that the Jumia e-commerce platform offered “JumiaPay secure online bank transfer” at least as early as April 30, 2016. The launch of “JumiaPay” was reported on at least two websites on August 30, 2016.

The Respondent is an individual resident in Shenzhen, China. He is the registrant of hundreds of domain names, many of which are in the form “Loong” or “Jun” + “[English word or pinyin].com”. The Respondent is the legal representative of a Chinese company named 深圳市龙骏科技有限公司 (which can be translated as “Shenzhen Longjun Technology Co. Ltd.”) (the “Respondent’s company”), which was registered on June 24, 2013. The Respondent’s company is a provider of domain name, branding, technology, marketing, financial and other services. It operates websites at “www.loongjun.com” and “www.junmayun.com”. The Respondent’s company holds Chinese trademark registration number 19222905 for JUMIAPAY, which it applied for on March 4, 2016 and which was registered on April 7, 2017. That trademark registration specifies credit and debit card payment processing, electronic transfer and other services in class 36. That registration remains current. The Respondent’s company also filed Chinese trademark applications numbers 38366726 and 38505302 on May 22 and 28, 2019, respectively, both for JUMIAPAY, and specifying services in classes 45 and 36, respectively. Those trademark applications are pending. The Respondent’s company is also the registrant of the domain name <ztepay.com> and has filed Chinese trademark application number 19223036 for ZTEPAY.

The Respondent registered the disputed domain name on January 24, 2016. The disputed domain name does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s JUMIA mark. The disputed domain name consists of the fanciful word “jumia” and the descriptive term “pay”. It is well known that online payment services often incorporate the name of e-commerce companies and the generic term “pay”. The disputed domain name is automatically dissected into the elements “jumia” and “pay”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent was neither licensed nor otherwise authorized by the Complainant to register the disputed domain name. The Respondent’s trademark registration and pending trademark applications do not establish his legitimate interests in the disputed domain name. The Respondent only filed the pending trademark applications after receipt of the Complaint. One of them is an abuse of the trademark system because it appears designed to anticipate vulnerability of the trademark registration to cancellation for non-use from April 2020. The Respondent has not used JUMIAPAY up to now, either as a domain name or as a trademark, and the re-filing of the trademark application indicates that he is not interested in such use but rather in bolstering his claim to the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent seems to have made no active use of the disputed domain name. The following circumstances support a finding of bad faith: (i) the Complainant invented the word “jumia”; (ii) online pay system names composed of a company name and the descriptive term “pay”, such as Alipay (launched in 2004), Tenpay (2006), WeChat Pay (2013), Amazon Pay (2007), Apple Pay (2014), Android Pay (now Google Pay) (2015) and Samsung Pay (2015), were widely known before the Respondent registered the disputed domain name; (iii) Jumia was a quickly developing supranational African business and had the potential to become an economically precious name; Jumia was already well established and had the potential to become famous; the Respondent either knew of Jumia’s project to launch JumiaPay or speculated on such a development; (iv) the Respondent registered the disputed domain name through a privacy service; (v) the Respondent updated the disputed domain name registration in November 2018 when the reputation of Jumia and its pay service project had grown even more; (vi) the Respondent has registered many other domain names that are inactive; (vii) the Respondent’s company is active in the promotion and branding sector; it was observing the market before choosing a brand, with a particular focus on Internet companies, and it was presumably aware of business news; (viii) the Respondent has used trademark rights to bolster its legal position with respect to the disputed domain name; (ix) the Respondent’s company has registered the domain name <ztepay.com> and has applied for the Chinese trademarks ZTEPAY and ZTEPAY.COM, when ZTE is a large telecommunications company with which the Respondent is unaffiliated.

B. Respondent

The Complainant has not demonstrated an interest in the JUMIA trademark. The Complainant has not obtained a trademark registration in China. The JUMIA trademark was only registered in China on June 1, 2015, after the registration of the disputed domain name, and the trademark owner is a third party. The Complainant registered its trademark JUMIAPAY on May 13, 2018, which is after the registration date of the disputed domain name, thus that trademark should not be used to decide the dispute. The Complainant did not have a trademark registration for JUMIAPAY at the time that the Respondent registered the disputed domain name, nor did it have a company name incorporating “jumiapay”.

The disputed domain name and the JUMIA trademark are clearly distinguishable. “Jumia” and “Jumiapay” are both meaningless words. For Chinese people, who are accustomed to pinyin transliterations, the additional letters make a very major difference. Many commonly-used Chinese sites use “ju”, “mi”, “a” and “mia”, while “pay” is an English word but it can also be an abbreviation for “Ping An You” (meaning “Safe Tours”) and so on. Therefore, the disputed domain name and the JUMIA trademark will not cause confusion for consumers.

The Respondent has rights and legitimate interests in respect of the disputed domain name because he is the legal owner of the Chinese trademark registration for JUMIAPAY. The Respondent company’s brand “Longjun” is formed from its founders’ names. Given that the company name and the Respondent’s own name both include “ju”, it decided to create a brand incorporating the element “ju” and registered the disputed domain name and filed the trademark application in 2016.

The Respondent legally registered the disputed domain name and has not used it. The Respondent’s company has a project still in the process of preparation and that has not been promoted on the Internet at this stage but that does not show bad faith. The Respondent has never considered selling the disputed domain name or offered it to the Complainant for sale at a high price. The Respondent has operated websites in connection with the domain names <loongjun.com> and <junmayun.com> since 2013 and plans to launch its Junmabao/Jumiapay service in the near future. Currently, “Junmabao Jumiapay” appears on a menu of services on these websites but they do not yet have a separate website. “Jumiapay” is the international name of “Junmabao”. The Respondent registered the disputed domain name and the JUMIAPAY trademark for use in connection with the Junmabao website and they have nothing to do with the Complainant’s JUMIA trademark. The Respondent submits screenshots of these webpages in its first supplemental filing but not earlier, in its Response, because they are confidential and it feared the websites could be blocked.

The Respondent believes that the Complainant has engaged in reverse domain name hijacking. The Complainant falsely claimed that it launched JumiaPay on August 30, 2015 when the actual launch date was August 30, 2016. The Complainant deliberately fabricated evidence from a website announcement to avoid the fact that the disputed domain name was registered first.

6. Discussion and Findings

6.1 Procedural Issues

A. 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.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that English be the language of the proceeding. Its main arguments are that the disputed domain name is in Latin characters and contains the English word “pay”, which indicates that the Respondent is familiar with the English language; the Respondent has registered over 100 domain names; and the Respondent’s contact email address for at least one of these is associated with 726 domain names, many of which contain English words. Further, the Complainant is not familiar with the Chinese language and translation of the Complaint into Chinese would create further difficulties and costs for the Complainant.

The Respondent requests that Chinese be the language of the proceeding. His main arguments are that the Registration Agreement for the disputed domain name is in Chinese, he himself is Chinese and he does not understand English.

Paragraph 10(b) of the Rules requires the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Paragraph 10(c) of the Rules requires the Panel to ensure that the administrative proceeding takes place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint is in English; the Complainant’s two supplemental filings are in English but with a Chinese translation; the Response is mostly in Chinese but with an annex in English; and the Respondent’s two supplemental filings are in Chinese. The contents of the Response show that the Respondent has indeed understood the Complaint. Further, the Respondent has registered many other domain names that combine his name or his business associate’s name with English words. In these circumstances, it is reasonable to conclude that the Respondent understands English. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and unnecessary delay, whereas selecting English as the language of the proceeding, and accepting all documents filed in their original language without translation, will not unfairly prejudice either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but the Panel will accept all documents as filed in their original language without translation.

B. Supplemental Filings

The Parties made a series of unsolicited supplemental filings. After receipt of the Response, the Complainant made a supplementary filing on June 28, 2019; the Respondent made a supplementary filing on July 8, 2019, the Complainant made a further supplementary filing on July 10, 2019 and the Respondent made a further supplementary filing on July 14, 2019.

Paragraph 10(c) of the Rules requires the Panel to ensure that the administrative proceeding takes place with due expedition. The Panel recalls that the due date for the Response was June 18, 2019.

Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

The Panel observes that the identity of the registrant was concealed in the Registrar’s public WhoIs database. As a result, the Complainant was unable to address certain important issues in the Complaint regarding the second and third elements of the Policy, and it had only five days to amend the Complaint after receipt of the Respondent’s name and contact information. The Complainant had insufficient opportunity to address these issues until its supplemental filing of June 28, 2019. In turn, the Respondent was unable to address the arguments presented in the Complainant’s supplemental filing until the Respondent’s own supplemental filing of July 8, 2019. Each of these supplemental filings addresses issues that are relevant to this dispute and that the Parties were unable to address earlier.

The Complainant also requests that the Panel accept its further supplemental filing of July 10, 2019 because the Respondent’s supplemental filing contained new evidence. However, the Panel observes that the Complainant’s further supplemental filing (i) only addresses the timing of the creation of that evidence, which it is unnecessary for the Panel to consider; and (ii) highlights another issue already addressed. The Respondent only requests that the Panel accept its further supplemental filing of July 14, 2019 so as to rebut the Complainant’s further supplemental filing.

Therefore, in the interests of ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel considers admissible the Parties’ respective supplemental filings of June 28, 2019 and July 8, 2019. The Panel will take them into consideration in this decision according to their relevance, materiality and weight as part of the evidence on the record. On the other hand, the Panel sees no reason to admit the Parties’ respective further supplemental filings of July 10, 2019 and July 14, 2019.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the JUMIA mark.

The disputed domain name wholly incorporates the JUMIA mark as its initial element. The JUMIA mark is clearly recognizable within the disputed domain name. Although the disputed domain name also includes the English dictionary word “pay”, the inclusion of a dictionary word in a domain name is generally insufficient to avoid a finding of confusing similarity with a trademark for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

The disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel will assess the existence of the Respondent’s rights or legitimate interests at the present time, that is to say, based on the facts at the time of the filing of the Complaint, rather than in the past when the disputed domain name was registered. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.11.

The disputed domain name is passively held. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy. Nor is there any evidence that the Respondent has been commonly known by the disputed domain name, either as an individual or trading name, within the terms of paragraph 4(c)(ii) of the Policy.

Based on the evidence submitted, the Panel finds that the Respondent holds a Chinese trademark registration for JUMIAPAY. This trademark is identical to the disputed domain name, but for the gTLD suffix. A respondent’s trademark registration would ordinarily support a finding of rights or legitimate interests in an identical domain name. However, the Panel does not consider that a trademark registration automatically confers rights for the purposes of the second element of the Policy. See WIPO Overview 3.0, section 2.12. Rather, the Panel will consider for the purposes of the Policy the circumstances surrounding the Respondent’s trademark registration to determine whether he obtained it for a legitimate or bona fide purpose under the Policy or, rather, in order to bolster his claim to the disputed domain name.

The Complainant argues that the Respondent either knew of the Complainant’s project to launch JumiaPay or speculated on such a development. According to the evidence on the record, the disputed domain name was registered seven months before the launch of JumiaPay. The Panel sees no evidence on the record that the Respondent had actual knowledge of JumiaPay at that time. However, the Panel will examine the possibility that the Respondent knew of “Jumia” and speculated on the development of its payment platform.

Although Jumia had received some international press attention prior to the time of registration of the disputed domain name in 2016, the Complainant does not submit that Jumia was a well-known mark at that time. However, Jumia is a coined term and it refers to an e-commerce platform which requires customers to pay. The Panel considers it unlikely that the Respondent chose the term “Jumia” and combined it with the word “pay” by coincidence. Rather, that precise combination of elements indicates an awareness of “Jumia” as an e-commerce platform. Further, the Respondent’s company provides domain name and branding services. It is therefore quite conceivable that he was aware of Jumia and speculated correctly that it would establish an online payment system comprising its name followed by the word “pay” as several well-known companies had already done, including another e-commerce platform (Amazon).

Although the Respondent registered his trademark in the jurisdiction where his company conducts business (i.e. China), he has made no active use of the disputed domain name since its registration more than three years ago. Further, as soon as the Respondent received notice of this domain name dispute proceeding from the Center, he filed new trademark applications for JUMIAPAY. The Respondent has also registered the domain name <ztepay.com> and applied for the trademark ZTEPAY, which, while not constituting a pattern of behavior, bears a certain similarity to the current proceeding.

Accordingly, the Panel considers that the Complainant has made out a prima facie case that the Respondent obtained his trademark registration in order to bolster his claim to the disputed domain name. It is now for the Respondent to present facts and arguments demonstrating the existence of his rights or legitimate interests in respect of the disputed domain name.

The Respondent submits that he applied for and obtained his trademark long before receiving any notice of this dispute. However, the Panel notes that he filed his trademark application only several weeks after he registered the disputed domain name more than three years ago and that he has not made any active use of the disputed domain name.

The Respondent asserts that his company proposes to use JUMIAPAY as the international version of a proposed Chinese brand. The evidence submitted in support of this assertion consists of screenshots of three webpages from the Respondent’s company websites which introduce “骏马宝” as a brand of the Respondent’s company for financial services. The brand is also written in Latin script as “Junmabao Jumiapay” or just “Jumiapay”. The Panel does not find that this evidence bears out the Respondent’s assertion that his company proposes to use the JUMIAPAY mark. His evidence is meagre and, in any case, the Respondent fails to provide a credible explanation as to why he chose “Jumia” as the international equivalent of 骏马rather than the Pinyin transliteration “Junma” (as in “Junmabao”). Further, the Respondent’s explanation of the meaning of “pay” as an abbreviation of “Ping An You” (“Safe Tours”) is implausible. The Panel considers the most likely explanation for the Respondent’s decision to register JUMIAPAY was that he wanted a trademark that was the same as the disputed domain name (minus the gTLD suffix) in order to circumvent the application of the Policy.

Therefore, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent registered the trademark JUMIAPAY to bolster his claim to the disputed domain name rather than for a legitimate purpose. Moreover, the Panel considers that this evidence fails to demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.

Therefore, the Panel finds that, on the balance of probabilities, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

As regards registration, the Respondent registered the disputed domain name on January 24, 2016, several years after the registration of the Complainant’s JUMIA mark, and over three years after the Complainant began using that mark in connection with its e-commerce platform. The disputed domain name wholly incorporates the JUMIA mark as its initial element and combines it with the English word “pay”, from which the inference can be drawn that the Respondent was aware of the nature of the Complainant’s services. Based on all the evidence on the record, for the reasons given in Section 6.2B above, the Panel considers that the most likely explanation for the Respondent’s decision to register the disputed domain name was that he was aware of the Complainant’s JUMIA mark and registered it as part of the disputed domain name in bad faith.

As regards use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a considerable reputation in its JUMIA trademark in the retail sector due to its use of that trademark in connection with its e-commerce platform, including through its official website. Based on all the evidence on the record, for the reasons given in section 6.2B above, the Panel considers it more likely than not that the Respondent registered the Chinese trademark JUMIAPAY and filed trademark applications for JUMIAPAY during this proceeding to bolster his claim to the disputed domain name under the Policy, which are indicia of bad faith. Given these circumstances, on the balance of probabilities the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith and that the Respondent has not shown relevant evidence of good faith.

Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

The Respondent submits that the Complainant has engaged in reverse domain name hijacking. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

Given that the Panel has found in favor of the Complainant on the substantive issues, the Panel does not find that the the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding.

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 name <jumiapay.com> be transferred to the Complainant.

Matthew Kennedy
Presiding Panelist

Jacob (Changjie) Chen
Panelist

Francine Tan
Panelist
Date: July 29, 2019