WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Liliya Rymar, Du Roi LLC v. Duan Xiang Wang
Case No. D2019-1699
1. The Parties
The Complainants are Liliya Rymar (“First Complainant”) and Du Roi LLC (“Second Complainant”), United States of America (“United States”), self-represented and internally represented.
The Respondent is Duan Xiangwang, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <duroi.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 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 July 19, 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 Complainants on July 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 25, 2019.
On July 25, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on July 25 and August 2, 2019. The Respondent requested that Chinese be the language of the proceeding on July 25, August 8, and August 12, 2019.
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 August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Response was filed with the Center in Chinese on August 15, 2019. On August 20, 2019, the Complainants submitted a supplemental filing in English. On August 31, 2019, the Center notified the Parties of Commencement of Panel Appointment Process.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 10, 2019. 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 First Complainant, Lilliya Rymar, is an individual resident in the United States. She is the principal of the Second Complainant, Du Roi LLC, an Oregon Limited Liability Company that is the owner of United States trademark registration number 5,615,996 for DU ROI and device (the “DU ROI and device” trademark), registered on November 27, 2018, with a claim of first use in commerce on September 12, 2012. The trademark is the following:
The DU ROI and device trademark is registered with respect to various types of clothing, footwear, and accessories in international class 25 and the registration remains effective. The trademark registration notes that an English translation of the words “Du Roi” in the trademark is “from the King”. The DU ROI and device trademark is prominently displayed on a website operated by Du Roi LLC at the website address “www.duroi.us”. The website describes that company as a “wide spectrum enterprise” that does everything for the glory “of the King”.
The Respondent is an individual resident in China. He alleges that he operates a company named 深圳市翔旺网络有限公司, which may be translated as “Shenzhen Xiangwang Network Co. Ltd”.
The disputed domain name was registered on June 13, 1997. According to evidence provided by the Respondent, the disputed domain name formerly resolved to a website portal or navigation webpage in Chinese that displayed links to domain name brokers, news, and other websites. During this proceeding, the disputed domain name has resolved to a website that displays content from a German press website translated into English.
The First Complainant contacted the Registrar, in English, on July 16, 2019 regarding a possible purchase of the disputed domain name. The Registrar confirmed, in English, that the disputed domain name registrant was its client and requested that the First Complainant make an offer, following which the Registrar would negotiate with the disputed domain name registrant on the First Complainant’s behalf. On the same day, the First Complainant offered CNY 700 for the disputed domain name, to which the Registrar replied that the owner was not selling for that price and that the asking price was CNY 198,000. On the following day, the First Complainant rejected the asking price.
5. Parties’ Contentions
The Respondent has registered the disputed domain name clearly for the single purpose of reselling it and attempting to block the trademark owner from using it. The Respondent has been the registrant of the disputed domain name for a while and never built a functional website for it. The Respondent holds a multitude of domain names and not one of them has a legitimate website built for it so the Respondent has engaged in a pattern of such registrations. Meanwhile, the true holders of the registered trademark DU ROI are not able to register the domain name to match their trademark, which tremendously hinders their operation and disrupts their business. The disputed domain name is being held in bad faith due to the absence of any traditional use. Due to the absence of an active website, it constitutes “passive holding” or cybersquatting and is considered bad faith use.
The disputed domain name is identical to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has had the disputed domain name registered since 1997 but has not established a working website for it. The Respondent is holding the disputed domain name in bad faith for reselling it to the Complainant for CNY 198,000. The Respondent has not been engaged in any business involving the name “Du Roi”. The Respondent is not making any legitimate use of the disputed domain name.
The Respondent has acted in bad faith because its primary intent was to sell the disputed domain name to the trademark owner or one of its competitors for a price in excess of out-of-pocket expenses related to the disputed domain name, within the terms of paragraph 4(b)(i) of the Policy. The Respondent has been cybersquatting the disputed domain name without any intent to be engaged in a legitimate business. The Respondent registered the disputed domain name in anticipation of reselling it to a legitimate business. The Registrar did not demonstrate to be engaged in any legitimate use of the disputed domain name other than cybersquatting with intention to resell the domain for an unreasonable amount.
The reference in the Response to <duroi.us> is inappropriate and has nothing to do with the disputed domain name and that that domain name is used for unrelated purposes that have no bearing on the Complaint. In the same way, the Respondent’s other domain names have no relevance to this case and should not be discussed as they relate to the Complaint. The Respondent deceitfully denounces his affiliation with the Registrar, whom the Respondent has used both to register the disputed domain name and thereafter to represent him as the Registrar in the WhoIs database. The Registrar was also delegated by the Respondent to do the selling negotiations on his behalf. The Respondent’s own name and contact information were concealed by a privacy service. The Respondent further contradicts himself saying he did not allow the Registrar to negotiate on his behalf and concurrently saying he denied the proposal to sell the disputed domain name to the Complainant. Even though the disputed domain name was registered prior to the Du Roi trademark, the Respondent has shown no intent to use the Du Roi name to identify any brand, product, or services and has nothing to show that demonstrates any engagement in commerce using the name Du Roi. On the other hand, the DU ROI trademark has been in the Complainant’s ownership and used in commerce and on products for many years and existed as a brand long before it was officially registered in 2018. The Du Roi brand and its logo clearly constitute a trademark. The Complainant objects to the Respondent’s statement that “Du Roi” has a common meaning, as it “would be as absurd as stating ‘Windows’ or ‘Apple’ or ‘Amazon’, etc. are just common words or meanings”. The Respondent provides no evidence that there was ever an actual site built for the disputed domain name. It currently redirects to another domain name with questionable content and purpose. A company should not be confined to use of its own country code Top-Level Domain (“ccTLD”) suffix to conduct business. The true purpose and meaning of a “.com” suffix is “dot commercial” and it is essential to a for-profit business.
The disputed domain name was registered by the Respondent on June 13, 1997 and the Respondent is its legitimate owner and user. The Respondent has not used the disputed domain name in bad faith and has never offered it for sale nor authorized a third party to do so. The offer to sell the disputed domain name for CNY 198,000 had nothing to do with the Respondent.
The disputed domain name was registered in 1997, over twenty years before the Complainant filed its trademark application in 2018. The disputed domain name has priority as first in time. Moreover, the Complainant’s trademark is a complex device mark with which the disputed domain name cannot be confused or considered in bad faith. The Respondent does not use the disputed domain name in bad faith: the disputed domain name is duly registered and being used and it does not infringe rights in “duroi” or create confusion for Internet users. The Respondent has created a webpage which, although simple, does not evidence bad faith. The Complainant argues that the lack of an active website is evidence of bad faith yet the Complainant’s own website at “www.duroi.us” is as simple and inactive as the Respondent’s website; apart from contact details, the Complainant’s website has developed no business activity and it does not even have a title. Therefore, the use to which the Respondent has put the disputed domain name cannot evidence bad faith or create confusion with the website to which <duroi.us> resolves. On the contrary, the Complainant has brought the Complaint in bad faith based on a device mark utterly lacking in impact and a crude website in an attempt to profit freely from a valuable domain name of twenty years’ standing.
The Respondent is the legitimate owner and user of the disputed domain name. “Duroi” has a common generic meaning (杜罗伊). The Respondent has continuously used the disputed domain name in good faith. He formerly used the disputed domain name with a navigation website but later, due to Chinese government domain name record requirements, he could only use it to redirect to relevant websites, but absolutely not in bad faith.
The Respondent denies that he registered the disputed domain name for the purpose of reselling. The disputed domain name was registered, renewed, and held by the Respondent for over twenty years, and he never actively contacted other parties to sell it or put up a transfer webpage or authorized a third party to offer it for sale. The negotiations to purchase the disputed domain name were between the Complainant and another party who did not represent the Respondent. The Respondent never offered to sell the disputed domain name for CNY 198,000. Whenever the Respondent receives an enquiry as to whether the disputed domain name is for sale, he always replies that he is not considering selling. The Complainant’s allegation that the Respondent passively holds many other domain names is a smear. The Respondent has registered his own company that has created many websites, all of them lawful, such as those at “www.u88.com” and “www.lvse.cn”. Each type of website requires its own domain name and, due to the Chinese government’s strict requirements regarding website records and the limited number of domain names, the Respondent may transfer certain names to the relevant websites or create a basic website. Holding many domain names is not a reason to find bad faith; ICANN has not limited the quantity of domain names that one can register.
Although the Complainant alleges that the registration of the disputed domain name creates maximal disruption to the development of the Complainant’s business, it is illogical to claim that a domain name registered twenty years ago disrupts another company’s business now or creates confusion with a device trademark only applied for twenty years later. “Duroi” has its own unique meaning. Moreover, the Complainant can register that word with a ccTLD suffix and develop its business. The Complainant is currently using <duroi.us> which very well meets its needs and it did not need to bring its Complaint in bad faith regarding the disputed domain name <duroi.com>.
6. Discussion and Findings
6.1 Preliminary Issues
A. Multiple Complainants
The Complaint was filed by two complainants against a single respondent. The First Complainant is a natural person and principal of the Second Complainant. The Second Complainant owns the DU ROI and device trademark. The Panel finds that the Complainants have a common grievance against the person named as the disputed domain name registrant and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant”.
B. 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 Complainant and the Registrar communicated in English prior to this proceeding, that the Respondent used the Registrar as his official representative or agent and that the Respondent set up the Registrar to negotiate the sale of the disputed domain name with the English-speaking community.
The Respondent requests that Chinese be the language of the proceeding. His main arguments are that his level of English is limited, he does not understand the Complaint in English, the use of English would be very unfair to him, the Registration Agreement is in Chinese, the Registrar is Chinese and provides its services in Chinese and the fact that the Complainant was able to communicate with the Registrar demonstrates that she has an ability to communicate in Chinese.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and 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 notes that in the present proceeding the Complaint was filed in English. The prior correspondence between the Complainant and the Registrar was in English, which neither indicates that the Complainant can communicate in Chinese nor that the Respondent can communicate in English, as the Registration Agreement is in Chinese and the Registrar may have communicated in that language with the Respondent. However, the disputed domain name has resolved during this proceeding to a website in English, which suggests that the Respondent is familiar with that language. Moreover, the Response itself demonstrates that the Respondent has indeed understood the Complaint in English as it presents a detailed rebuttal. In these circumstances, the Panel considers that requiring either party to translate its submission would create an undue burden and delay, whereas selecting English as the language of the proceeding and accepting all filings in their original language 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 that it will accept all documents as filed without translation.
C. Supplemental Filing
The Complainant requests that the Panel accept its supplemental filing of August 20, 2019 to object to several points raised by the Respondent that she alleges are irrelevant, misleading and/or inaccurate. The Respondent did not comment on the supplemental filing.
Paragraph 10(c) of the Rules requires the Panel to ensure that the administrative proceeding takes place with due expedition. 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 notes that the Complainant’s supplemental filing responds to certain factual issues raised for the first time in the Response, and that accepting the supplemental filing will not delay this proceeding. Therefore, the Panel will, exceptionally, accept the supplemental filing as part of the record of this proceeding.
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 DU ROI and device trademark.
The sole textual element of the DU ROI and device trademark, comprising the words “Du Roi”, is very prominent in the trademark. Although the trademark registration notes an English translation of those words, the words are not subject to a disclaimer. The design or non-textual elements of the trademark do not overtake that textual element in prominence and the design elements are incapable of representation in a domain name. Therefore, the Panel will disregard the design elements in its comparison for the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.10.
The disputed domain name incorporates the sole textual element of the DU ROI and device trademark, omitting only the space between the words, which cannot be included in domain names for technical reasons. The only additional element is 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
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark 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 trademark or service mark at issue.
As regards the first circumstance, the Complainant submits that the Respondent has not built a functional website for the disputed domain name and that he has shown no intent to use the Du Roi name to identify any brand, product or services. Rather, the disputed domain name resolved to a website portal displaying links to third party websites. The Panel does not consider this to be a use of the disputed domain name in connection with a bona fide offering of goods or services in the circumstances of this case, and there is no evidence of any demonstrable preparations to make such a use of the disputed domain name within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Respondent is named in the Registrar’s WhoIs database as “duan xiang wang”. The content of the websites to which the disputed domain name has resolved do not refer to “duroi”. There is no evidence on the record that the Respondent has been commonly known as “duroi” within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website portal that displays links to commercial websites. That use is either for the commercial gain of the Respondent or the operators of those linked websites, or both. In any such scenario, this is not a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, he points out that he is the registrant of the disputed domain name. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise every Complaint would fail, which would defeat the purpose of the Policy. See, e.g., Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.
The Respondent alleges that “duroi” has a dictionary meaning (杜罗伊). However, 杜罗伊is not a definition but, rather, a phonetic transliteration of “duroi” in Chinese characters. While “duroi” is a combination of two French words that do have a dictionary meaning (“of the king” or “from the king”), the Respondent does not allege that he registered or uses the disputed domain name on the basis of the meaning of “du roi”, and there is no evidence indicating that he has used the disputed domain name in that sense or that the disputed domain name is demonstrably intended for use in connection with the meaning of “du roi”.
The Respondent also alleges that he has created a webpage which, although simple, does not evidence bad faith. However, the evidence does not show that the webpages to which the disputed domain name has resolved at different times evidence good faith that would establish some right or legitimate interest for the purposes of the second element of the Policy, whether as a use in connection with a bona fide offering of goods or services or otherwise. See, e.g., Radiola Consumer AG v. Registration Private - Domains By Proxy, LLC / Marisol Cortes, WIPO Case No. D2019-1545.
In summary, the Panel does not consider that the Respondent has rebutted the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that 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. The first circumstance is as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;”
The Complainant has submitted evidence that shows that she negotiated with the Registrar regarding a possible purchase of the disputed domain name and that the asking price was CNY 198,000. The Panel considers that amount very likely to be in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, even when account is taken of twenty years’ worth of renewal fees. In any case, neither the Registrar nor the Respondent documented any out-of-pocket costs. Although the Respondent alleges that the Registrar did not represent the Respondent and that he never offered to sell the disputed domain name for CNY 198,000, the record shows that the Respondent’s name and contact details were concealed from the Registrar’s public WhoIs database; the disputed domain name was used in connection with a webpage that prominently displayed a link to the Registrar’s website; and that the Registrar represented that it acted on behalf of the domain name “owner”, i.e. the Respondent. In these circumstances, the Panel finds it more likely than not that the Respondent did ask for, or authorize the Registrar to quote on his behalf, a price of CNY198,000 for the disputed domain name.
Nevertheless, the difficulty for the Complainant is that there is no evidence that the Respondent targeted the owner of the DU ROI and device trademark. The Respondent registered the disputed domain name in 1997, twenty-one years before the registration of the DU ROI and device trademark in 2018, and fifteen years before the claimed date of first use of that mark in 2012. The Complainant provides no evidence of any use of that mark; the evidence of use consists merely of a screenshot of a single webpage (provided by the Respondent). At the time of registration of the disputed domain name, the DU ROI and device trademark did not exist. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent: see WIPO Overview, section 3.8.1. Nor are there any exceptional circumstances that would indicate that the Respondent registered the disputed domain name in anticipation of nascent trademark rights: See WIPO Overview, section 3.8.2.
The Complainant also alleges that the disputed domain name prevents it as the owner of the DU ROI and device trademark from registering a domain name to match its trademark, and that this tremendously hinders its operation and disrupts its business. However, these claims also fail due to the absence of evidence that the Respondent targeted the owner of a DU ROI trademark. Further, the Complainant provided no evidence regarding the operations and business relating to the DU ROI and device trademark, other than the trademark registration certificate.
The Complainant asserted that the Respondent holds many other domain name registrations. It did not substantiate that assertion or describe the Respondent’s other domain names.
Therefore, the Panel does not find that the disputed domain name has been registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: September 15, 2019