WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Early Warning Services, LLC v. Li Qian
Case No. D2019-1718
1. The Parties
The Complainant is Early Warning Services, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States of America.
The Respondent is Li Qian, China.
2. The Domain Names and Registrar
The disputed domain names <zelleapy.com>, <zelleepay.com>, <zellepau.com>, <zelle-pay.com>, <zellepsy.com>, and <zellerpay.com> are registered with Chengdu West Dimension Digital 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 19, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English 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 Complainant requested that English be the language of the proceeding on July 25, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceeding commenced on August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 9, 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 Complainant is a company with its principal place of business in the United States, and a provider of digital payment services under the trade mark ZELLE (the “Trade Mark”).
The Complainant is the owner of registrations for the Trade Mark in several jurisdictions worldwide, including United States registration No. 5,277,307, with a filing date of March 9, 2016, and a registration date of August 29, 2017.
The Complainant is also the owner of numerous domain names comprising the Trade Mark, including <zellepay.com>, registered since March 8, 2016.
The Respondent is located in China.
C. The Disputed Domain Name
The disputed domain names were each registered on February 23, 2017.
D. Use of the Disputed Domain Name
The disputed domain names have been used in respect of English language parking pages containing sponsored links, including sponsored links to various banking and money transfer related websites, and also containing prominent click-through “buy this domain” banners (the “Websites”).
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding, for the following reasons:
(i) The Trade Mark is an English language invented word;
(ii) The Complainant is based in the United States, conducts its business in English, and is not conversant in Chinese. As such, the Complainant would be unnecessarily burdened if it were required to submit the Complaint in Chinese;
(iii) The Respondent has registered hundreds of domain names, many of which incorporate English words (or misspellings thereof), thereby demonstrating that the Respondent understands English; and
(iv) Requiring the Complainant to file the Complaint in Chinese would cause delay.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel considers the grounds relied upon by the Complainant support at least a prima facie case that the Respondent is conversant in English. In addition to such grounds, the Panel notes that the Websites are English language websites. The Panel notes also that the Respondent has chosen not to contest this proceeding; and is mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
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
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names each incorporate the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “pay” or a misspelt version thereof.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
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 names or to use the 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 names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in connection with the Websites, to obtain pay-per-click revenue via sponsored links, including to various banking and money transfer related websites.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In light of the manner of use of the disputed domain names highlighted in section 6B above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel also finds that bad faith has been made out, under paragraph 4(b)(i) of the Policy, by virtue of the offer to sell the disputed domain names via the click-through banners on the Websites.
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.
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 <zelleapy.com>, <zelleepay.com>, <zellepau.com>, <zelle-pay.com>, <zellepsy.com>, and <zellerpay.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: September 25, 2019