WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glovoapp23, S.L. v. Wang Shun
Case No. D2019-1986
1. The Parties
The Complainant is Glovoapp23, S.L., Spain, represented by María Asunción Rancé Giménez-Salinas, Spain.
The Respondent is Wang Shun, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <glovo.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 August 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 August 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 15 and 19, 2019, the Respondent requested that Chinese be the language of the proceeding. On August 20, 2019, the Complainant filed an amended Complaint in English and requested that English be 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 proceedings commenced on August 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2019. The Center received an email communication in Chinese from the Respondent on August 22, 2019 regarding the filing of the Response. On September 5, 2019, the Center received an unsolicited supplemental filing in English from the Complainant. The Response was filed in Chinese with the Center on September 9, 2019. On September 10, 2019, the Respondent sent confirmation to the Center of his complete Response, and the Center acknowledged receipt.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 16, 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.
On September 16, 2019, the Respondent sent an email to the Center regarding the timing of the Panel’s decision.
4. Factual Background
The Complainant is a Spanish company. Its primary activity is the development and management of a technology platform. This platform offers to the public a service by means of a smartphone app (called the “glovo app”) that enables individuals to place orders with local shops which will then be delivered to the customer by a third party independent courier. According to press articles hyperlinked to the amended Complaint, the Complainant was founded in 2015. The Complainant holds European Union trademark registration number 014357727 for GLOVO, applied for on July 10, 2015 and registered on November 6, 2015, in respect of computer applications and software solely for the countering of goods, except audiovisual goods, for mobile devices in class 9 and countering of goods, except audiovisual goods in class 39. It also holds international trademark registration number 1412099 for a GLOVO and balloon device, claimed in specific colours, registered on April 23, 2018, and specifying goods and services in classes 9 and 39. Those trademark registrations remain current. The Complainant also registered multiple domain names that comprise “glovo” or “glovoapp” and a Top-Level Domain (“TLD”).
The Respondent is an individual resident in China. His contact email address as shown in the Registrar’s WhoIs database is under the <sinonic.com> domain name with what appears to be an administrator’s username.
The disputed domain name was registered on April 10, 2001. From at least November 27, 2018, the disputed domain name resolved to a webpage in English and Chinese that displayed a banner reading “WELCOME TO glovo.com” and “Under construction, privately & personally registered and being planned for future web operation”. Beneath this was displayed the following series of “Disclaimers”:
“It is general-term, non-commercial and private & personal domain, not connected or affiliated with any third party company, organization or trademark.
It does not offer/sell any commodities or services.
If you think your arrival is unexpected, please recheck or use search engines.
Due to workload involved, there is no release date of the new website at this stage. Please come back later for the possible update.”
The webpage also displayed a contact email address within the <glovo.com> domain name.
On July 27, 2018, an individual contacted the Respondent by email and offered to buy the disputed domain name for USD 2000. The Respondent replied “Not interested, thanks.”
Later the same day, the Parties exchanged a series of emails in English. The Complainant asserted its rights in the GLOVO trademark, informing the Respondent that it offered its services widely through that name at the website address “www.glovoapp.com” and requesting information as to the Respondent’s intended use of the disputed domain name and the possibility to transfer it to the Complainant. The Respondent indicated that he could not tell the Complainant his intended use of the disputed domain name due to “security”. He assured the Complainant that he had no plan to use the disputed domain name in the field of delivery. He noted that the disputed domain name was registered 17 years earlier which was much older than the Complainant’s company, and that the Complainant’s trademark and domain names did not mean that the Respondent lacked the right to use the disputed domain name. The Complainant then clarified that it was not pretending to say that the Respondent did or did not have rights to use the disputed domain name and sought confirmation that the Respondent was not planning to use the disputed domain name in the short term. The Respondent replied that he was already using the disputed domain name in his email address. The Complainant noted that the Respondent had not indicated whether he would transfer the disputed domain name. The following day, the Respondent replied in Chinese, terminating the conversation.
The webpage has since changed. It now displays a logo consisting of a stylized “G” and the disputed domain name (the “G logo”). It also displays the contact email address and a single disclaimer in English, similar to the first of those set out above. The G logo now features on the Respondent’s webpage and, according to the Respondent’s evidence, in a favicon and in an error message, which were last modified after he was contacted by the Complainant but before the Complaint was filed.
On November 12, 2018, another individual contacted the Respondent by email, asking “How much?” The Respondent replied: “Not planning to sell.” On August 15, 2019 (the day that the Complaint was filed), a broker contacted the Respondent by email, asking the price of the disputed domain name. The Respondent replied: “No plan to sell it.” The Respondent’s email of August 15, 2019 was the first email on the record that included the G logo.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s GLOVO trademarks. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Both commercial name and trademark are legally owned exclusively by the Complainant and no right or use has been granted to the Respondent or any other person in order to register and manage domain names with the Glovo name included. The Respondent is not performing any real or effective activities through the website. The burden of proof lies with the Respondent when having to prove the legitimate interests of a company or natural person in using a domain name. In the present case, except for the virgin and inactive website and the disputed domain name, nothing can allow us to think that the Respondent’s business is commonly known as “Glovo”.
The disputed domain name was registered and is being used in bad faith. The non-use of the disputed domain name, the failure to agree on the transfer and the time the disputed domain name has been registered show that the Respondent has no intention to use the disputed domain name and with this attitude is blocking the use of the name and trademark of the Complainant to use its services and products through the disputed domain name that is identical to its most known service, the Glovo App. The Respondent will obtain commercial benefits from the investment, the hard work from the team and the marketing campaigns led by the Complainant and will block the Complainant’s efforts to unify and redirect all its domain names into the main domain name of the trademark. The Complainant asks the Panel to seek documents and metrics of the Respondent’s website that will show increasing numbers of Internet users are accessing that website when looking for the services of the Complainant.
The Complainant’s supplemental filing presents the results of an investigation based on the Respondent’s contact email address as shown in the Registrar’s verification response. The Respondent’s contact email address for the disputed domain name is under the <sinonic.com> domain name. A panel in a 2000 proceeding under the Policy regarding the bad faith registration and use of the domain name <dragonseal.com> noted information that <sinonic.com> was registered by the respondent in that proceeding, Capital Enterprises Group, Inc. That company was related to Beijing Cinet Information Co. Ltd, a company that was sued in a Beijing court for bad faith registration of the domain name <ikea.com.cn>. These companies are part of a group in China that has registered large, reputable and valuable brand domains in bad faith in order to prevent trademark owners from using their trademarks as domain names. The two companies’ websites have been deactivated in the past month, when the Complaint was filed, which is further proof of bad faith. The disputed domain name is listed on <website.informer> as one with the email contact address shown in the Registrar’s verification email.
The Complainant’s trademark is similar to the disputed domain name but, as that similarity is due to the Complainant, the Respondent does not accept that the disputed domain name is similar to the Complainant’s trademark. The disputed domain name was registered before the Complainant’s trademark and enjoys priority. The Respondent could not have known that the Complainant would seek this trademark over ten years later. Just as one can say that a son looks like his father but not that a father takes after his son, this is an issue of being first in time. The Complainant’s domain name is <glovoapp.com> but its trademark is GLOVO, which is significantly different. Although the Complainant has registered “glovo” in various country code Top-Level Domains (“ccTLDs”), these redirect to its website used in connection with the domain name <glovapp.com>, which is also part of the Complainant’s contact email address, so one can say that the Complainant’s Internet presence is based on that domain name. The Complainant has no registered trademark rights in China, where the Respondent is located.
The Respondent has rights and legitimate interests in respect of the disputed domain name. The disputed domain name was registered in 2001, over ten years before the registration of the Complainant’s trademark. The Complainant has not carried on business in China, let alone acquired any reputation there. The Respondent has had no contact with Spain, where the Complainant is located, and did not know of, or have any reason to know of, the existence of the Complainant or its trademark. There is no unique correlation between the Complainant and “glovo” and the Complainant has no exclusive rights to that mark. There are ten trademarks registered in China for GLOVO and the Complainant is not the holder of any of them. The registrants of the domain names <glovo.cn> and <glovo.com.cn> and the holders of “glovo” accounts on Facebook and Instagram are all third parties as well. Although the Complainant may be the holder of the Twitter account named “glovo”, it has sent only nine tweets from that account compared to over 9000 tweets sent from its account named “Glovo_ES”. The Respondent registered the disputed domain name because he found it attractive, meaningful and valuable, without knowing of the Complainant’s trademark, and he has already lawfully held it for individual use. “Glovo” is not an English dictionary word but was created by the Respondent from the initial letters of the words “Global Voice”. Glovo can also mean global volunteer, global vote, glorious voice, global vogue, and global voyage. This is a common way of creating new words in English. The disputed domain name can also be explained as a combination of the letters “glo” plus a consonant plus a vowel, which does not usually produce an English dictionary word but, out of 105 possible combinations, 99 are registered as domain names, over half of them more than ten years ago. Thus, although the disputed domain name is not a dictionary word, “glovo” is formed in a common way. Moreover, a third party registered the domain name <glovo.org> in 2010. Although the Complainant argues that it created the word “glovo” based on the Spanish word “globo”, this is not the only possible explanation for the use of that word. In addition, the pronunciation of “glovo” in English sounds like “咯啰喔” in Chinese, which is an onomatopoeic word in the Respondent’s hometown. The Respondent had already used the disputed domain name in his personal email address and “@glovo.com” as an Alipay account name before being contacted by the Complainant. The Glovo logo on his webpage, in the favicon and in the error page message were last modified before the filing of the Complaint. The Respondent’s website is simple because it is just a personal website displaying work, study and life lessons. There is no requirement in the Policy regarding the type of website that justifies rights and legitimate interests and it cannot be valued based on its content.
The disputed domain name was not registered and is not being used in bad faith. The Respondent did not establish a site similar to the Complainant’s website nor provide similar services or mislead the public. The public does not make any connection between the disputed domain name and the Complainant. When contacted by the Complainant, the Respondent clearly stated that he did not operate in the field of delivery services. The Respondent’s website states that it is private and personal. The website, including its layout and logo, is quite different from the Complainant’s website and logo and will not cause confusion. Contrary to the Complainant’s assertion, the Respondent made active use of the disputed domain name before the filing of the Complaint. The Respondent included it in an email address and used it in connection with a mini-website. Besides, non-use of a domain name does not evidence bad faith; registration of a domain name as a backup for future use is a common practice. It is unreasonable to assert that the content of the Respondent’s website evidences bad faith. There is no minimum content requirement for a website. Nor is the Respondent’s refusal to discuss a transfer of the disputed domain name evidence of bad faith; the Respondent had no reason to discuss the transfer of the disputed domain name as he was legally using it. The Respondent has also declined other offers to transfer the disputed domain name. The prior cases cited by the Complainant are irrelevant because the domain names were registered later than the trademark, the domain names were registered in the ccTLD of the country where the Complainant is located, and the domain names included “glovoapp”.
The Complainant’s supplementary filing lacks all credibility. The Complainant confuses the Respondent with other parties. The allegations concern Beijing Cinet Co. Ltd and Capital Enterprise Group, Inc., but the Complainant has not provided any evidence that these two companies are related to the Respondent. The Respondent does not know these companies at all. The Respondent is not the owner of the <cinet.com.cn> domain name, nor a legal representative, shareholder or employee of Beijing Cinet Co. Ltd. The Respondent is not even in Beijing, where that company is located, but far away in Chongqing. The company’s email address is also completely different from the Respondent’s email address. The allegation that the inactivity of these companies’ websites is somehow related to the Respondent is ridiculous.
The Complainant has engaged in reverse domain name hijacking. This is a classic case of a trademark owner abusing the Policy to obtain the corresponding domain name in the “.com” domain. The Complainant knows that the disputed domain name was registered much earlier than the trademark registration and knows that it is being used reasonably and lawfully but, because the Respondent was not willing to transfer the disputed domain name, the Complainant has filed a naked complaint. Both the Complaint and the supplemental filing are full of unfounded allegations in an attempt to deprive the Respondent of the disputed domain name that he lawfully holds and uses.
6. Discussion and Findings
6.1 Procedural Issues
A. Supplemental Filing
The Complainant requests that the Panel accept its supplemental filing of September 5, 2019. This information concerned the Respondent’s alleged connection to other domain names registered in bad faith. The Respondent responded to the information contained in the Complainant’s supplemental filing in his Response.
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 also 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 Complainant’s supplemental filing was received before the due date for the Response and that the Response addresses the contents of that supplemental filing. The Complainant explains that it could not have submitted this information earlier because it did not know the Respondent’s contact email address due to his use of a privacy service. This is not correct as the Complainant was provided with the Respondent identity by the Center and given an opportunity (which it took) to submit an amended Complaint. In any event, as the Respondent was not prejudiced to respond, the Panel accepts the Complainant’s supplemental filing as part of the record of this proceeding.
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 English is an official language of the Center, that English is a neutral language in this proceeding between a Spanish company and a Chinese individual, and that the choice of English avoids undue translation costs and expenses.
The Respondent requests that Chinese be the language of the proceeding. His main arguments are that the Registration Agreement is in Chinese, that he is Chinese and that he lives in China. Although he can partly understand English, he cannot file a legal submission in that language. He also requests that Annex VII to the amended Complaint be translated or excluded from the record of this proceeding because it is in Spanish.
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 take 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 amended Complaint and the Complainant’s supplemental filing were filed principally or wholly in English whereas the Response was filed in Chinese. There is abundant evidence that the Respondent understands English: he engaged in correspondence in English with the Complainant’s legal representative and third parties prior to the Complaint, the website to which the disputed domain name resolves was in both English and Chinese; the Respondent sent an email to the Complainant in English in this proceeding; and the Response contains a detailed rebuttal of the amended Complaint and the Complainant’s supplemental filing which clearly demonstrate that the Respondent has understood both submissions. Therefore, the Panel considers that requiring the Complainant to translate the Complaint from English into Chinese would create an undue burden and delay, whereas accepting all documents as filed in English or Chinese will not cause unfairness to 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, whether in English or Chinese, without a translation.
The Panel notes that Annex VII to the amended Complaint contains three panel decisions from previous domain name dispute resolution proceedings, two of which are neither in English nor Chinese but rather in Spanish. The Respondent initially objected to the inclusion of these annexes in the record in their present form but the Response includes detailed comments distinguishing them from the present dispute, which demonstrates that the Respondent has understood them. Therefore, the Panel declines to require translations of these decisions or to exclude them from the record but will, rather, consider their relevance, materiality and weight.
C. Date of the Panel’s Decision
The Respondent requests that the Panel render its decision before September 22, 2019 or after October 7, 2019 so that the period foreseen in paragraph 4(k) of the Policy, during which a respondent may have recourse to a court prior to implementation of a panel’s decision, does not overlap with the Chinese National Day Holiday. The Panel notes that paragraph 4(k) refers to ten “business” days.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:
(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 GLOVO trademark.
The Respondent submits that the Complainant has no registered trademark rights in China, where the Respondent is resident. However, given the global nature of the Internet and Domain Name System, the Panel considers that the jurisdictions in which the Complainant’s trademark rights are valid is irrelevant to the assessment of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.1.2.
The disputed domain name is identical to the GLOVO trademark, but for the addition of 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.
The Respondent points out that the disputed domain name was registered before the GLOVO trademark. However, the Panel notes that the Complainant has rights in the GLOVO trademark at the time of this proceeding. The timing of the disputed domain name registration and of the trademark registration is considered in relation to the third element below.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Given the findings in Section 6.2C below, it is unnecessary for the Panel to consider whether the Respondent has any rights or legitimate interests in respect of the disputed domain name.
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. It is not an exhaustive list of such circumstances. However, a conclusion that a domain name was registered in bad faith requires a finding that the respondent targeted a complainant’s mark.
The difficulty for the Complainant’s case is that there is no evidence that the Respondent targeted a “glovo” trademark. Where a respondent registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent: see WIPO Overview 3.0, section 3.8.1. The Respondent registered the disputed domain name in 2001, fourteen years before the Complainant was founded and obtained registration of the GLOVO mark, in 2015. Accordingly, there is no way for the Panel to conclude that the Respondent could have known of the GLOVO trademark in 2001, when he registered the disputed domain name.
The Panel has considered the possibility that there may be exceptional circumstances indicating that the Respondent registered the disputed domain name in anticipation of nascent trademark rights: see WIPO Overview, section 3.8.2. The Panel accepts the Complainant’s evidence that the Respondent’s contact email address under the <sinonic.com> domain name, with what appears to be an administrator’s username, links him to the company that registered that domain name, and that that company was found to have registered and used another domain name in bad faith in a previous proceeding under the Policy. However, the Panel is unable to make the leap required to reach a conclusion that the Respondent registered the disputed domain name in bad faith. The Complainant has failed to establish the third element in paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
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”. “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.”
The Respondent alleges that the Complainant has engaged in reverse domain name hijacking.
The Panel notes that the Complainant has legal representation in this proceeding. Prior to the commencement of the proceeding, the Respondent drew the Complainant’s attention to the fact that the disputed domain name had been registered 17 years earlier and was much older than the Complainant’s company. The Complainant was well aware of the date of the disputed domain name registration; the date actually appears in an annex to the amended Complaint. This doomed the Complaint, in the circumstances of this case. In the Panel’s view, the Complainant launched the proceedings when its attempts to obtain a transfer of the disputed domain name from the Respondent proved unsuccessful, knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. See WIPO Overview 3.0 , section 4.16 and, for example, GWG Holdings Inc. v. Jeff Burgar, Alberta Hot Rods, WIPO Case No. D2016-1420; AUSACORP, S.L v. Andrew David Dawson, WIPO Case No. D2018-1772.
Therefore, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: September 30, 2019