WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sheryl Sandberg & Dave Goldberg Family Foundation v. guanghui Bao
Case No. D2021-0390
1. The Parties
The Complainant is Sheryl Sandberg & Dave Goldberg Family Foundation, United States of America (“USA”), represented by Arnold & Porter LLP, USA.
The Respondent is guanghui Bao, China.
2. The Domain Name and Registrar
The disputed domain name <leaninwomenofcolor.com> is registered with Xiamen Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on February 9, 2021. On February 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2021, 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. The Center sent an email communication to the Complainant on February 26, 2021 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 March 1, 2021.
On February 26, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on February 26, 2021. 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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 20, 2021. 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 non profit public benefit corporation incorporated in the State of California in the USA and operating worldwide, providing services dedicated to helping women achieve their ambitions, under the trade mark LEAN IN (the “Trade Mark”).
The Complainant is the owner of several registrations in the USA for the Trade Mark, including registration No. 4,769,036 with a registration date of July 7, 2015.
The Complainant is also the owner of the domain name <leanin.org> comprising the Trade Mark, registered since April 6, 2010.
The Complainant operates a “Lean In Women of Color” chapter, under the Trade Mark, consisting of seven circles in Chicago, USA and in Southern California, USA.
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on November 25, 2020.
D. Use of the Disputed Domain Name
The disputed domain name is resolved to a Chinese language website, with pornographic content and gambling links, for commercial gain (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is 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 Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), 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 be English, for several reasons, including the fact the Website contains language clearly demonstrating that the Respondent and his Website operate from within the USA by including the wording in Chinese on the Website “我们立足于美利坚合众国” (we are based in the USA), which demonstrates that the Respondent is likely conversant in the English language.
The Panel would have accepted a response in English or Chinese, but 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 notes that there is evidence to support the conclusion that the Respondent is conversant in English, that the Respondent has chosen not to contest this proceeding, and that all of the Center’s communications with the Parties have been sent in English and Chinese.
The Panel is also 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 name incorporates 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). Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name differs from the Trade Mark by the additional term “womenofcolor”, which does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark in which the Complainant has rights.
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 name 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 name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which provides pornographic content and gambling links, for commercial gain.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In addition, the Panel notes the nature of the disputed domain name, being confusing similar to the Trade Mark, and identical to the name of the Complainant’s chapter “Lean In Women of Color”, carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the Complainant’s use of the Trade Mark for several years prior to the date of registration of the disputed domain name; the close similarity between the disputed domain name and the Trade Mark; the lack of any substantiated credible explanation from the Respondent; and the use of the disputed domain name in the manner set out in Section 6.2.B. above, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out.
The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time he registered the disputed domain name because the disputed domain name is not only confusingly similar to the Trade Mark but also identical to the chapter “Lean In Women of Color” operated by the Complainant, which promotes the advancement of women of colour in the workplace and society.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is 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 name <leaninwomenofcolor.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 5, 2021