WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pumpkin, SAS v. 张志烽 (zhang zhi feng)

Case No. D2021-0916

1. The Parties

The Complainant is Pumpkin, SAS, France, represented by Nameshield, France.

The Respondent is 张志烽 (zhang zhi feng), China.

2. The Domain Name and Registrar

The disputed domain name <pumpkinbank.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 March 26, 2021. 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 March 29, 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 March 31, 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 31, 2021.

On March 31, 2021, the Center also 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 March 31, 2021. The Respondent did not comment on the language of the proceeding.

On March 31, 2021, the Respondent’s administrative, billing and technical contact sent two email communications in English to the Complainant. The Complainant replied to the above email communications. The Center was copied each time.

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 amended Complaint, and the proceeding commenced on April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Respondent did not file a formal Response but his administrative, billing and technical contact had previously sent two email communications to the Complainant, copied to the Center. On May 7, 2021, the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Matthew Kennedy as the sole panelist in this matter on June 2, 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 promotes a secure peer-to-peer payment and refund application called “Pumpkin”. The Complainant holds French trademark registration number 4431932 for PUMPKIN in a fancy script, registered on February 26, 2018 and specifying goods and services in classes 9, 35, 36, 38 and 42, including banking services. That trademark registration remains current. The Complainant is also the registrant of the domain name <pumpkin-app.co> that it uses in connection with a website for its payment and refund application.

The Respondent is an individual resident in China.

The disputed domain name was registered on February 17, 2021. It resolves to a domain name broker’s website that offers it for sale. On March 25, 2021, the Complainant or its representative made an offer of USD 100 for the disputed domain name, which was rejected. The seller made a counter-offer of USD 100,000 for the disputed domain name.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s PUMPKIN trademark. The addition of the term “bank” refers to the Complainant’s banking payment activity.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known as the disputed domain name. The Respondent is not related in any way to the Complainant. The Complainant has not granted any license or authorization to the Respondent to use its PUMPKIN trademark or to register the disputed domain name. The Respondent is offering the disputed domain name for sale.

The disputed domain name has been registered and is being used in bad faith. The association of the words “pumpkin” and “bank” in a Google search refers to the Complainant. The Respondent was aware of the Complainant when he registered the disputed domain name. The Respondent registered and uses the disputed domain name in bad faith because he offers the disputed domain name for sale at an amount exceeding out-of-pocket costs.

B. Respondent

The Respondent did not file a formal Response but its administrative, billing and technical contact had previously sent two email communications on March 31, 2021 to the Complainant, copied to the Center. “Pumpkin” and “bank” are generic words. The Complainant’s rights to the trademark PUMPKIN do not extend to all domain names composed of that mark and another word. According to the Complainant’s theory, domain names such as <pumpkinpay.com>, <pumpkincash.com> and <pumpkinwallet.com> should all belong to it. The reason that the Respondent registered the disputed domain name was merely to sell his pumpkin planting on the Internet. The Respondent had never heard of the Complainant’s business and is not interested in it.

6. Discussion and Findings

6.1 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 the language of the proceeding be English. Its main arguments (made prior to the correspondence between the Parties during this proceeding) were that the disputed domain name is in Latin characters and translation of the Complaint into Chinese would create an unreasonable cost and burden for the Complainant. The Respondent did not comment on the language of the proceeding, although his administrative, billing and technical contact elected to communicate with the Complainant in English after receiving the Center’s email communication regarding the language of the proceeding.

Paragraph 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 in this proceeding the Complaint and amended Complaint were filed in English. The Parties have corresponded during this proceeding in English. Accordingly, the Panel considers that requiring the Complainant to translate the amended Complaint into Chinese would create an undue burden and delay whereas accepting the amended Complaint and the Respondent’s informal email communications in English sent by his administrative, billing and technical contact does not create 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.

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 PUMPKIN mark.

The disputed domain name wholly incorporates the PUMPKIN mark. It also incorporates the dictionary word “bank”. The addition of this word does not avoid a finding of confusing similarity as the mark remains clearly recognizable in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8.

The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, i.e., “.com”. As a mere technical requirement of registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

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.

The disputed domain name resolves to a website that merely offers it for sale. The Complainant submits that it has not granted any license or authorization to the Respondent to use its PUMPKIN trademark or to register the disputed domain name. The Respondent is named in the Registrar’s WhoIs database as “张志烽 (zhang zhi feng)”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name.

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 the disputed domain name is composed of dictionary words. However, that does not automatically create rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not using the disputed domain name in accordance with the dictionary meaning of the words of which it is composed. Although he asserts that he intends to make such a use of the disputed domain name, he does not provide any evidence of preparations to do so nor any explanation for his choice to combine “bank” with “pumpkin” in the disputed domain name. Accordingly, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case. See WIPO Overview 3.0, section 2.10.

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 domain name.

As regards registration, the disputed domain name was registered in 2021, years after the Complainant’s registration of the PUMPKIN mark. The Complainant has used its trademark on the Internet in connection with its payment and refund mobile application. Although “pumpkin” and “bank” are both dictionary words, the combination of the two in the disputed domain name has no apparent connection to their dictionary meanings and indicates an awareness of the nature of the Complainant’s business. Although the Respondent denies prior knowledge of the Complainant, he does not substantiate his explanation for choosing to register the disputed domain name and provides no explanation for his choice to combine “bank” with “pumpkin” in the disputed domain name. This all gives the Panel reason to find that the Respondent was aware of the Complainant and that he targeted the Complainant’s mark when he registered the disputed domain name.

As regards use, the evidence on the record shows that the disputed domain name resolves to a broker’s website where it is merely offered for sale and that, upon enquiry, the asking price for the disputed domain name is USD 100,000. The Panel considers that amount very likely to be far in excess of the out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent does not provide documentation of any such costs. In these circumstances, the Panel finds that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration very likely in excess of his documented out-of-pocket costs directly related to the disputed domain name, as envisaged in paragraph 4(b)(i) of the Policy.

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

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 <pumpkinbank.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: June 16, 2021