WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alibaba Group Holding Limited v. Xindanongji

Case No. DAM2015-0001

1. The Parties

The Complainant is Alibaba Group Holding Limited of George Town, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Mayer Brown JSM, China.

The Respondent is Xindanongji of Shijiazhuang, China.

2. The Domain Name and Registrar

The disputed domain name <taobao.am> is registered with ABCDomain LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2015. On February 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2015. The Respondent did not file a formal Response.

The Respondent sent email communications to the Center on February 23, 2015, March 29, 2015, April 2, 2015 and April 17, 2015.

On April 2, 2015, the Center informed the Parties that the due date for Response was March 10, 2015 and that pursuant to paragraph 6 of the Rules, the Center would proceed to Panel Appointment.

The Center appointed Francine Tan as the sole panelist in this matter on April 21, 2015. 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 limited company incorporated in the Cayman Islands and was founded and headquartered in Hangzhou, China. Since its formation in 1999, it has grown to become a global leader in the field of e-commerce and B2B services. The Complainant was officially listed on the New York Stock Exchange in September 2014. It was reported in the “South China Morning Post” that the Complainant “set a record for the world’s biggest initial public offering with its US$25 billion listing in New York in September”.

The Complainant has subsidiary and affiliate offices in about 70 cities across China, as well as in Hong Kong (China), Taiwan Province of China, Republic of Korea, India, Japan, Singapore, the United States of America and Europe. Through its affiliates, the Complainant operates two online B2B marketplaces - a global trade marketplace (“www.alibaba.com”, hereinafter “Alibaba.com”) for importers and exporters and a Chinese marketplace (“www.alibaba.com.cn” and “www.1688.com”) for domestic trade in China. As of December 31, 2012, Alibaba.com had around 36.7 million registered users from more than 240 countries and regions and showcased more than 2.8 million supplier storefronts. In the same period, Alibaba.com’s online Chinese marketplace had around 77.7 million registered users and showcased more than 8.5 million supplier storefronts.

In May 2003, the Complainant founded the trade mark TAOBAO (in Chinese, 淘宝) and started use of the website “www.taobao.com”, a Chinese language consumer-to-consumer (“C2C”) Internet retail platform, focused on Chinese consumers. In the last 10 years, the C2C platform operated by the Complainant under the TAOBAO trade mark (“the Taobao marketplace”) has grown to become on China’s largest online retail platforms and the primary online shopping destination in China. As of March 2013, the Taobao marketplace had over 760 million product listings on its websites. It receives more than 50 million unique visitors daily and is one of the world’s top 20 most-visited websites. The Complainant’s TAOBAO websites link to the Complainant’s other online platforms including the Alibaba.com websites, the “www.aliexpress.com” platform (a leading global e-marketplace made up of small business sellers that offer a wide variety of consumer products at competitive prices), “www.alipay.com” (China’s most widely-used third party online payment solution), and “www.alimama.com” (China’s leading online advertising platform).

The TAOBAO trade mark (including derivatives thereof e.g. ETAO, HAPPYTAO and MISS TAO) has been used by the Complainant and its affiliates over the last 12 years. Significant time and effort have been made in promoting the TAOBAO trade marks and the products and services available at the TAOBAO websites since 2003, via the Internet and through publicity and advertising in trade press and other print media.

The Complainant and its trade marks have garnered significant amounts of media attention and resulted in creating a high public profile for the Complainant across the globe. The Complainant’s services provided via the TAOBAO market place is and have consistently been carried on, supplied and marketed continuously and substantially under and/or by reference to the TAOBAO trade marks. The TAOBAO trade marks have been registered in various jurisdictions around the world. The TAOBAO trade mark was first used in 2003. The TAOBAO trade marks have been registered in many jurisdictions including China, the European Union, the Russian Federation and the United States of America. As a result of the Complainant’s significant amount of investment in promoting and using the TAOBAO trade marks, they have become well-known to consumers and Internet users around the world including in China.

The disputed domain name was registered on March 16, 2011. It resolves to a website in the Chinese language which purports to sell products from China. The Respondent’s website therefore directly competes with the Complainant and its TAOBAO marketplace. The Respondent’s website features lingerie, adult toys and condoms for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the TAOBAO trade marks in which it has rights. The disputed domain name incorporates the Complainant’s TAOBAO trade mark in its entirety. The country-code Top-Level Domain extension is to be disregarded when considering the issue of identity or confusion with the Complainant’s trade mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The TAOBAO trade mark is immediately recognizable to consumers as being associated with the Complainant, its affiliates and its businesses. The Complainant’s TAOBAO mark is also a direct Romanized transliteration of the Complainant’s淘宝 mark. The Complainant’s淘宝mark is a coined term not commonly used in the Chinese language and has no meaning in any language other than in relation to the Complainant and its TAOBAO mark. The Complainant has not licensed, consented to or otherwise authorized the Respondent’s use of the TAOBAO trade marks in respect of the disputed domain name. The disputed domain name was registered 8 years after the Complainant’s first use and adoption of the TAOBAO trade marks. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The Respondent’s name does not reflect or correspond with the disputed domain name. To the best of the Complainant’s knowledge, the Respondent does not own any trade mark registrations reflecting or corresponding to the disputed domain name.

The Complainant contends that the Respondent’s website incorporates the Complainant’s TAOBAO trade marks and logo, refers to the Complainant’s other businesses including the Complainant’s ALIPAY platform, and has the same design, look and feel as the Complainant’s TAOBAO websites. The nature of the Respondent’s website shows that he was clearly aware of the Complainant and its rights in the TAOBAO trade marks. The Respondent is using the disputed domain name to unfairly capitalized or take advantage of the confusing similarity with the Complainant’s TAOBAO trade marks to attract and redirect Internet users to his website for commercial gain.

The disputed domain name was registered and is being used in bad faith. This is supported by the fact that:

the Respondent has no rights or legitimate interests in respect of the disputed domain name;

the Complainant’s 淘宝trade mark is a coined term not commonly used in the Chinese language, and TAOBAO and TAO (the Chinese character being “淘”) have no meaning in any language other than as a direct Romanized transliteration of these Chinese characters. The Respondent therefore must have known of the Complainant’s TAOBAO trade marks at the time he registered the disputed domain name and the motivation for registration was for the sole aim of taking advantage of the Complainant’s reputation in the TAOBAO trade marks and profit thereby;

the Respondent appears to be based in China where the Complainant and its TAOBAO trade marks are particularly well known; the disputed domain name was registered 8 years after the Complainant’s first use of the TAOBAO trade marks; and the Respondent’s website clearly demonstrates that he was aware of the Complainant and its TAOBAO trade marks; and

it is inconceivable that the Respondent registered and is using the disputed domain name for any reason other than in bad faith in view of the identity between the disputed domain name and the Complainant’s TAOBAO trade mark, and the use by the Respondent of the disputed domain name for a website which competes with and attempts to mislead Internet users.

B. Respondent

The Respondent did not file a formal response but sent several emails to the Center on February 23, 2015, March 29, 2015, April 2, 2015 and April 17, 2015.

In the first email, he stated (all in English) that

“The ‘taobao’ is not a trademark as the software in China. We will against the alibaba company. This domain is owned by us for 4 years”.

In the second email, the Respondent wrote in Chinese with corresponding translations of each line into English. He stated, inter alia, that the

“domain is built in 2011”

“nobody or any company raises objection during 4 years”

“the domain is hosed in Albaba inc. 4 years”

“during we hosted it in Alibaba.inc, the Alibaba. Inc don’t raise any objection”

“we think the domain is not same as trademark”

“because we have apply taobao ™ for agricultural machinery in China”

“and the Alibaba inc never contact us until now”.

In the third email, the Respondent wrote entirely in English:

“ok

Can you tell me what I can do next?

I am not the richest man

I do not have the lawyer

What can i do?”

In the fourth email, the Respondent wrote:

“Hi we are the Chinese agricultural machine company

Am == agricultural machine

Taobao means shopping

We waiting for the result”.

6. Discussion and Findings

A. Language of the Proceeding

The language of the Registration Agreement in this case is English as confirmed by the Registry.

The Respondent, in his email of March 29, 2015 requested that the proceeding be in Chinese since he is Chinese and the Complainant is a Chinese entity.

Paragraph 11(a) of the Rules stipulates 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.

Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:

“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”

The Panel determines that English should be the language of the proceeding since the Registration Agreement is in English. This accords with paragraph 11(a) of the Rules. Moreover, the Respondent is clearly able to communicate in English whereas the Complainant is not able to communicate in Chinese.

B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trade mark TAOBAO. This mark is incorporated in its entirety in the disputed domain name. The Complainant is correct that it is a well-accepted principle that the country code Top-Level Domain “.am” is to be disregarded in the consideration of the issue of whether a domain name is identical or confusingly similar to a complainant’s trade mark.

The Panel concludes that the disputed domain name is identical to the Complainant’s TAOBAO trade mark.

Paragraph 4(a)(i) of the Policy has therefore been satisfied.

C. Rights or Legitimate Interests

There is indeed no evidence that the Respondent is commonly known by the name Taobao nor is there evidence of a legitimate noncommercial or fair use of the disputed domain name (paragraphs 4(c)(i) and (iii) of the Policy). The Respondent is clearly aware of the Complainant and its trade mark and the evidence shows he has been using the disputed domain name to misleadingly divert consumers for commercial gain (paragraph 4(c)(iii) of the Policy).

A prima facie case has been established by the Complainant. Accordingly, the onus shifts to the Respondent to rebut the Complainant’s contentions with evidence of his rights or legitimate interests. The Respondent alluded to a trademark application having been made for the TAOBAO trade mark in respect of agricultural machinery and stated that his company is an agricultural machinery company, but provided no evidence of either claims. The evidence provided by the Complainant, instead, shows use of the Respondent’s website in relation to the offer for sale of lingerie, adult toys and condoms.

By the time the disputed domain name was registered in 2011, the Complainant had already used the TAOBAO trade mark for 8 years. Further, such use and promotions thereof by the Complainant have been very extensive and consistent, as result of which the trade mark TAOBAO had become well known by the time the disputed domain name was registered. The Respondent did not deny knowledge of the Complainant and of its TAOBAO trade mark when he registered the disputed domain name.

The Panel is of the view that it would require very clear, substantive and unequivocal evidence to support a claim of rights or legitimate interests in the disputed domain name. All the Respondent has essentially argued is that he had registered the disputed domain name without any problem and not been contacted by the Complainant till now. The Panel is of the view that this fact alone does not constitute a right or legitimate interest in the disputed domain name or a defence against the Complainant’s contention that the Respondent lacks right or legitimate interest in the disputed domain name. The Respondent’s claim that “淘宝” means “shopping” is incorrect and baseless. The term “淘宝” as a whole has no meaning. “淘” on its own means “to cleanse” or “eliminate” and “宝” means “precious” or “treasure”.

The Panel therefore finds that the Respondent has no rights or legitimate interests in relation to the disputed domain name.

Paragraph 4(a)(ii) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

The Panel determines that there has been bad faith registration and use of the disputed domain name. The Respondent was clearly aware of the Complainant and of its TAOBAO trade marks when he registered the disputed domain name. The references in the Respondent’s website to the Complainant’s other businesses, the incorporation of the Complainant’s TAOBAO trade marks, as well as the similar design, look and feel as the Complainant’s TAOBAO websites do not constitute legitimate or bona fide use. It is clear to the Panel that “by using the domain name [the Respondent had] intentionally attempted to attract, for commercial gain, Internet users to [his] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his] web site or location or of a product … on [his] web site or location” (paragraph 4(b)(iv) of the Policy). In the absence of any authorization from the Complainant, no bona fide or legitimate use of the disputed domain name can reasonably be claimed by the Respondent.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Paragraph 4(a)(iii) of the Policy has been satisfied.

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 <taobao.am> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: May 1, 2015