WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unicareer (Shanghai) Education Technology Co., Ltd. v. Navigation International Pty Ltd, Linghang Education
Case No. DAU2019-0001
1. The Parties
The Complainant is Unicareer (Shanghai) Education Technology Co., Ltd. of Shanghai, China, represented by Beijing Chofn Intellectual Property Agency Co. Ltd, China.
The Respondent is Navigation International Pty Ltd, Linghang Education, of Melbourne, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <unicareer.com.au> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2019. On the same day, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. The following day, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and confirming that the Registration Agreement is in English. On January 16, 2019, the Center requested that the Complainant amend the Complaint. The Complainant submitted an amended Complaint on January 18, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “.auDRP”), the Rules for the .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the .au 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 January 21, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on February 15, 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 Chinese company that operates an e-learning career development platform for international students and working professionals. The Complainant registered the domain name <unicareer.com> on October 27, 2006 that it uses in connection with an official website in Chinese, where it provides online courses and information about itself. One of its courses relates to the qualification to become a CFA (i.e., a Chartered Financial Analyst). The Complainant obtained a business licence in China on December 25, 2014. During the period from March 2015 to October 2018, the Complainant filed six applications for Chinese trademark registrations, five for different devices each including the term “unicareer”, one for UNICAREER, and all specifying services in class 41. Two applications (both for device marks) were refused and the other four applications are awaiting examination. The Complainant also registered the domain names <unicareer.net> and <unicareer.org> on March 18, 2016 and March 25, 2016, respectively, and uses them in connection with an official website in English. In July 2016 and July 2017, the Complainant announced that it had successfully obtained financing of CNY 30 million and CNY 50 million, which was reported by Chinese news media, including Xinhua and Sina.com Online. The Complainant filed Australian trademark application number 1977711 for UNICAREER on December 25, 2018, specifying services in classes 35, 41 and 42. At the date of this decision, that trademark application is awaiting examination.
The Respondent is an Australian company named “Navigation International Pty Ltd”. Its registrant contact name in the WhoIs database is “Linghang Education”, which is part-transliteration and part-translation of its Chinese name “领航教育”. The Respondent registered the domain name <linghang.education> on March 10, 2015 and uses it in connection with a website in Chinese that offers online courses for Chinese and international students in Australia.
According to the Complaint, the disputed domain name was registered on August 8, 2016. At the time of the Complaint, it resolved to a website in Chinese that offered online education courses. The toolbar on the homepage, and the favicon, displayed a logo featuring the word “Unicareer”. The logo was not the same as any logo used by the Complainant. The website offered online CFA and PTE (i.e., Pearson Test of English) courses and university tutoring. A sidebar on the website regarding the PTE included a Quick Response Code (“QR code”) for what purported to be an official Unicareer public account. Internet users who scanned the QR code could contact a salesperson in Melbourne, whose Wechat ID contained the term “unicareer”. The Respondent also uploaded to the Internet a promotional video regarding “Unicareer PTE”.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s UNICAREER trademark and trade name. The Complainant has applied for several trademarks that include the element “unicareer”. The Complainant owns a trade name right in “Unicareer”. The Complainant has developed its business in many countries, including China and the United States of America (“United States”). The Complainant owns common law rights in UNICAREER due to its long term use of “Unicareer”. The Complainant has successfully completed several rounds of funding. Since its establishment, the Complainant has continued to use “Unicareer” as its trade name and core trademark and gained substantial reputation. The Complainant already reached agreements with many universities and corporations in China and the United States.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no trademark rights. The Complainant never directly or indirectly authorized the Respondent to use its trademark or trade name in any form.
The disputed domain name was registered and is being used in bad faith. The Complainant’s UNICAREER trademark had already become famous before the disputed domain name was registered. “Unicareer” is not a fixed word, but a suggestive or fanciful word for education services. The core part of the disputed domain name is identical to the Complainant’s trademark. The Respondent’s website is in Chinese. The Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s name or mark. The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business or activities of another person.
The Complainant requests the transfer of the disputed domain name to itself.
The Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.
The burden of proof of each element is borne by the Complainant.
A. Identical or Confusingly Similar
The Complainant does not allege that it has registered trademark rights in any jurisdiction. Although the Complainant has filed an application for an Australian registered trademark, that does not confer rights for the purposes of the first element of the auDRP.
Rather, the Complainant asserts unregistered trademark rights in UNICAREER. The Panel considers that a claim based on an unregistered mark requires the Complainant to produce evidence that, prior to the filing of the Complaint, it has provided goods or services under that mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. See Avid Life Media, Inc. v. Melody Carstairs, WIPO Case No. DAU2011-0001.
The Complainant has provided extensive evidence of its provision of services under the UNICAREER mark in Chinese and in English. It provides training courses online via instructors from many different countries. It also promotes and uses its mark offline in China and the United States, including through offices, recruitment fairs, recruitment cooperation contracts, corporate partnerships and campus collaborations. Based on this evidence of use of the UNICAREER mark, in particular in the online environment to which it is directed, and the publicity given to that mark, the Panel finds it more likely than not that the Complainant has acquired unregistered rights in the UNICAREER mark with respect to training services.
The disputed domain name is identical to the Complainant’s UNICAREER mark, but for the Second-Level Domain (“2LD”) suffix “.com.au”. A 2LD suffix is generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
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 in paragraph 4(a) of the auDRP.
B. Rights or Legitimate Interests
Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, 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 auDRP:
(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); 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 Panel has already found that the disputed domain name, but for the 2LD suffix, is identical to the Complainant’s UNICAREER mark. The Complainant submits that it never directly or indirectly authorized the Respondent to use its trademark or trade name in any form. The Respondent was using the disputed domain name in connection with an offering of a class of services identical to that provided by the Complainant. Given the findings at section 6C below, the Panel does not consider this to be a bona fide use. Therefore, the Panel does not find that the Respondent is making a use of the disputed domain name within the terms of paragraph 4(c)(i) of the auDRP.
The Respondent’s corporate name is “Navigation International Pty Ltd” and it is also known as “Linghang Education” or “领航教育”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the auDRP.
The disputed domain name resolves to a commercial website offering online courses competing with the courses of the Complainant. It is not a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the auDRP.
Based on the above, 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. The Respondent did not rebut that case because it did not respond to the Complaint. The Complainant has satisfied the second element in paragraph 4(a) of the auDRP.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The disputed domain name, but for the 2LD suffix, is identical to the UNICAREER mark. The disputed domain name, but for the country code Top-Level Domain suffix “.au”, is also identical to the Complainant’s domain name <unicareer.com>, which the Complainant uses in connection with one of its official websites. The disputed domain name is used in connection with the offering of a class of services identical to that provided by the Complainant under that mark; in fact, the Complainant and the Respondent both offer training courses regarding the CFA. The Complainant has submitted evidence of its provision and promotion of its services online and offline under the UNICAREER mark, including during the period up to and including 2016. This evidence demonstrates that the disputed domain name was only registered after the Complainant had acquired a reputation in its UNICAREER mark in connection with training services and, in any case, shortly after a publicized announcement regarding the Complainant’s financing. The presentation of “Unicareer” on the Respondent’s website was also evocative of the “connect the dots” homepage on the Complainant’s English language website. The Panel considers it improbable that these facts are all mere coincidences. The Respondent provides no alternative explanation of its choice to register the disputed domain name. This all gives the Panel reason to find that the disputed domain name has been registered in bad faith. Further, the Panel finds that the disputed domain name is being used intentionally to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the affiliation of that website and the services offered on that website within the terms of paragraph 4(b)(iv) of the auDRP.
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 auDRP.
The Complainant is an applicant for an Australian registered trademark that is an exact match of the disputed domain name. The Complainant therefore appears to fulfil the eligibility and allocation rules for the “com.au” 2LD with respect to the disputed domain name.
For the foregoing reasons, the Panel orders the transfer of the disputed domain name <unicareer.com.au> to the Complainant.
Date: March 1, 2019