WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Hockey League v. zhao jing
Case No. DCC2019-0005
1. The Parties
The Complainant is National Hockey League, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is zhao jing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nhl.cc> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 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 June 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2019 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 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 June 29, 2019. The Respondent sent two email communications to the Center on July 1, 2019 in which he requested that Chinese be the language of the proceeding and set out a response to the Complaint. The Complainant filed an amended Complaint in English on July 3, 2019. The Respondent sent a further email communication to the Center on July 3, 2019 setting out a response to the amended Complaint.
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 July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not file anything further. The Center sent a notification regarding commencement of panel appointment process to the Parties on July 26, 2019. The Complainant submitted an unsolicited supplemental filing on July 30, 2019. On the same day, the Center acknowledged receipt.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 2, 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 professional hockey league that has operated since at least 1917. It consists of 31 member clubs, 24 of which are located in the United States and seven in Canada. The Complainant has obtained multiple trademark registrations for NHL in multiple jurisdictions, including United States trademark registration number 883,569, registered on December 30, 1969. That trademark registration remains current. The Complainant also registered the domain name <nhl.com> on October 18, 1994 that it uses in connection with its official website, where it provides information about hockey fixtures and sells hockey clothing, among other things. That website receives, on average, over 13 million visits per month.
The Respondent is an individual resident in China. The Respondent registered the disputed domain name on November 19, 2013. Prior to the filing of the Complaint, the disputed domain name resolved to a webpage titled “nhl.cc” and displaying the following text in English:
“The National Hockey League is a shorthand for the NHL, (French: Ligue Nationale de Hockey) a shorthand for LNH, a professional sports league formed by the North American ice hockey team. The domain you are visiting can be transferred! This domain is for sale.”
The webpage displayed a hyperlink for Internet users who wished to make an offer to buy the disputed domain name as well as a virtual business card for a “Mr. Zhao” with a QR code and the Respondent’s telephone number. At the time of this decision, the disputed domain name resolves to a domain name broker website.
Prior to the filing of the Complaint, an investigator acting for the Complainant corresponded with the Respondent by email, in English, regarding a possible purchase of the disputed domain name. On December 13, 2018, after the investigator’s third attempt to make contact, the Respondent stated a price of USD 30,000. On December 19, 2018, the investigator offered USD 5,000, the Respondent made a counter-offer of USD18,000 and the investigator made a final offer of USD 6,000, which the Respondent refused.
5. Parties’ Contentions
The disputed domain name is identical and confusingly similar to the Complainant’s NHL trademark, adding only the country code Top-Level Domain (“ccTLD”) suffix “.cc”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized, licensed, or consented to the Respondent’s registration and use of a domain name incorporating the Complainant’s NHL mark, or any confusingly similar variation thereof. The Respondent makes merely pretextual arguments lacking any clear contemporaneous evidence of bona fide pre-complaint preparations for legitimate use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Long after the Complainant established its rights in its trademark, and with knowledge of the Complainant’s famous NHL mark, the Respondent acquired the disputed domain name to divert Internet traffic intended for the Complainant to his website and offering to sell the domain name for a price far in excess of the registration cost. The Respondent had actual knowledge of the Complainant and its NHL mark at the time of registration of the disputed domain name as the webpage to which it resolves refers to both expressly. The Chinese Ice Hockey Association has been a member of the International Ice Hockey Federation since 1963. The Respondent appears to have a portfolio of over 2,400 domain names.
The Respondent presented his arguments in informal responses dated July 1 and 3, 2019.
“NHL” is an abbreviation of “钮祜禄” (Niu Hu Lu) who was the heroine of a popular Chinese television series broadcast in 2012 of which the Respondent was a fan, and it is also the name of a prominent Manchu clan. “NHL” are also the initials of the words “腻害了” (Ni Hai Le) which sound like “厉害了” (li hai le) meaning “awesome”, which is very popular among Chinese people. The Respondent chose attractive abbreviations for the future development of his website. “NHL” is also an abbreviation of “内环路” (Nei Huan Lu) meaning “inner ring road” where the Respondent used to work. The Respondent chose to register the first letters of these words in the disputed domain name registration. At that time, he was planning to use the disputed domain name to create a website but he has not yet established one because he has been too busy.
The Respondent did not register the disputed domain name in bad faith. The Respondent had never heard of the National Hockey League at the time that he registered the disputed domain name. Zhengzhou, where the Respondent lives, is too hot to play ice hockey. Ice hockey is not popular in China. It was not until 2015, when Beijing was selected as host city for the 2022 winter Olympic games, that most Chinese people learn about ice sports, which is after the registration of the disputed domain name. In the Baidu Internet search engine, a search for the Chinese ice hockey association returns only about 55,500 results whereas searches for the Chinese football, badminton, basketball and table tennis associations return over 3, 3, 5 and 4 million results, respectively.
The Respondent has never used the disputed domain name in connection with any active website with content relevant to the Complainant in the six years since he registered it. The Respondent was too busy to set up any website and the disputed domain name automatically directs to the Registrar’s domain name broker website. This shows that the Respondent did not register the disputed domain name to damage the Complainant’s reputation, disrupt the Complainant’s business or mislead the public. The Respondent has not registered NHL in any other domains so he has not registered the disputed domain name for profit.
Since 2016, the Respondent has received many enquiries regarding the possible sale of the disputed domain name but he did not respond to them because his purpose is not to sell. The disputed domain name is priceless, which is why he has renewed it repeatedly even though he does not have time to develop a website. The Respondent is not a professional domainer and the disputed domain name is meaningful to him personally. The 2,400 domain names associated with “zhao jing” do not all relate to the Respondent because “zhao jing” is a common name and also a transliteration of many different names. A Baidu search for “zhao jing” returns over 1.1 million results.
On December 8, 2018, the Respondent received an enquiry from a third party. The Respondent did not reply initially as he did not intend to sell; he only replied so as not to be rude. The third party did not indicate that he had any connection to the Complainant and induced the Respondent to quote a price. The Respondent did not initiate contact with the Complainant to ask for a price of USD 30,000. The Complainant sought multiple quotations through a third party and wants to deprive the Respondent of the legal ownership of the disputed domain name through this administrative proceeding.
The Respondent registered the disputed domain name himself and acquired it lawfully, without bad faith. He is an individual and has not harmed the interests of any other party.
6. Discussion and Findings
6.1 Procedural Issues
A. 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 pre-Complaint correspondence from the Respondent was written in English; and that the disputed domain name resolved to a website in English that offered the disputed domain name for sale and identified the Complainant by its name in English.
The Respondent requests that Chinese be the language of the proceeding. His main arguments are that the Registrar is Chinese; the Respondent is Chinese and his pre-Complaint correspondence consisted of short emails of less than 50 words which do not prove that he is proficient in English in order to be able to deal with this professional legal proceeding; and the use of English will put him in an unfair position.
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 Complaint and amended Complaint in this proceeding were filed in English. The Respondent filed his communications in Chinese but quoted extensively from the amended Complaint in English. The Center sent all its communications to the Parties in both Chinese and English. The contents of the Respondent’s informal responses during this proceeding indicate that he has indeed understood the Complaint and the amended Complaint. Prior to this dispute, the disputed domain name resolved to a website that invited Internet users in English to communicate with the Respondent, and the Respondent in fact corresponded with an investigator in English, which provides further confirmation that he understands that language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting all documents as filed 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.
B. Supplemental filing
The Complainant requests that the Panel accept its supplemental filing of July 30, 2019 in order “to refocus on the relevant issues and rebut a number of factual and legal misrepresentations included in Respondent’s informal Responses”. The Respondent did not comment on the supplemental filing.
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 after the commencement of the panel appointment process and almost one month after the Respondent’s last communication. The Panel sees nothing in the supplemental filing that needs to be taken into account as the Respondent’s assertions can be assessed on their face. Therefore, in the interests of ensuring that this administrative proceeding takes place with due expedition, the Panel declines to accept the Complainant’s supplemental filing as part of the record of this proceeding.
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 NHL mark.
The disputed domain name wholly incorporates the NHL mark. It adds only the ccTLD suffix of the territory of the Cocos Islands, “.cc”. A ccTLD suffix does not prevent a finding of identity or confusing similarity between a trademark and a domain name for the purposes of the first element of the Policy. See Vodafone Group PLC v. Wikipiedra S.L. / Jonathan Palma Ruz, WIPO Case No. DCC2010-0006. Consequently, the only distinctive element of the disputed domain name is the Complainant’s NHL trademark.
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 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.
As regards the first circumstance, the Complainant submits that it has not authorized, licensed, or consented to the Respondent’s registration and use of a domain name incorporating the Complainant’s NHL mark, or any confusingly similar variation thereof. Despite this, the disputed domain name resolved to a webpage that identified the disputed domain name (minus the ccTLD suffix) as an acronym for the Complainant and solicited offers to buy it. That is not a use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, or a use that would otherwise create rights or legitimate interests in the disputed domain name. See BolognaFiere S.p.A. v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars, WIPO Case No. D2004-0830.
As regards the second circumstance, the Respondent identified himself in the Registrar’s WhoIs database as “zhao jing” and on the webpage to which the disputed domain name resolved as “Zhao”, while his email username is “robias”. None of these is “nhl”. There is no evidence on the record that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain name resolved to a webpage that offered it for sale. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, 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 asserts various meanings for the acronym “NHL”, in connection with which it could potentially be used. None of these potential uses overcomes the fact that the Respondent has made actual use of the disputed domain name to resolve to a webpage that identified NHL with the Complainant and targeted its NHL mark. In any event, the Respondent provides no evidence of demonstrable preparations to use the disputed domain name in connection with any of these potential meanings.
The Respondent also submits that he acquired the disputed domain name lawfully. However, the mere fact of registration of a domain name does not create rights or legitimate interests for the purposes of the Policy, otherwise no complaint could ever succeed, which would undermine the very objective of the Policy. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.
Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 [disputed] domain name;”
As regards registration, the evidence on record shows that the webpage to which the disputed domain name resolved prior to this dispute specifically identified “NHL” with the Complainant. This gives the Panel reason to believe that the Respondent was aware of the Complainant and its NHL mark at the time of registration of the disputed domain name and specifically targeted it, regardless of the degree of popularity of ice hockey in China at that time. The fact that the Respondent may not have registered the Complainant’s NHL mark in other TLDs does not provide a justification for his registration of it in the “.cc” ccTLD. Therefore, the Panel considers it more likely than not that the Respondent registered the disputed domain name in bad faith.
As regards use, the Respondent was using the disputed domain name prior to this dispute in connection with a webpage that solicited offers to buy it and provided the Respondent’s contact details. The webpage specifically identified the Complainant. The Respondent in fact offered to sell the disputed domain name to a third party acting on behalf of a client. Although the Respondent did not know that the third party’s client was the Complainant, the website solicited offers from any interested party. Further, the Respondent was under no obligation to make an offer to sell, and there is no evidence on the record that the Respondent’s offers were induced in bad faith. The Respondent’s lowest offer to sell the disputed domain name was USD18,000, a sum that the Panel considers far in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent has not documented any costs greater than that amount. Although the disputed domain name currently resolves to a different website, that does not alter the Panel’s conclusion and may in fact constitute further evidence of use in bad faith. In view of all these circumstances, the Panel finds that the Respondent is using the disputed domain name in bad faith.
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.
D. Reverse Domain Name Hijacking
The Respondent alleges that the Complainant wants to deprive the Respondent of the legal ownership of the disputed domain name through this administrative proceeding. He notes that the Complainant contacted the Respondent through a third party who did not identify the Complainant as his client.
The Panel does not consider that the Complaint was brought in bad faith; on the contrary, it has upheld the Complaint. In any event, the evidence on record indicates that the Respondent via his webpage solicited offers to buy the disputed domain name and that he stated his prices of his own accord.
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 <nhl.cc> be transferred to the Complainant.
Date: August 12, 2019