WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

COMUTO v. DONGYUNQIU/shi lei

Case No. DCO2014-0038

1. The Parties

The Complainant is COMUTO of Paris, France, represented by Nameshield, France.

The Respondents are shi lei of Hangzhou, Zhejiang, China (“1st Respondent”), self-represented and DONGYUNQIU of Shaoxing, Zhejiang, China (“2nd Respondent”), also self-represented.

2. The Domain Name and Registrar

The disputed domain name <blablacar.co> (the “Disputed Domain Name”) is registered with CCI REG S.A. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2014. The same Complaint was also served to Godaddy.com, Inc. (“GoDaddy Registrar”) by the Complainant on December 5, 2014 as it was the listed Registrar on the WhoIs data when the Complaint was filed. On the same day, GoDaddy Registrar transmitted by email to the Complainant and the Center indicating that it was no longer the registrar of the Disputed Domain Name. The Registrar now is CCI REG S.A. On December 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 9, 2014, 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 December 11, 2014, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 11, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2015. The Response was filed with the Center on December 16, 2014.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 15, 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 French corporation which offers ride sharing service by allowing drivers with empty seats to connect to paying passengers. The Complainant is the owner of the following registered trademarks:

1. BLABLACAR and Device, Community trademark, Registration No. 010813236, registered on September 3, 2012.

2. BLABLACAR, Community trademark, Registration No. 010812485, registered on August 31, 2012.

According to the WhoIs data, the Disputed Domain Name was registered on January 31, 2014 by the 1st Respondent. The Disputed Domain Name was transferred from the 1st to the 2nd Respondent on December 5, 2014. According to the WhoIs data and the Registrar’s verification response, the 2nd Respondent is DONGYUNQIU.

The Registrar confirmed, in its email of December 9, 2014, that the Registration Agreement for the Disputed Domain Name is in English.

5. Parties’ Contentions

A. Complainant

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Disputed Domain Name incorporates the Complainant’s BLABLACAR trademark in its entirety with an additional element “.co”, which is a country code Top-Level Domain (“ccTLD”) and is not able to create a sufficient distinction between the Disputed Domain Name and the Complainant’s trademark.

(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondents are not entitled to any trademark, trade name or any other right in the name “Blablacar”. The Respondents are not licensed or authorized by the Complainant to use the Complainant’s BLABLACAR trademark in any form. The 1st Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name as the web site to which the Disputed Domain Name resolves displays a parking page with pay-per-click links since its registration. It is also indicated as being for sale on the domain name trading web site, “www.sedo.com”. Also, the Respondents were not commonly known by the Disputed Domain Name. Therefore, the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Respondents chose to incorporate the BLABLACAR trademark as the only distinctive element of the Disputed Domain Name. The Disputed Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant’s BLABLACAR trademark. The 1st Respondent intentionally uses the Disputed Domain Name to mislead consumers for commercial gain by displaying a parking page with pay-per-click links since its registration by the 1st Respondent. It is also indicated as being for sale on the domain name trading web site “www.sedo.com”. Thus, the Disputed Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is the owner of the BLABLACAR trademark. These bases indicate that the Respondents have registered and used the Disputed Domain Name in bad faith.

B. Respondent

The 1st Respondent did not reply to the Complainant’s contentions.

The 2nd Respondent filed a Response in English to the Center on December 16, 2014 making the following contentions:

He just purchased the Disputed Domain Name on December 8, 2014. He knows nothing about the previous registrant’s use of the Disputed Domain Name and he should not be responsible for the previous registrant’s act. He purchased the Disputed Domain Name because he owns the trademark BLABLACAR in China and intends to create a web site in China called “Blablacar.”.

The Complainant’s BLABLACAR trademark is not world famous, and the Complainant’s BLABLACAR trademark is not well known in China.

6. Preliminary Procedural Issues

A. Identity of Respondent(s)

In this regard, it will be helpful to set out the exact time at which various events took place on December 5, 2014: (Annexes below refer to annexes attached to the Amended Complaint):

- 09:00 Greenwich Mean Time (“GMT”): submission of the Complaint regarding the Disputed Domain Name to the Center (Annex 8)

- 09:36 GMT: transfer of the Disputed Domain Name and change of ownership by the 1st Respondent (Annex 1)

- 09:52 GMT: first email to the Complainant’s representative from the 1st Respondent (Annex 9)

- 10:07 GMT: response from the Complainant’s representative to the 1st Respondent (Annex 9)

- 10:20 GMT: second email to the Complainant’s representative from the 1st Respondent (Annex 9)

- 17:44 GMT: acknowledgment of receipt of the Complaint from the Center

- 20:06 GMT: email from GoDaddy Registrar informing the Complainant’s representative that the Disputed Domain Name has been transferred

In identifying the proper Respondent(s) in these administrative proceedings, the Panel has noted the following:

(a) A copy of the Complaint was served on the 1st Respondent at around 9:00 GTM time on December 5, 2014.

(b) In less than 40 minutes, the transfer of the Disputed Domain Name to the 2nd Respondent took place at 9:36 GMT time at the same day.

(c) In less than an hour, the 1st Respondent sent the first email to the Complainant’s representative at 9:52 GMT, offering to sell the Disputed Domain Name to the Complainant.

(d) The 2nd Respondent apparently resides in the same province in China as the 1st Respondent.

(e) There has been no explanation from any of the Respondents at all and this Panel finds it inconceivable that there can be any bona fide purchaser suddenly available to purchase the Disputed Domain Name from the 1st Respondent within 40 minutes after the Complaint was filed.

(f) The name or identification shown on the email sent from the 1st Respondent to the Complainant’s representative on December 5, 2014 is called “Yesterday once more”, which is identical to the identification shown on the email the 2nd Respondent used to file his Response with the Center. While the 2nd Respondent’s email address is different from the 1st Respondent’s email address as shown in the WhoIs database relevant to the Disputed Domain Name, upon reading Annexes 1 and 9 to the Amended Complaint and email Response sent from the 2nd Respondent to the Center, one cannot help but to find that it is more likely than not that the two Respondents are related.

(g) The 1st Respondent sent two emails to the Complainant’s representative at 9:52 and 10:20 GMT time on December 5, 2014, which is after the time he transferred the Disputed Domain Name to the 2nd Respondent and the new Registrar. In the Panel’s assessment, the wording of the e-mails shown in Annex 9 suggests that the sender has ownership or otherwise in control of the Disputed Domain Name which enabled him to transfer it to the Complainant upon its acceptance of the offer. Such person must either be the 1st Respondent or is its nominee with full knowledge of the relevant facts. It also supports the conclusion that the 2nd Respondent must have knowledge of the Complainant.

Both Respondents give the impression of acting in concert within a short time to achieve a particular purpose, in this case to transfer the Disputed Domain Name (a) out of the ownership of the 1st Respondent to the 2nd Respondent who was conveniently available and (b) from Godaddy Registrar to the current Registrar, to facilitate the evasion and obstruction of the current administrative proceedings.

The Panel concludes that the 1st Respondent remains the true and beneficial owner of the Disputed Domain Name and remains a proper party to these proceedings. The 2nd Respondent, being the nominee of the 1st Respondent or perhaps even the 1st Respondent himself in a different name currently holding the Disputed Domain Name is also properly included as a party to these proceedings. The Center has properly verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.

B. Transfer of the Disputed Domain Name to a New Holder and Registrar

Paragraph 8 of the Policy prohibits, inter alia, under paragraph (a) transfer of the domain name registration to another holder and under paragraph (b) transfer of the disputed domain name registration to another registrar during a pending administrative proceeding.

Rule 3(a) of the Rules provides that “any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any provider[…].” Rule 4(c) of the Rules provides that the date of commencement of the administrative proceeding shall be the date on which the provider completes its responsibilities under paragraph 2(a) in connection with forwarding the Complaint to the Respondents. The date of commencement governs various time lines, which is calculated from the date of commencement such as the time for filing a response under Rule 5(a) of the Rules.

There is no definition of what is meant by “pending” in the Policy and the Rules. Many past Panelists are of the view that the administrative proceedings begin to be “pending” from the point of initiation as described under Rule 3(a) and is certainly kept pending at the time of commencement of proceedings as described under Rule 4(c) and remain so until the conclusion of the proceedings. There are previous UDRP decisions in support of this interpretation. See Patti LuPone v. XC2/Moniker Online Services LLC, WIPO Case No. D2008-0450; LPG SYSTEMS v. Jerry / Mr. Jeff Yan, WIPO Case No. D2010-0387; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683.

The transfer of the Disputed Domain Name after the submission of the Complaint by the Complainant to the Center on December 5, 2014 is found to be in violation of both paragraphs 8(a) and 8(b) of the Policy. This conduct raises concern of cyberflight. Canwest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/SA c/o FP, WIPO Case No. D2008-0687.

On assessing the facts put forward by the Complainant, all of which have been supported by documentary evidence, the Panel is convinced that bad faith has been established due to cyberflight in the present case, for the reasons discussed below and as the transfer to another party was made after having received a copy of the Complaint. See A.H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336. For purposes of discussion of the Policy elements, the Panel shall therefore treat both the former registrant and the present registrant as Respondents in this proceeding.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

The Complainant has established that it is the owner of the BLABLACAR trademark.

The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Disputed Domain Name incorporates the BLABLACAR trademark in its entirety. The only other element incorporated to the Disputed Domain Name is a ccTLD “.co”, and it cannot distinguish the Disputed Domain Name from the Complainant’s BLABLACAR trademark in the instant case.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the conditions of paragraph 4(a)(i) of the Policy have been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […].”

The Complainant has established that it is the owner of the BLABLACAR trademark and claims that the Respondents are not connected with nor affiliated to the Complainant nor are the Respondents authorized to use the BLABLACAR trademark to register the Disputed Domain Name or any other variations. The Panel finds that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondents to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

According to the record in the WhoIs database, the names of the 1st Respondent and the 2nd Respondent are shi lei and DONGYUNQIU, respectively. These names have no apparent connection to the BLABLACAR trademark. There is no evidence indicating that the Respondents are commonly known by the Disputed Domain Name or the name of “Blablacar”. The Complainant also provides a screenshot from the web site to which the Disputed Domain Name resolves, which shows that the 1st Respondent used the disputed website as a parking web page with pay-per-click links that contain the Complainant’s BLABLACAR trademark. Therefore, the 1st Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Such links are based on the Complainant’s trademark value. UDRP panels have tended to consider such practices as unfair use resulting in misleading diversion (WIPO Overview 2.0, paragraph 2.6).

Although the 2nd Respondent claims that he has the BLABLACAR trademark in China, the information he submitted in the Response was just the printout of the trademark application from the Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China web site. The trademark application was filed on July 8, 2014 and the applicant shown on the printout of the web site is “Zheng Zhou Dan Dian Technology Software Limited”, which is not the name of the 2nd Respondent. The address of the applicant for the BLABLACAR trademark in China is also different from the 2nd Respondent’s address indicated in his Response. The 2nd Respondent did not submit any evidence proving that he is the actual applicant for the application for the BLABLACAR trademark in China.

In addition, the 2nd Respondent did not submit any evidence showing that he has been commonly known by the Disputed Domain Name, even though he has not acquired the trademark rights for the BLABLACAR trademark in China. Although the 2nd Respondent claims that he bought the Disputed Domain Name because he has the BLABLACAR trademark in China and he intends to create a web site in China called “Blablacar”, he did not submit any evidence establishing that the Disputed Domain Name is used or in preparation to use in connection with a bona fide offering of goods or services or for noncommercial or fair use.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The Complainant’s BLABLACAR trademark has been registered in European Union prior to the registration of the Disputed Domain Name. The Complainant also uses domain names like <blablacar.com>, <blablacar.net>, <blablacar.es> or <blablacar.fr>. The Respondents chose the BLABLACAR trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence was submitted that suggests that the 1st Respondent selected BLABLACAR trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. The 1st Respondent’s offer to sell the Disputed Domain Name publicly on “www.sedo.com” and his later offer to sell it to the Complainant further suggest in the circumstances of this case that the registration and use of the Disputed Domain Name was in bad faith.

The transfer of the Disputed Domain Name after the submission of the Complaint by the Complainant to the Center on December 5, 2014 is found to be in violation of both paragraphs 8(a) and 8(b) of the Policy. This conduct constitutes cyberflight. UDRP panels have ruled that cyberflight is indicative of bad faith registration and use under paragraph 4(b). (See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

The 1st Respondent sent two emails to the Complainant’s representative at 9:52 and 10:20 GMT on December 5, 2014, which is after the time he transferred the Disputed Domain Name to the 2nd Respondent. The wording of the e-mails shown in Annex 9 attached to the Amended Complaint suggests that the sender has ownership of or otherwise was in control of the Disputed Domain Name, which enabled him to transfer it to the Complainant upon its acceptance of the offer. As indicated in point 6A above, such a person must either be the 1st Respondent or his nominee with full knowledge of the relevant facts. It also supports the conclusion that the 2nd Respondent must have knowledge of the Complainant and it is more likely than not that the 2nd Respondent knew of the Complainant’s BLABLACAR trademark when registering the Disputed Domain Name. Such intentional registration shows the bad faith of the 2nd Respondent. The Panel finds that the Disputed Domain Name has been registered in bad faith.

By using the Disputed Domain Name at one point for pay-per-click advertisement, the 1st Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark. Such conduct has been found to signal bad faith in other cases(Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).

As already indicated above, the transfer of the Disputed Domain Name to a new domain name holder after obtaining knowledge of the Complaint is apparently an act of cyberflight. In line with prior UDRP panels, the Panel is of the opinion that such cyberflight indicates bad faith registration and use under paragraph 4(b) of the Policy (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

The Panel also notes that the 2nd Respondent provided incorrect contact details to the Registrar when registering the Disputed Domain Name, as is shown by the fact that the delivery of the Written Notice of the Complaint to the 2nd Respondent by courier was not possible due to the incorrect Respondent’s address and phone number. The Panel finds that this constitutes further evidence of bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) 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 <blablacar.co> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: January 29, 2015