WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tom Hua and Hitech United Australia Pty Ltd. v. Zhengyi
Case No. DME2013-0002
1. The Parties
The Complainants are Tom Hua and Hitech United Australia Pty Ltd (‘Hitech’) both of Abbotsford, Victoria, Australia, represented by Markwell Intellectual Property Lawyers, Australia.
The Respondent is Zhengyi of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <tomhua.me> (‘the Domain Name’) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2013, 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, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on March 5, 2013. 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 First Complainant, Tom Hua is a well-known speaker, presenter and business coach specialising on the subject of Internet marketing and online business. Since 2000, he has presented in conferences, seminars and workshops in many different countries including, Australia, New Zealand, Canada, the United States of America, the United Kingdom of Great Britain and Northern Ireland, China, United Arab Emirates, Hong Kong, China, Ireland, Indonesia, Japan, Malaysia, Singapore, Taiwan, province of China, and Thailand. He has been featured in television news programs and newspapers. He is the director and majority shareholder of the Second Complainant, Hitech, the entity through which he conducts his business. The Complainants are also involved in providing online services such as web development, web hosting, search engine optimization, electronic publishing and domain name registration. Hitech owns Benelux Trade Mark Registration No: 930478 for TOM HUA in classes 9, 35. 41, 42 and 45 registered on December 13, 2012.
The Respondent registered the Domain Name on August 30, 2012. The website connected to the Domain Name (‘the Website’) is a criticism site.
5. Parties’ Contentions
The Complainants contend that the Domain Name is identical or confusingly similar to the TOM HUA trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainants request transfer of the Domain Name.
The Complainants also contend that it is appropriate for the Complaint to include multiple complainants in accordance with the principles set out in National Dial a Word Registry Pty Ltd and Ors v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021 and subsequent decisions on the point.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Multiple Complainants
The Panel accepts the approach in the Dial a Word case where in considering the question of consolidation of multiple complainants, the two questions to ask are as follows:
(i) Do the complainants have truly a common grievance against the respondent?
(ii) Would it be equitable and procedurally efficient to permit consolidation of complainants?
In cases such as this where the multiple Complainants have a common legal interest in the relevant right which forms the basis of the Complaint it has been accepted that consolidation is justified. Accordingly, applying the principles to the facts in this case, the Panel finds that the Complaint has been correctly filed and that the case is one where it is appropriate to include multiple complainants.
C. Identical or Confusingly Similar
In relation to personal names, the consensus view under paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required …. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
In this case, the Panel accepts that the Second Complainant has registered rights to the name TOM HUA. The consensus view in paragraph 1.4 of the WIPO Overview 2.0 states that registration of a domain name prior to the complainant’s acquisition of trade mark rights does not prevent a finding of identity or confusing similarity under the UDRP.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Name completely integrates the trade mark TOM HUA and the generic top-level domain (gTLD) “.me”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix.
The Panel finds that the Domain Name is confusingly similar to the TOM HUA trade mark of the Complainants, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
From the contents of the Website, the Respondent appears to be dissatisfied with the Complainants’ training DVDs. The Respondent disparages the First Complainant and warns others from making the same “mistake” he had. The Respondent also says on the Website that he will send all the content of the DVDs for free to anyone who provides their email addresses because they are not worth what he paid for them. There does not appear to be any offer to sell these videos and so no obvious commercial gain to the Respondent. This is not to say that there has been no violation of any intellectual property rights that the Complainants may have in the videos.
WIPO Overview 2.0 states that there are two views in relation to the use of a domain name for a criticism site and whether that generates rights and legitimate interests in relation to sites that practice genuine noncommercial criticism. The content of the Website does in the Panel’s view qualify as noncommercial criticism. The Panel is however of the view that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s trade mark or conveys an association with the trade mark. In this case, the name that is adopted is identical to the TOM HUA trade mark with nothing in the Domain Name to indicate that the Website is devoted to criticism (WIPO Overview 2.0, paragraph 2.4, view 1).
The Respondent is not commonly known by the Domain Name and he does not does not have the right to identify himself as the First Complainant. The Complainants have not licensed or authorized the Respondent to use the TOM HUA trade mark as a domain name or otherwise. In view of the above, there has been no bona fide offering of goods or services of any kind nor under the circumstances is there any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainants have made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any other basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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:
(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
The Panel is not limited by the circumstances listed in paragraph 4(b) of the Policy to determine whether the Domain Name was registered and used in bad faith and the Panel can infer bad faith from additional circumstances provided that the two requirements, i.e. that the Domain Name was registered in bad faith and that the Domain Name is used in bad faith, are proven.
With respect to the registration of the Domain Name, the Panel is satisfied that the Respondent was aware of the First Complainant when he registered the Domain Name. The Respondent claims on the Website to have been dissatisfied with the DVDs that it purchased from the First Complainant. It is clear to the Panel from the contents of the Website that the Respondent’s intention for the registration of the Domain Name was to warn others not to do business with the Complainants. The fact that the Domain Name incorporates the trade mark in its entirety is further evidence that the registration of the Domain Name was made in bad faith.
With respect to the use of the Domain Name, the main purpose of the Website is to denigrate the First Complainant. He accuses the First Complainant of being “a world class liar and cheater”. He wants to warn everyone that the products are “rubbish” and expose the First Complainant as a liar and cheat. He also says on the Website that he will send all the content of the DVD to anyone who provides their email address for free because it is not worth what was paid for them.
The Respondent’s conduct does not fit neatly into one of the examples of bad faith listed in paragraph 4(b) of the Policy: there is no evidence that he registered the Domain Name to sell them to the Complainants; there is no evidence that he “engaged in a pattern of … conduct” to prevent trade mark owners from reflecting marks in corresponding domain name; although he has registered the Domain Name “primarily for the purpose of disrupting” the First Complainant’s business, he is not a competitor and therefore does not squarely within this and, there is no indication of any attempt, intentional or otherwise, of using the site for commercial gain. Policy, paragraph 4(b)’s examples are non-exclusive. The fact that the Website warns others not to do business with the Complainants shows that the Domain Name was registered and is being used primarily for the purpose of disrupting the business of the Complainants. And the Panel finds that the conduct above can be considered additional circumstances evidencing bad faith. See The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022.
In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <tomhua.me> be transferred to the Complainant.
Date: March 20, 2013