WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alibaba Group Holding Limited v. Bahodurov Muzaffar
Case No. DTJ2021-0001
1. The Parties
The Complainant is Alibaba Group Holding Limited, Cayman Islands, United Kingdom, represented by ELLALAN, Hong-Kong China.
The Respondent is Bahodurov Muzaffar, Tajikistan.
2. The Domain Name and Registrar
The disputed domain name <aliexpress.tj> (the “Domain Name”) is registered with .TJ - ISM.TJ (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 9, 2021, 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 Registrar confirmed that the language of the Registration Agreement for the Domain Name is Russian. On January 18, 2022, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 19, 2022. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on January 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2022.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 14, 2022. 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
Alibaba Group Holding Limited, the Complainant in the present proceedings, is a company conducting business in a field of e-commerce, online payment services, cloud computing and other online services. It operates the online platform AliExpress – the retail marketplace enabling consumers across the globe to buy directly from manufacturers and distributors in China and around the world.
The Complainant is the owner of numerous ALIEXPRESS trademark registrations, including:
- the European Union Registration ALIEXPRESS No. 008508566 registered on March 8, 2010;
- the Tajik Registration ALIEXPRESS No. 13872 registered on April 1, 2020;
- the United Kingdom Registration ALIEXPRESS No. UK00908508566 registered on March 8, 2010.
The Complainant is also the owner of numerous domain names incorporating its ALIEXPRESS trademark, including <aliexpress.com>.
The Respondent registered the Domain Name on September 21, 2015.
In accordance with the screenshots attached to the Complaint, at the time of drafting the Complaint, the Domain Names resolved to an inactive website. As of the date of this Decision, the Domain Name also resolves to an inactive website.
5. Parties’ Contentions
The Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is identical to the ALIEXPRESS trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Language of Proceedings
The languages of the Registration Agreement for the Domain Name are Russian and Tajik. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
The Complainant has submitted a request that the language of the proceedings be English. Alternatively, the Complainant has requested to allow each party to submit pleadings in a language with which it is familiar (i.e. English for the Complainant).
The Complainant contends that it does not communicate in Russian. It only uses Chinese and English in its day-to-day business. The Complainant notes that translation of the Complaint would unfairly disadvantage and burden the Complainant, as well as would delay the proceedings. Moreover, the Complainant alleges that English is one of the most commonly used languages globally, so choosing English for this proceedings is fair for both parties.
The Panel accepts that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian or Tajik. Moreover, the Panel notes that the Respondent did not comment on the language of the proceedings.
Thus, taking these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds numerous valid ALIEXPRESS trademark registrations, which precede the registration of the Domain Name.
The Domain Name incorporates the Complainant’s ALIEXPRESS trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
The country-code Top-level Domain “.tj” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1, WIPO Overview 3.0.
Given the above, the Panel finds that the Domain Name is identical to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that there are the Complainant’s ALIEXPRESS trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the ALIEXPRESS trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
Furthermore, the Panel finds that the nature of the Domain Name suggests an affiliation with the Complainant and its ALIEXPRESS trademark, as the Domain Name is identical to the Complainant’s trademark. See section 2.5, WIPO Overview 3.0.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1, WIPO Overview 3.0.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the ALIEXPRESS trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. It has been proven to the Panel’s satisfaction that the Complainant’s ALIEXPRESS trademark is well-known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of products the trademarks identify. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s trademark.
Moreover, the Domain Names resolves to an inactive website. In the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of the Domain Names supports the finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy.
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 <aliexpress.tj> be transferred to the Complainant.
Date: March 17, 2022