WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
King Baby Studio, Inc. v. Zu Qinghu
Case No. D2014-0970
1. The Parties
The Complainant is King Baby Studio, Inc. of Santa Monica, California, United States of America, represented by Beitchman & Zekian, P.C., United States of America ("US").
The Respondent is Zu Qinghu of Xuzhou, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <kingbaby.com> is registered with eName Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2014, 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. On June 12, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 13, 2014, the Respondent requested that Chinese be the language of the proceeding. On June 14, 2014, the Complainant submitted its request that English be the language of the proceeding. In reply to the Center's email communications, the Complainant filed amended Complaints on June 14 and 22, 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 proceeding commenced on June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. The Respondent filed its language objection on July 1, 2014. The Response was filed with the Center on July 15, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 28, 2014. 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 company incorporated in the US and the owner of a registration in the US for the trade mark KING BABY (the "Trade Mark") with a date of first use in commerce of December 1, 2000. The Complainant is also the owner of the domain name <kingbabystudio.com> (the "Domain Name").
The Respondent is an individual located in China.
C. The Disputed Domain Name
The disputed domain name was registered on January 14, 2003.
D. The Website at the Disputed Domain Name
The disputed domain name is resolved to a domain name parking website provided by "www.sedo.com" (the "Website") which provides sponsored links to third party websites.
5. Parties' Contentions
The Complainant made the following submissions in the Complaint.
The Complainant has used the Trade Mark since December 2000 in respect of the design, manufacture and sale of jewelry and clothing. The Complainant sells its jewelry and clothing under the Trade Mark in the US and internationally, including via its website linked to the Domain Name.
The disputed domain name is identical to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant. The Respondent is not using the disputed domain name in respect of a bona fide offering of goods or services.
The disputed domain name has been registered and is being used in bad faith. The Respondent has offered the disputed domain name for sale via the Website (with a minimum offer price of USD 10,000), and also in pre-Complaint email correspondence sent to the Complainant.
The Respondent made the following submissions in the Response.
The Complainant's Domain Name comprises the words "kingbaby" plus "studio", whereas the disputed domain name is "kingbaby". There is a clear distinction between the two and no likelihood of confusion on the part of Internet users.
The Respondent registered the disputed domain name for the purpose of setting up a free website for sharing experiences of children growing up, although the Respondent has not yet been able to construct the proposed website.
The Respondent did not really intend to sell the disputed domain name and has recently altered the status of the domain name parking site for the disputed domain name to reflect this.
The Trade Mark is not a well-known trade mark in China, and the intended website of the Respondent will be used for Chinese Internet users. There is therefore no likelihood of disruption of the Complainant's business.
The disputed domain name has been registered for over 10 years. In taking action now against the Respondent's legally-held domain name, the Complainant's actions are malicious.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding, for the following reasons:
(1) The disputed domain name is an English language domain name;
(2) The Website is entirely in English;
(3) The Respondent's email to the Complainant offering to sell the disputed domain name was in English;
(4) The exhibits to the Complaint are in English;
(5) For all these reasons, English is the reasonable and appropriate language for the proceeding.
The Respondent has requested that Chinese be the language of the proceeding, for the following reasons:
(1) The language of the registration agreement is Chinese;
(2) The Respondent is Chinese and in the Respondent's daily life is not exposed to English;
(3) In accordance with paragraph 10(b) of the Rules, the Panel must provide the parties with equal treatment and ensure that each party has the opportunity to present its case;
(4) If the proceeding is conducted in English, the Respondent will not be able to understand the Complaint and will not be able to respond adequately, resulting in an unfair decision.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
Notwithstanding the Respondent's assertions that it is not proficient in English, in addition to the evidence of the Respondent's fluent English language email sent to the Complainant, the Panel notes that the Website is entirely in English. The Panel therefore finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
The Panel also notes that, notwithstanding the assertions of the Respondent, the Respondent has nonetheless been able to proceed with preparing and filing its Chinese language Response.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render its decision in English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.
The disputed domain name is identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark and holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable 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; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Panel finds the submissions of the Respondent entirely unconvincing.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which has previously offered the disputed domain name for sale, has not been authorised by the Complainant, and provides sponsored links to third party websites in order to generate pay-per-click revenue for the Respondent. In all the circumstances of this case, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:
"By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent'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 the respondent's website or location or of a product or service on the respondent's website or location."
The Panel finds that the Respondent more likely than not was aware of the Complainant and had the Trade Mark in mind when registering the disputed domain name. The evidence demonstrates that the disputed domain name has been registered and used in order to attract Internet users to the Website for commercial gain, by creating a likelihood of confusion with the Trade Mark, in order to generate pay-per-click revenue for the Respondent. This falls squarely within the example of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In addition, the disputed domain name has clearly been offered for sale both via the Website (for a minimum of USD 10,000) and in the pre-Complaint email sent to the Complainant. The sum of USD 10,000 amounts to valuable consideration in excess of the Respondent's out-of-pocket expenses directly related to the disputed domain name (see paragraph 4(b)(i) of the Policy).
The Respondent's pre-Complaint email included the following wording:
"…Since you already own kingbabystudio.com, I thought you might be interested in owning this one as well. This is over 10 years old and is comprised of premium seo keywords, which makes it very valuable. I intend to sell this, and have mailed several parties. If you are interested, please reply back at your earliest convenience…"
As with the Respondent's submissions regarding the second limb under paragraph 4(a) of the Policy, the Panel finds the Respondent's submissions regarding the Respondent's purported lack of bad faith entirely unpersuasive.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <kingbaby.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: August 11, 2014