WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roofoods Limited v. Wang Liqun
Case No. D2017-1761
1. The Parties
Complainant is Roofoods Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.
Respondent is Wang Liqun of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name is <deliveroo.asia> which is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an Amended Complaint on September 20, 2017.
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 Respondent of the Complaint, and the proceedings commenced on September 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 17, 2017.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on October 27, 2017. This Panel finds that it was properly constituted. This 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
Complainant has rights over the DELIVEROO trademark for which it holds several trademark registrations, such as registration No. UK00003150368 with the Intellectual Property Office of the United Kingdom, registered on May 13, 2016; No. EU015750763 with the European Union Intellectual Property Office, registered on January 10, 2017; No. 1769508 with the Trade Mark Office of Australia, registered on May 9, 2016; and No. 303874069 with the Intellectual Property Department of the Hong Kong Special Administrative Region, of June 23, 2017; all of them registered in classes 9, 35, 39 and 43.
Complainant is the registrant of the following domain names: <deliveroo.co.uk> created on June 19, 2012, and <deliveroo.com.sg> created on August 28, 2015.
The disputed domain name was created on February 28, 2017. The disputed domain name resolves to a generic parking page that shows sponsored links.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows.
Complainant, which trades as “Deliveroo”, is a technology-based business that offers, inter alia, food delivery, restaurant services and business information services. It is famous in respect of its business activities that allow customers to order food for delivery from nearby restaurants.
Complainant’s business commenced on a small scale in the borough of Chelsea in the United Kingdom in 2012 and was launched London-wide in early 2013, expanding quickly throughout the United Kingdom and on an international scale, including into Asia Pacific and the Middle East by late 2015. Globally, Complainant works with over 20,000 restaurants and in excess of 30,000 riders to provide its food delivery experience in over 140 cities. Complainant has a presence in at least 13 countries: Australia, Belgium, France, Germany, Hong Kong, China, Ireland, Italy, Netherlands, Singapore, Spain, United Kingdom and the United Arab Emirates.
Complainant’s trademark portfolio includes 33 filed marks which contain the term “deliveroo”, of which 19 marks are for DELIVEROO solus. “Deliveroo” is a made up word, making it all the more distinctive.
Complainant set up its “@Deliveroo” Twitter account in October 2012 and currently has in excess of 46,000 followers. Its Facebook page (“https://www.facebook.com/Deliveroo/”) has over 515,000 followers, and a similar number of likes.
Complainant holds (directly or through subsidiaries) several domain names, such as <deliveroo.ae>, <deliveroo.com.au>, <deliveroo.fr> and <deliveroo.nl>. Complainant’s <deliveroo.co.uk> is ranked 740th most popular website in the United Kingdom with some 3.19 million visitors in July 2017, while <deliveroo.hk> is ranked 1,252nd most popular website in Hong Kong with almost 280,000 visitors in July 2017 and <deliveroo.com.sg> is ranked 504th most popular website in Singapore with almost 460,000 visitors in July 2017.
The distinctive element of the disputed domain name is identical to Complainant’s DELIVEROO trademark as it consists wholly of such trademark in its entirety. The top level domain name is viewed as a standard registration requirement and therefore it does not generally need to be considered when determining identity or confusing similarity.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not authorized, licensed or otherwise permitted to use Complainant’s trademark, and Respondent’s use and registration of the disputed domain name was not authorized by Complainant. Respondent is entirely unknown to Complainant and has never been commonly known by the disputed domain name.
It seems that some of the contact details listed for Respondent in the WhoIs are not genuine since, according to Google maps, Respondent’s street address appears to be the location of a 24-hour self-service ATM branch of a bank, the street number does not correspond to an address or the relevant road, and moreover belongs to a different postal code area.
Before any notice to Respondent of the dispute, there has been no evidence of 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, and there is no conceivable legitimate use to which the disputed domain name could be put by Respondent.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and intends to use it for commercial gain, misleadingly to divert consumers or to tarnish Complainant’s trademark. The disputed domain name resolves to a standard parking page which states “The owner of deliveroo.asia is offering it for sale for an asking price of 7999 USD!”. Such page contains pay-per-click (“PPC”) links: clicking on the “Indian Food Restaurant Menu” link directs users to a sponsored listing which then sends interested parties onto a direct competitor of Complainant. The use of a domain name to post parking and landing pages or PPC links does not of itself constitute a legitimate or fair use.
The disputed domain name has been registered and is being used in bad faith.
At the time Respondent registered the disputed domain name, Respondent must have known of Complainant and its trademarks because Complainant and its business were known across the world, including in the United Kingdom, Singapore and Hong Kong, China. A simple trademark search at the time of the registration of the disputed domain name would have revealed Complainant’s trademark registrations, and a simple search online using a search engine would also have revealed Complainant’s presence, both in the United Kingdom and in Asia.
Internet searches in respect of Respondent, including a reverse WhoIs search in respect of Respondent’s email address, revealed that such email address is associated with a portfolio of 651 domain names. At a cursory review, examples are easily found of registrations among those 651 domain names either pre-empting the use by a third party, or typosquatting. Many of Respondent’s domain names incorporate other third party brands. There is no conceivable legitimate interest in Respondent registering well in excess of 600 domain names, many of which are identical or confusingly similar to well-known trade marks of others.
Respondent’s name is identical to that of respondents listed in at least thirteen other domain name dispute proceedings, all of which were decided in favour of the complainants. It seems that Respondent is the same as those in the previously decided cases. The decision in All Saints Retail Ltd. v. Wang Liqun, WIPO Case No. DCO2015-0041, evidences that Respondent’s registration of the disputed domain name forms part of a pattern of abusive registrations.
The effect of the registration of the disputed domain name is to affect the business of Complainant by attracting visitors looking for information about Complainant or its marks and creating difficulties for persons searching online. Respondent registered and used the disputed domain name with the intention of creating confusion to the unfair detriment of Complainant, its customers and the general public.
The disputed domain name resolves to a standard parking page with PPC links, some of which direct users to Complainant’s competitors. Given that DELIVEROO is a coined term and solely associated with Complainant and its business, there is no plausible future active use of the disputed domain name by Respondent that would be legitimate and not infringe upon Complainant’s well-known trademarks. By using the disputed domain name, Respondent intentionally attempted to attract Internet users to Respondent’s website or other online location for commercial gain, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s web site or location.
Respondent’s current use of the disputed domain name constitutes an abuse of Complainant’s rights in DELIVEROO. Respondent has registered the disputed domain name in order to capitalize on Complainant’s success and the publicity surrounding the DELIVEROO brand, by attempting to monetise the traffic coming through to the disputed domain name via the PPC links or to monetise it by attempting to sell it for an amount far exceeding the cost of registration. The disputed domain name is currently listed for sale at USD 7999. Given that the cost of registration of a domain name utilising the generic Top-Level Domain (“gTLD”) “.asia” can be completed, at market rate, for less than USD 50, it is clear that Respondent’s registration of the disputed domain name was primarily for the purpose of selling it for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the DELIVEROO trademark.
The disputed domain name consists only of such trademark in its entirety and the gTLD “.asia”. Since the addition of a gTLD suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark (see, for instance, Merck KGaA v. Virginia Cross, WIPO Case No. D2013-1294). Based on the above, it is clear that the disputed domain name is identical to Complainant’s trademark.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The evidence in the file shows that the DELIVEROO trademark has received media coverage and become well-known. Complainant asserts that it has never authorized Respondent to use or register the DELIVEROO trademark in a domain name or in any other manner, and that Respondent has never been known by the disputed domain name.
Respondent is not using the website associated to the disputed domain name to offer its own products or services, but rather to show sponsored links some of which redirect Internet users to Complainant’s competitors (printouts of the website associated to the disputed domain name attached as exhibits to the Complaint). As established in prior UDRP cases, such use is not a bona fide offering of products or services (see, for instance, Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.1 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration Complainant’s international presence and media coverage, that its DELIVEROO trademark has become well-known, and that Complainant’s trademark is composed of a coined term that confers to it certain distinctiveness, this Panel is of the view that Respondent must have been aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain name.
The use of a domain name for a parking web site which may generate PPC revenue is not, per se, evidence of bad faith. However, this Panel considers that the use of the disputed domain name, which incorporates Complainant’s trademark only, for a website that is used to redirect Internet users to Complainant’s competitors, constitutes an improper use of Complainant’s trademark and is evidence of Respondent’s bad faith.2 The fact that the web site associated to the disputed domain name appears to be a generic parking page does not relieve Respondent from its contents.3
Additionally, there are other factors in this case that, altogether, also lead for a finding of bad faith in the registration and use of the disputed domain name: (i) Respondent is using Complainant’s trademark at the disputed domain name without Complainant’s authorization; (ii) the sale announcement of the disputed domain name for USD 7999 shown in the web site associated to it; (iii) several prior UDRP decisions against Respondent; and (iv) Respondent’s failure to appear at this proceeding. Further, Respondent’s contact details associated to the registration of over 600 domain names some of which, on their face, might also infringe third parties’ rights (for instance, <audemarspiguet.lu>, <bensherman.club>, <delonghi.asia>, <foodpanda.group>, <lkbennett.tw>).
Thus the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate for its identity with, and with the intention to benefit from the reputation and goodwill of Complainant’s trademark, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name <deliveroo.asia> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: November 10, 2017
1 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact”. See also section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031: “in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith”. In Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250, the panel established: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”.
3 The printout of such web site attached to the Complaint shows the legend “This webpage was generated by the domain name owner using Sedo Domain Parking”. See section 3.5 of the WIPO Overview 3.0.