It’s becoming common to see Chinese domain investors cross the line into cybersquatting—the act of registering domain names that infringe on trademarks.
While things have improved in China regarding trademark law, a common excuse of China’s cybersquatters is that the Western brand or mark they target isn’t known in China.
A recent case involves the domains Twitter.green and Twitter.shop with the Respondent being an Alibaba user. The case was decided on by the National Arbitration Forum; an informal response by the Respondent was this:
The apparent ignorance and abject stupidity of the Respondent’s response would not deliver any result other than a decision to transfer the domains to the Complainant, Twitter Inc.
Twitter, Inc. v. ding feng / Feng Ding
Claim Number: FA2107001956229
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is ding feng / Feng Ding (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <twitter.green> and <twitter.shop>, registered with GoDaddy.com, LLC and Alibaba Cloud Computing (Beijing) Co., Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2021; the Forum received payment on July 22, 2021.
On July 23, 2021, GoDaddy.com, LLC and Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <twitter.green> and <twitter.shop> domain names are registered with GoDaddy.com, LLC and Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the GoDaddy.com, LLC and Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 28, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 17, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected], [email protected]. Also on July 28, 2021, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in English and that the appropriate language for the instant proceeding is English. The at-issue domain names comprise English top-levels and the English name TWITTER. Respondent is using the domain names to target a US company, and furthermore the websites addressed by the at-issue domain name display English posts. Therefore, after considering the circumstance of the present case and noting that there is no objection by Respondent to Complainant’s request to move forward in English, the Panel finds that English should be the language of this proceeding.
Complainant, Twitter, Inc., is a social networking service.
Complainant has rights in the TWITTER mark based on registration of the TWITTER mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <twitter.green> and <twitter.shop> domain names are identical and/or confusingly similar to Complainant’s TWITTER mark because they incorporate the TWITTER mark in its entirety, adding only the new generic top-level domain (“gTLD”) “.green” and “.shop.”
Respondent lacks rights and legitimate interests in the <twitter.green> and <twitter.shop> domain names as it is not commonly known by the at-issue domain names and Complainant has not licensed or authorized Respondent to use the TWITTER mark. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent makes use of Complainant’s TWITTER trademark and Twitter Logo at the resolving websites in order to confuse and mislead the public as to the source or endorsement of Respondent’s website and services. Besides passing off, Respondent also uses the domain names to promote competing online blogs/forums offered by Respondent or third parties and induce violation of Complainant’s terms of service (i.e. selling TWITTER user accounts).
Respondent registered and uses the <twitter.green> and <twitter.shop> domain names in bad faith. Respondent creates the false impression that its websites are endorsed or certified by Complainant, promotes Respondent’s or third parties’ blogs/forums, and sells accounts of users of Complainant’s services, thereby violating Complainant’s terms of service. Furthermore, Respondent had actual knowledge of Complainant’s rights in the TWITTER mark based on the fame of the mark and Respondent’s use of Complainant’s logo at the resolving website, with the intention to create an association with Complainant and its services.
Although Respondent failed to submit a formal Response in this proceeding it nevertheless responded to the Complaint via email to the dispute resolution provider. Respondent contends:
If your company is willing to bid for my domain name, we can still discuss it and deliver it to the other party as soon as possible.
I can resell this domain name to Twitter in a normal transaction method, so please discuss with the other party, but this does not mean that I am a compromise or giving up. This is a way, if they are eyeing on mine Don’t let the domain name go!
I hope the judge will convey it! Thank you
Complainant has rights in the TWITTER mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the TWITTER trademark.
Respondent uses the domain names to pass itself off as Complainant and promote competing online blogs/forums.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the TWITTER mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Additionally, Respondent’s <twitter.green> and <twitter.shop>domain names each incorporate Complainant’s TWITTER mark followed by generic top-level domains appended thereto, either “green” or “shop.” Under the Policy, the differences between each of the domain names and Complainant’s trademark do nothing to distinguish either domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <twitter.green> and <twitter.shop> domain names are each confusingly similar to Complainant’s TWITTER trademark. See Bittrex, Inc. v. Privacy protection service – whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Moreover, the WHOIS information for the at-issue domain names identifies the domain names’ registrant as “ding feng / Feng Ding” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by either of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”).
Additionally, Respondent uses its <twitter.green> and <twitter.shop> domain names to pass itself off as Complainant and trade on Complainant’s mark. Respondent displays Complainant’s TWITTER trademark and Twitter Logo on the websites addressed by the at-issue domain names to confuse and mislead the public as to the source or endorsement of domain names and related websites. Respondent also uses the domain names to promote competing online blogs/forums and induces third parties to violate Complainant’s own terms of service (i.e. selling users’ account). Browsing to <twitter.green> lands one on a webpage called “Twitter Chinese Exchange Blog.” The webpage displays Complainant’s TWITTER logo multiple times and uses the TWITTER trademark as its own. Articles at <twitter.green> promote the “purchase” of Twitter accounts from <twitter.shop>. Those browsing to <twitter.shop> land on a page called “Twitter Chinese.com – Twitter” with the tagline “Twitter’s official website downloads the login entry.” There website visitors are encouraged to “Buy a Twitter.com online for twitter account.” The landing page also uses misleading article headlines, e.g., “Twitter’s official website entrance,” and promotes competing social media platforms such as Facebook and Instagram.
Respondent’s use of the at-issue domain names indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website addressed by the at-issue domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sept. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see additionally Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As discussed above regarding rights and interests, Respondent uses the at-issue confusingly similar domain names to address websites displaying Complainant’s trademark and other references to Complainant while promoting services that compete with Complainant. Respondent also promotes the sale of TWITTER accounts thereby encouraging the violation of Complainant’s terms of service. Respondent thus creates the false impression that its domain names and related websites are endorsed or certified by Complainant. Respondent’s use of its confusingly similar <twitter.green> and <twitter.shop>domain names in this manner is disruptive to Complainant’s business and show Respondent’s attempt to attract users for commercial gain. Respondent is thereby shown to have registered and used the at-issue domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Next, Respondent via its email response to the Forum brazenly offers to arrange the sale of its at-issue domain names to Complainant but further comments that it is reluctant to simply “giv[e] it up.” Respondent additionally fails to even attempt to justify its registration and use of the trademark laden domain names. Respondent’s intent on profiting from the domain names without demonstrating any rights therein is further indication that Respondent registered the domain names in bad faith.
Finally, Respondent had actual knowledge of Complainant’s rights in the TWITTER mark when it registered <twitter.green> and <twitter.shop> as domain names. Respondent’s actual knowledge is evident from Respondent’s incorporation of Complainant’s well-known trademark into each domain name, from Respondent’s display of Complainant’s trademark and other references to Complainant on the websites addressed by the domain names, and from Complainant’s use of the domain names as discussed elsewhere herein. Respondent’s registration and use of the confusingly similar domain names with knowledge of Complainant’s rights in each such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant’s mark when registering the disputed domain name); see also, Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twitter.green> and <twitter.shop> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 24, 2021
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