Reverse Domain Name Hijacking Found by WIPO Panel

ADMINISTRATIVE PANEL DECISION Crypto World Journal Inc v. Xiamen Privacy Protection Service Co., Ltd. / Lin Xiao Feng Case No. D2018-1207
  1. The Parties
The Complainant is Crypto World Journal Inc of Dover, Delaware, United States of America (“United States”), represented by Abecassis Foad, P.A., United States. The Respondent is Xiamen Privacy Protection Service Co., Ltd. of Xiamen, Fujian, China / Lin Xiao Feng of Xiamen, Fujian, China, represented by Muscovitch Law P.C., Canada.
  1. The Domain Name and Registrar
The disputed domain name <cwj.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
  1. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2018.  On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.  On June 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.  The Center sent an email communication to the Complainant on June 5, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.  The Complainant filed an amended Complaint on June 6, 2018. On June 5, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding.  The Complainant requested that English be the language of the proceeding on June 6, 2018.  The Respondent didn’t comment on the language of the proceeding by the specified due date. 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 the Respondent in English and Chinese of the Complaint, and the proceeding commenced on June 13, 2018.  In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018.  The Respondent requested to extend the response due date on June 28, 2018.  The response due date was therefore extended to July 7, 2018.  The Response was filed with the Center in English on July 6, 2018.  The Respondent also sent two email communications to the Center on June 19 and July 9, 2018 regarding the proceeding. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 17, 2018.  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.
  1. Factual Background
  2. Complainant
The Complainant is a company incorporated in the State of Delaware in the United States. The Complainant is the applicant for registration of the trade mark CWJ (the “Trade Mark”) in the United States under application No. 87904759, filed on May 2, 2018, claiming a date of first use in commerce of May 24, 2017. The Complainant has used the Trade Mark to sell online video content promoting education, news and networking in relation to blockchain technology.
  1. Respondent
The Respondent is an individual resident in China and is a speculator and investor in generic and descriptive domain names.
  1. The Disputed Domain Name
The disputed domain name was registered on March 14, 1999 and was acquired by the Respondent on December 2, 2016.
  1. Passive use of the Disputed Domain Name
The disputed domain name has not been used.
  1. Parties’ Contentions
  2. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark;  the Respondent has no rights or legitimate interests in respect of the disputed domain name;  and, the disputed domain name was registered and is being used in bad faith.
  1. Respondent
The Respondent contends that the Respondent has rights and legitimate interests in respect of the disputed domain name and that the disputed domain name was not registered and has not been used in bad faith.  The Respondent also requests that the Panel make a finding of reverse domain name hijacking.
  1. 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. The Complainant requested that the language of the proceeding be English. The Respondent did not file any submissions regarding the language of the proceeding, but elected to file the Response in English. In light of the above, the Panel considers the Respondent has by its conduct agreed that the language of the proceeding shall be English. The Panel therefore determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
  1. Identical or Confusingly Similar
The Respondent correctly points out that a trade mark application does not, by itself, establish trade mark rights within the meaning of paragraph 4(a)(i) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4). The Complainant asserts common law rights in the Trade Mark and has filed with the amended Complaint a screenshot of a YouTube page dated December 4, 2017 for one of the Complainant’s online videos, with 89,542 views;  a screenshot of the Complainant’s Facebook page dated May 25, 2018, with 129,562 likes;  and evidence of a relatively small amount of USD revenue derived from the Complainant’s use of the Trade Mark. The Respondent concedes that the Complainant has arguably met the threshold for proving common law rights for the purposes of the first limb under paragraph 4(a) of the Policy. The Panel therefore finds that, in all the circumstances, the Complainant has submitted sufficient evidence to establish rights in the Trade Mark acquired through use. The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7).  Excluding the generic Top-Level Domain “.com”, the disputed domain name is identical to the Trade Mark. The fact that the disputed domain name was registered before the Complainant acquired common law rights in the Trade Mark is immaterial for the purpose of the first element under paragraph 4(a) of the Policy (see WIPO Overview 3.0, section 1.1.3). The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
  1. 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 disputed domain name: (i)       before any notice to the respondent of the dispute, the 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;  or (ii)      the respondent (as an individual, business, or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark.  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 Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, as it has not been used since its registration in 1999.  The Complainant contends that it is very probable that an Internet user might be misled into thinking that the disputed domain name would be related to or even operated by the Complainant, if there were ever an operational site present. The Respondent submits that the Respondent is a legitimate speculator and investor in generic and descriptive domain names, including three-letter domain names.  The Respondent has filed evidence of the large number of persons worldwide apparently making use of the three-letter acronym “CWJ” comprised in the disputed domain name, including Google search results for “CWJ” with 3,250,000 results relating to third parties, and a large number of company name and trade mark registrations in various jurisdictions worldwide comprising “CWJ”.  The Panel notes that this does not particularly aid the Respondent insofar as those third party uses would rather vest rights in the respective parties. In light of the substantial evidence of third party use of the term “CWJ”, the Respondent contends that the Complainant cannot assert monopoly rights in the Trade Mark for the purposes of this proceeding.  The Respondent also submits that numerous panels have held over the years that the registration of two, three and four letter domain names by speculators can constitute a legitimate interest for the purpose of the second element under paragraph 4(a) of the Policy. The Complainant’s own case is that the Respondent has registered 547 domain names, many of which have apparently not been used. The Respondent submits that the Respondent purchased the disputed domain name from a prior registrant for about USD 30,300 (CNY 200,000) on December 2, 2016;  and that the Respondent’s interest in the disputed domain name was as an investment, since three-letter domain names are inherently rare and valuable.  The Respondent has submitted evidence of other three-letter domain names being offered for substantial sums of money far in excess of the amount paid by the Respondent for the disputed domain name. The Panel notes that, at the time of purchase of the disputed domain name by the Respondent, the Complainant was not in existence (having not been incorporated until February 1, 2018). The Panel finds that the Respondent has produced sufficient evidence to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
  1. Registered and Used in Bad Faith
The Complainant’s submissions regarding bad faith are as follows: “The very nature of Respondent’s registration evidences bad faith.  Respondent has owned the Domain Name since 1999 and has never once had a functional page running.  This leads to the conclusion that the Respondent registered the name to sell it one day to a company like that of the Complainant who has a real and legitimate use for the name, or just to prevent the owner of a trade mark or service mark from reflecting the mark in a corresponding domain name.” Where a domain name has been registered before a complainant has acquired trade mark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith (see WIPO Overview 3.0, sections 1.1.3 and 3.8).  This is not such an exceptional case. The Respondent has confirmed that (contrary to the submissions in the Complaint), the Respondent is not the original registrant of the disputed domain name.  Nonetheless, the Respondent purchased the disputed domain name well before (1) the date of incorporation of the Complainant;  and (2) the Complainant’s asserted date of first use of the Trade Mark.  In such circumstances, and in light of the evidence filed by both parties in this proceeding, there is no basis for a finding that the Respondent targeted the Complainant’s then non-existent Trade Mark at the time it purchased the disputed domain name. For all the foregoing reasons, the Panel concludes that the disputed domain name has not been registered in bad faith.
  1. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking (“RDNH”) is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” (see WIPO Overview 3.0, section 4.16). Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. The Panel considers that, in the present proceeding, the following factors are supportive of a finding of reverse domain name hijacking against the Complainant: (i)       The disputed domain name was registered by the Respondent before the Complainant obtained relevant rights in the Trade Mark; (ii)      The Complainant’s representatives have unreasonably ignored established UDRP panel positions set out in WIPO Overview 3.0. The Respondent submits that the Complaint failed to bring to the Panel’s attention the Complainant’s approach made to the Respondent before the commencement of this proceeding. On April 19, 2018, the owner of the Complainant sent the following email to the Respondent, using the email address provided by the Registrar in the WhoIs search results for the disputed domain name: “Hello, I am interested in purchasing cwj.com If you are open to a sale please share the price you have in mind” The Respondent submits that the Respondent chose not reply to this purchase solicitation from the Complainant as the Respondent was not interested in selling the disputed domain name at that time. Paragraph 3(b)(xiii) of the Rules requires complainants or their authorised representatives to certify in the complaint as follows: “Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Whilst, under the UDRP framework, panels tend to view settlement discussions as admissible (see WIPO Overview 3.0, section 3.10), this Panel considers there may be circumstances which would support a complainant’s decision not to disclose prior settlement negotiations made on a genuine “without prejudice” basis, and would therefore caution against a blanket rule requiring complainants to disclose all negotiations made with potential respondents prior to the filing of UDRP proceedings. However, in the present proceeding, the Panel notes that the Complainant made the positive (and false) averment, in Section IV. of the Complaint (“Language of Proceedings”), that “There are no communications between the Complainant and the Respondent.” On June 6, 2018, after the filing of the Complaint, the Complainant’s representative sent the following email to the Respondent, using the Respondent’s email address disclosed by the Registrar following the commencement of this proceeding: “Hello Mr Lin: I hope this email finds you well. I represent Cryto World Journal, the complainant in the WIPO dispute over the WWW.CWJ.COM domain name. I know that my client tried to reach out to you previously, but we did not have your name or email address, only the information provided by the registrar. Would you be willing to settle this outside of WIPO? I know my client is amenable to a speedy solution and we would appreciate if you were willing to come to a reasonable understanding. Please advise.” In light of the above, the Panel agrees with the Respondent that the Complainant has filed the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, and where the legally represented Complainant filed the Complaint without having any plausible basis for establishing, in particular, bad faith registration and use. In all the circumstances, the Panel makes a finding of reverse domain name hijacking against the Complainant.
  1. Decision
For the foregoing reasons, the Complaint is denied. Sebastian M.W. Hughes Sole Panelist Dated:  July 30, 2018