PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant submits that each of the factors in paragraph 4 (a) of the Policy are established as follows:
a. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
While not identical. the Disputed Domain Names are confusingly similar to Complainant’s BAIDU Marks.
It is well established that the test of identity or confusing similarity will not be related to the addition of the gTLD suffix “.com”. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”) at 1.11.1. In this complaint, therefore only <baidufilm> and <bocaibaidu> are to be tested.
“Baidu” is the most important trademark owned by the Complainant, and it is well-known globally. It is beyond dispute that the trade marks were registered earlier than the registration date of the Disputed Domain Names (10th September 2019 and 19th December 2018). See the registration dates.
The Disputed Domain Names are combinations of “baidu” and “film” and “bocai” and “baidu” respectively. It must therefore be examined whether the addition of “film” and “bocai” has an impact on whether the Disputed Domain Names are confusingly similar to the Baidu trade mark. In this regard, it has been consistently held by previous panels that where the relevant mark is recognisable within the Disputed Domain Name, the addition of other terms (including descriptive terms) does not prevent a finding of confusing similarity. See the WIPO Overview 3.0 at 1.8. The word “film” is undoubtedly descriptive, and it must therefore be concluded that its incorporation does not prevent “baidufilm” from being found to be confusingly similar to the Complainant’s trademark. “Bocai” can in its phonetic form be interpreted to mean both “spinach” and “gambling” in Chinese. It is thus also a descriptive term, the addition of which does not prevent a finding of confusing similarity of <bocaibaidu.com> with the Baidu trademark, which remains recognisable.
For the foregoing reasons the Disputed Domain Names are confusingly similar to the Complainant’s trade mark “baidu” in accordance with Paragraph 4(a)(i) of the Policy.
b. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2)).
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
As mention above, the Complainant has the exclusive right to the trade mark “baidu”, rights established prior to the Respondent’s registration of the Disputed Domain Names.
The Respondent is not a licensee of the Complainant, nor has he been otherwise granted permission by the Complainant to make any use of the Baidu trade marks whatsoever.
Trademark registration searches on www.wsjs.saic.gov.cn, the website of the Trademark Office of National Intellectual Property Administration, PRC, showed that the Respondent has neither registered nor applied for any trademark identical to “bocaibaidu”, “bocaifilm”, “baidu” or including the term “baidu”.
Further, the Respondent does not make use of the Disputed Domain Names to provide any goods or services with “baidufilm” or “bocaibaidu” as their business name, and he is not well-known amongst consumers by the Disputed Domain Names but by their own name.
The Disputed Domain Names both currently direct the user to a “502 Bad Gateway” error pages. The Respondent cannot claim that this constitutes a bona fide offering of goods or services.
Further, it should be noted that the very fact the Respondent is not making use of the domains for any discernible purpose is a strong evidence that they lack rights and legitimate interests in the disputed domain names. See e.g. WIPO Case No. D2017-0246 docmartens.xyz.
Finally, given the renown and popularity of the Complainant's “baidu” trademark worldwide, it is simply not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Names by the Respondent that would not create a false association with the Complainant, thereby resulting in a misleading diversion or taking unfair advantage of the Complainant's rights.
Therefore, the Respondent has no rights or legitimate interests in the Disputed Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
c. The domain name(s) was/were registered and is/are being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).
The Disputed Domain Names were both registered during or after the year 2018 i.e. significantly later than the Complainant’s registrations of the trade mark “baidu”, and later than the time the Complainant became a famous brand and trade name in China and elsewhere because of its well-known business.
Given the Complainant's renown and goodwill in Chinese society, the “Baidu” name is inseparable from the Complainant. In 2018, it would be inconceivable for the Respondent, who is based in China, to argue that he did not have knowledge of the Complainant and its trademark “Baidu”, or that he randomly selected the terms at the time of registration of the Disputed Domain Names.
The Complainant therefore submits that the Respondent had the Complainant in mind and deliberately registered the Disputed Domain Names containing the trademark “Baidu”.
The Disputed Domain Names do not resolve to any active websites and generates an error 502 page. This error is a general indication that there is something wrong with a website’s server communication. The presence of this error is an indication that the domain is being used for concealed, or even illegitimate, activity that may be available to some internet users and unavailable to others.
The lack of content can be interpreted as passive holding, demonstrating that the Respondent has no serious intent of using the Disputed Domain Names for a legitimate offer of goods or for a legitimate non-commercial use. This type of use must be seen as being conducted in bad faith under the passive holding doctrine. See WIPO Overview 3.0 at 3.3.
Further, the use of the Disputed Domain Names to display an error page may lead to consumer confusion in that consumers may be led into thinking that the Complainant is in fact linked to the Disputed Domain Names but neglects its online communications, thereby disrupting the Complainant’s online brand image.
Lastly, it is also clear that the Respondent has engaged in a pattern of conduct preventing the Complainant from reflecting the Baidu mark in domain names. Previous panels deciding under the Policy have held that establishing a pattern of bad faith conduct requires as few as two instances of abusive domain name registrations, registered on two different occasions. See the WIPO Overview 3.0 at 3.1.2. The Disputed Domain Names were registered on 10 September 2019 and 19 December 2018 respectively, thereby fulfilling the requirements of a bad faith pattern targeting the Complainant’s marks. See the registration dates.
In sum, the Complainant asserts that there can be no doubt of bad faith in the registration and use of the Disputed Domain Names in accordance with paragraphs 4(a)(iii), 4(b) of the Policy.
RESPONDENT:
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
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