Decision for dispute CAC-UDRP-107031

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has provided evidence of ownership of the following trademarks:

• Chinese trademark HIGAN: ERUTHYLL n° 63510076 registered since 24 March 2022;

• Chinese trademark HIGAN: ERUTHYLL   n° 63512411registered since 14 September 2022;

• International trademark HIGAN: ERUTHYLL   n° 1678332 registered since 20 June 2022.

The Complainant, Shanghai Jiyou Information Technology Co Ltd (Shanghai Jiyou), is part of the Bilibili Group, a major video-sharing and streaming company. The Complainant has provided evidence of ownership of the registrations for the marks "HIGAN: ERUTHYLL”.

The disputed domain name was registered on 26 June 2024 and resolves to a blank page.

COMPLAINANT

The disputed domain name is confusingly similar to the Complainant’s trademarks HIGAN: ERUTHYLL. The Complainant contends that the element ERUTHYLL of the marks is entirely reproduced in the disputed domain name.

The Complainant contends that Respondent is not authorized by the Complainant in any way and that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant equally asserts that the Respondent is not commonly known by the disputed domain name and that no fair or non-commercial use of the domain name can be found. The use of a privacy protection service is, per the Complainant, an additional element showing the Respondent’s lack of legitimate interest in the disputed domain name.

As regards the bad faith of the Respondent, the Complainant submits that the Respondent necessarily had the Complainant’s trademarks in mind when registering the disputed domain name. The domain name includes part of the distinctive and well-known trademark HIGAN: ERUTHYLL. It is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant's trademark.

Furthermore, the Complainant argues that the Respondent’s passive holding of the disputed domain name constitutes bad faith use. The Complainant equally argues that the Respondent engaged in “bait-and-switch” behavior, registering a domain name identical or similar to the Complainant’s trademarks for Internet users to visit, only to discovers that the domain name is entirely unrelated to the Complainant. Moreover, the Respondent provided false WHOIS information.

RESPONDENT

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

1. that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

The Complainant, Shanghai Jiyou Information Technology Co Ltd (Shanghai Jiyou), is part of the Bilibili Group, a major video-sharing and streaming company. The Complainant has provided evidence of ownership of the registrations for the marks "HIGAN: ERUTHYLL”.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The Panel finds that the disputed domain name reproduces the prominent element ERUTHYLL of the earlier marks of the Complainant.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.online”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

1. before any notice to it 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
2. the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
3. 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 trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The evidence on record does not show that the Respondent was commonly known, as an individual or an organization, by the disputed domain name.

The Panel also accepts, in the absence of a rebuttal from the Respondent, that the Respondent uses the Complainant's trademarks in the disputed domain name without authorization from the Complainant.

Equally, the Panel finds that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. The fact that the disputed domain name directs to a blank webpage is, in the opinion of the Panel, a clear indicator that the domain name is not used in a legitimate noncommercial or fair manner.

Therefore, the Panel concludes that the Respondent has no right or legitimate interests in the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registration and Use in Bad faith

For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain names in bad faith:

1. circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holders documented out-of-pocket costs directly related to the domain name; or
2. the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
3. the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder'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 your website or location or of a product or service on the holder's website or location.

The evidence on the record shows that the Respondent was certainly aware of the existence of the Complainant and of the rights of the Complainant, and that the Respondent, by registering and using the disputed domain name has intentionally attracted internet users by creating a likelihood of confusion with the Complainant's trademark, thereby disrupting the Complainant’s business.

Given the major reputation of the Complainant’s parent company, especially in China where the Respondent is located, as well as the structure of the disputed domain name itself, the Respondent cannot have ignored the Complainant’s earlier rights, neither can the Respondent have ignored that, when registering the domain name, they would do so in violation of the Complainant’s earlier rights.

The Complainant also provided evidence that the Respondent is passively holding the domain name, in line with the Policy. This is indicative of bad faith on the part of the Respondent.

The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, and therefore finds that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.