Decision for dispute CAC-UDRP-108837

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 or its parent company, Alibaba Group Holding Limited, are the owners of a large portfolio of TAOBAO registered trademarks in various jurisdictions, including the following:

- TAOBAO (word), Chinese registration No. 38040117, filed on 8 May 2019 and registered on 21 March 2020, for services in class 45, in the name of Alibaba Group Holding Limited;

- TAOBAO (word), European Union registration No. 009080029, filed on 5 May 2010 and registered on 21 October 2011, for goods and services in classes, 9, 16, 35, 38, 41, 42, in the name of the Complainant. 

The Complainant is also the owner of the domain name <taobao.com>, as indicated below.

The Complainant is a wholly-owned subsidiary of Alibaba Group Holding Limited and forms part of the Alibaba Group. Alibaba Group Holding Limited is a multinational technology and e-commerce conglomerate founded in 1999 in Hangzhou, China. The Alibaba Group is one of the world's largest operators in the field of retail, e-commerce, and digital technology. Through its diversified platforms it operates some of the world's largest online marketplaces across major market segments, including Alibaba.com, Taobao and Tmall, serving hundreds of millions of users worldwide. Beyond its core commerce business, the Alibaba Group is also active in cloud computing, artificial intelligence, digital media, and entertainment.

Taobao is the name of one of Alibaba Group's most influential consumer-to-consumer online retail platforms. It was launched in 2003 to enable individuals, small businesses and merchants to connect directly with consumers through a dynamic digital marketplace. The Complainant operates the Taobao platform through the domain name <taobao.com>, registered in 2003. The Complainant conducts business in more than 190 countries and extensively uses its TAOBAO mark on the Internet, including on major social media platforms such as Facebook, LinkedIn, and Instagram.

The disputed domain name was registered on November 26, 2022, by a Chinese individual and is passively held. Before starting this UDRP dispute, the Complainant sent a cease-and-desist letter to the Respondent, notifying the Respondent of the infringement of the Complainant's rights and requesting the transfer of the disputed domain name. The Respondent, however, failed to respond to the Complainant's cease-and-desist letter.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

In particular, the Complainant contends that the disputed domain name is identical to its TAOBAO trademark. Moreover, the Respondent does not own rights or legitimate interests in the disputed domain name. The Respondent is not a licensee or authorized dealer of the Complainant, nor has it been authorised to include the Complainant's TAOBAO mark in the disputed domain name. Furthermore, the Respondent does not appear to have been commonly known by the disputed domain name.

The disputed domain name is passively held, and there is no evidence attesting to demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

With respect to bad faith registration and use of the disputed domain name, the Complainant maintains that the TAOBAO mark enjoys extensive reputation. Accordingly, the Respondent could not have ignored the existence of the Complainant's trademark when the disputed domain name was registered, many years after the Complainant registered its TAOBAO mark.

Although the disputed domain name is passively used, according to the passive holding doctrine, the non-use of a disputed domain name cannot prevent, under certain circumstances, a finding of bad faith. In this respect, the Complainant notes that the TAOBAO mark is highly distinctive and renowned. Moreover, the Respondent failed to reply to the Complainant's cease and desist letter and the Respondent appears to have provided inaccurate or incomplete contact details at the time of the registration of the disputed domain name.

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.

I. Rights

It is a generally accepted principle that the first requirement under the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. In the present case, the Panel notes that the Complainant's TAOBAO trademark is reproduced in its entirety in the disputed domain name without any additional elements, apart from the Top Level Domain (“TLD”) ".ai". As the TLD is a technical requirement of a domain name registration, it may be disregarded for the purpose of assessing the first element of the Policy.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant's TAOBAO mark. The first element of the Policy is therefore met.

II. No Rights or Legitimate Interests

As also confirmed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.1"), although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.1.

Based on the available evidence, the Respondent does not appear to be commonly known by the disputed domain name. The Respondent is neither a licensee of the Complainant nor affiliated with it. Moreover, the Complainant has not authorised the Respondent to incorporate its TAOBAO mark in the disputed domain name. 

The disputed domain name is being passively held. Accordingly, there is no evidence of any actual or prospective bona fide offering of goods or services. Furthermore, the Panel notes that the disputed domain name is identical to the Complainant's TAOBAO mark. UDRP panels have consistently found that a domain name identical to a complainant’s trademark carries a high risk of implied affiliation with the trademark owner (see section 2.5.1 of the WIPO Overview 3.1.). Moreover, a disputed domain name that falsely suggests an affiliation with the trademark owner can never confer rights or legitimate interests on a respondent (see section 2.5 of the WIPO Overview 3.1.). 

In light of the foregoing, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent had the possibility to rebut the Complainant's allegations but failed to do so. In particular, the Respondent neither replied to the Complainant's cease and desist letter nor submitted a Response in this proceeding.

Accordingly, the Panel finds that the second element of the Policy has also been satisfied.

III. Bad Faith

The Panel notes that the Complainant's mark TAOBAO is distinctive and enjoys wide reputation in its field, particularly in China, where the Complainant mainly operates, and where the Respondent is allegedly located. As the disputed domain name is identical to the Complainant's mark, it is highly unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant and its TAOBAO mark.

The Panel further notes that although the disputed domain name was registered in 2022, the Complainant owns trademark registrations that significantly predate the registration of the disputed domain name. Moreover, the Complainant has operated its TAOBAO platform since 2003, approximately 19 years before the registration of the disputed domain name. Nor does the fact that the Complainant delayed in filing the present Complaint prevent it from pursuing its claims or prevailing on the merits (see section 4.17 of the WIPO Overview 3.1.).

In light of the foregoing, the Panel finds that at the time of registration of the disputed domain name, the Respondent was likely aware of the Complainant's TAOBAO mark and registered the disputed domain name in order to take unfair advantage of the mark's reputation and distinctiveness.

The registration of a disputed domain name that is identical to a third party's well-known trademark, being aware of such trademark and in the absence of rights or legitimate interests, constitutes evidence of registration in bad faith.

As regards use in bad faith, the Panel notes that the disputed domain name is passively held by the Respondent. However, the non-use of a domain name does not, in itself, prevent a finding of bad faith under the doctrine of passive holding. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s taking active steps to conceal its identity or (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement) (see section 3.3 of the WIPO Overview 3.1.).

In the present case, the Complainant's TAOBAO mark is highly distinctive and enjoys a significant reputation, particularly in China, where the Respondent appears to be located. The Respondent has failed to submit any Response and has not provided any explanation for its registration and passive holding of the disputed domain name. In these circumstances, the Panel is unable to conceive of any plausible use in good faith to which the disputed domain name could be put.

The Panel further notes that the Respondent appears to have provided inaccurate or incomplete contact details, by failing to specify its address with sufficient precision at the time of the registration of the disputed domain name. Moreover, the Respondent failed to reply to the Complainant's cease-and-desist letter, which notified the Respondent of the infringement of the Complainant's trademark rights and requested the transfer of the disputed domain name.

In light of the foregoing, and having regard to the totality of circumstances of this case, the Panel finds that the passive holding of the disputed domain name constitutes use in bad faith within the meaning of the Policy.

Accordingly, the Panel finds that the third element of the Policy has been satisfied.