Alibaba Group Holding Ltd v (1) Domains By Proxy, LLC; and (2) Jinbo Liu
Asian Domain Name Dispute Resolution Centre (ADNDRC) Hong Kong Office
Raymond C. K. Ho (Panelist)
Dispute Resolution
4 August 2014

Intellectual Property – ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) – New gTLD – Domain name registrant’s intention to trade off trademark rights owner’s good name and mislead the Internet community would amount to a finding that the dispute domain name was registered or is being used in bad faith

Complainant (hereinafter “C”) is the purported owner of several trademarks incorporating the mark of “TMALL”, whilst the 2nd Respondent (hereinafter “R”) was the registrant of <tmall.company>  (the “Disputed Domain Name”).

On 26 June 2014, C filed a complaint against R concerning the Disputed Domain Name under ICANN UDRP, asserting that: (i) the Disputed Domain Name is identical or confusingly similar to C’s registered trademarks; (ii) R had no rights or legitimate interests in respect of the Disputed Domain Name, as its mark is a coined term and C had not licensed, consented to or otherwise authorised R to use its trademarks; and (iii) R’s registration and use of the Disputed Domain Name involved mala fides and bad faith, having the intention to ride on the reputation of C with the prior knowledge of C’s trademarks. R denied the complaint and rebutted that the registration of the Disputed Domain Name conformed the acronym of its company, and there was no evidence that R had offered the domain name for sale.

Held, granting the remedy sought, that:

  • The disputed domain name is identical/confusingly similar to C’s trademarks, disregarding the domain extension.
     
  • R neither demonstrated that the disputed domain name was used in connection with a bona fide offering of goods or services, nor showed that it was making non commercial or fair use of it. In addition, the business registration of R’s company was registered after the registration of the disputed domain name and the commencement of the present proceedings. Therefore, it was unnecessary to examine whether the acronym of R’s company conformed C’s trademarks, as R had no rights or legitimate interests in respect of the disputed domain name.
     
  • R registered the Disputed Domain Name after C’s trademark was registered and validated by the Trademark Clearinghouse. Thus, it was irresistible to infer that by registering the disputed domain name, R had intentionally attempted to trade off C’s good name to attract the Internet community to R’s website for commercial gain. On the totality of the evidence presented, the registration and the use of the disputed domain name by R were in bad faith.

In accordance with paragraph 4(i) of the UDRP, the Panel ordered that the Disputed Domain Name be transferred to the Complainant.


For the full decision, please refer to the ADNDRC Uniform Domain Name Dispute Resolution Policy (UDRP) Decisions at http://www.adndrc.org/diymodule/docUDRP/HK-1400627_Decision.pdf.