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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UpsideOut, Inc. v. Lin Han
Case No. D2009-0388
1. The Parties
The Complainant is UpsideOut, Inc., New Rochelle, New York, United States of America, represented by John Berryhill, United States of America.
The Respondent is Lin Han, Qingdao, Shandong, People`s Republic of China, represented by himself.
2. The Domain Names and Registrars
The disputed domain name <proxyfire.net> is registered with GoDaddy.com, Inc.
The disputed domain name <proxyfire.org> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2009. On March 24, 2009, the Center transmitted by email to GoDaddy.com, Inc. and Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names.
On March 24, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response, advising that it had not received a copy of the Complaint, and confirming that the Respondent is listed as the registrant and providing the contact details. On March 24, 2009, Xin Net Technology Corp. transmitted by email to the Center its verification response, advising that it had not received a copy of the Complaint, and confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2009. The Response was filed with the Center on April 21, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on May 6, 2009. 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.
Due to exceptional circumstances, the Panel requested to extend the due date for decision to June 14, 2009. The Centre duly notified the Parties of the extension on June 5, 2009.
On June 18, 2009, the Centre notified the Parties the Procedural Order No. 1 requesting the Complainant to provide further information to support its claims. The Centre duly received supplementary documents from the Complainant on June 25, 2009 and the counter response from the Respondent on June 29, 2009.
Language of Proceeding
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise, with regard to the circumstances of the case.
In the present case, one of the disputed domain names <proxyfire.net> is registered with GoGaddy.com, whose registration agreement is in English, while the other domain name <proxyfire.org> is registered with Xin Net Technology Corp., whose registration agreement is the Chinese language. The Complainant has submitted a request that English be the language of the proceeding. The Respondent has submitted a request that Chinese be the language of the proceeding.
Given the above circumstances, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English; and
3) appoint a Panel familiar with both languages and leave the decision on Language of Proceeding to the discretion of the Panel.
The UDRP provides for an administrative proceeding designed to provide an expedited and cost effective remedy to the parties on domain name disputes. Judging from the facts that the Respondent is a university student in China where English is widely regarded as a вАШmust learn` language, that the language of the agreement for one of the disputed domain names <proxyfire.net> is the English language, and that the language used in the website "www.proxyfire.net" is mostly English, the Panel tends to believe that the Respondent has the capability to understand the English language. On the other hand, the Complainant is a US entity and its authorized representative is a US citizen. They do not have the capability to understand the Chinese language. If the Complainant was required to submit all documents in Chinese, the administrative proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, the Panel decides that English shall be the language of this administrative proceeding.
4. Factual Background
The Complainant is a US publisher of software used for locating and providing internet proxy servers. It is in the business of, among other things, providing various goods and services including a range of websites in the proxy industry. The Complainant is the registered owner of the service mark PROXIFY with USPTO under the number of No. 3,138,482 and the service mark PROXIFIER under the number of No. 3,390,680. The Complainant also operates the website "www.proxify.com" and licenses other uses of its mark.
The PROXIFY mark is registered in connection with "providing anonymous transmission and delivery of information over global computer networks" in International Class 38. The first use in commerce date is June 3, 2006.
The PROXIFIER Mark is registered in connection with "providing secure anonymous electronic transmission and delivery of information and data over global computer networks" in International Class 38. The first commerce use date is set forth as at least as early as April 2004.
5. Parties` Contentions
Identical or Confusingly Similar
The Complainant contends that the domain names at issue <proxyfire.net> and <proxyfire.org> are confusingly similar to the trademark PROXIFY and PROXIFIER owned by the Complainant.
The Complainant states that the respective terms "proxify" and "proxifier" are fanciful terms coined by the Complainant to refer to its services, i.e. amongst other things, providing anonymous transmission and delivery of information over global computer networks. The Complainant has made substantial investment in developing, providing and promoting its services under the PROXIFY Mark. Since 2003, the Complainant has advertised its PROXIFY and PROXIFIER services through keyword advertising campaigns through Yahoo! and Google. As a result, the PROXIFY and PROXIFIER marks are widely known and embody substantial and valuable goodwill.
The Complainant contends that the disputed domain names are based on the term "proxyfire", which is phonetically similar to Complainant`s PROXIFY mark, and is phonetically identical with Complainant`s PROXIFIER mark. The Complainant also contends that the disputed domain names consist of a minor typographic variant, by reversal of two letters, of the PROXIFIER mark.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names based on the following facts and deductions:
- The Respondent is using the disputed domain names to provide competing services with the Complainant.
- The Respondent is well aware of the Complainant`s site and services, because the Respondent lists the Complainant`s website as a proxy service provider on Respondent`s site.
- The Respondent is not licensed or authorized by the Complainant to use the Complainant`s marks or variants thereof. The use of the <proxyfire.net> and <proxyfire.org> domain names by the Respondent to provide the same or similar services as the Complainant, under a confusingly similar name as the Complainant`s inherently distinctive marks, is not a bona fide use under the Policy. The Complainant quoted The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World,
WIPO Case No. D2000-0474 and America Online, Inc. v. Xianfeng Fu,
WIPO Case No. D2000-1374 to conclude such use does not fall within the bona fide use as provided under the Policy.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain names were registered and are used in bad faith, based on the following facts and deductions:
- The Respondent is utilizing the disputed domain names to provide competing services. The domain names are either identical with or confusingly similar to the Complainant`s marks which pre-date Respondent`s registration and use of the domain names. As the marks in question are inherently distinctive/ fanciful terms, and the disputed domain names are not generic or descriptive вАУ the term "proxyfire" whether considered as one word or two has no primary meaning. The disputed domain names <proxyfire.net> and <proxyfire.org> were registered after the Complainant had established its rights in the respective marks.
- The Respondent has clearly been aware of the Complainant, and has engaged not only in a pattern of registration of these domain names in bad faith, but has also been engaged in a campaign of copyright infringement. The Respondent operates several IP address identification related websites, such as "www.myip.cn", "www.ipaddressz.com" and others. In the course of the Complainant`s investigation of this matter, the Complainant discovered that the Respondent had copied the Complainant`s terms of services verbatim from the Complainant`s site. Accordingly, on November 11, 2008, the Complainant contacted the Respondent`s hosting company to provide notice of copyright infringement. On November 24, 2008, the Respondent`s hosting company disabled operation of the Respondent`s infringing sites. The next day, the Respondent`s sites re-appeared, but at a new IP address. The Complainant again informed Respondent`s hosting company, and that IP address was disabled. Respondent has moved its websites in this manner more than six times. The Respondent has made it clear through its conduct that the Respondent is well aware of the Complainant, and is determined not only to divert the Complainant`s customers and user through the use of the disputed domain names, but also to copy content belonging to the Complainant.
- The totality of the Respondent`s below conduct strongly suggest the Respondent`s conduct is willful and that the Respondent is well aware of the Complainant: (a) registration of a pattern of domain names similar to the Complainant`s marks after the Complainant`s established use thereof; (b) the inherently distinctive character of Complainant`s marks; (c) obtaining one of the domain names through a chain of transfers from a party with notice of Complainant`s marks; (d) copying the Complainant`s website content in connection with other sites and then attempting to evade enforcement. Under these circumstances, it is clear that the Respondent has registered and used the domain names intentionally to divert the Complainant`s customers and users, and has done so with a bad faith intent.
Identical or Confusingly Similar
The Respondent, in response to the Complainant, states that the disputed domain names are not identical or confusingly similar to any trademark or service mark in which the Complainant has rights. The Respondent further states that the PROXIFY and PROXIFIER marks owned by the Complainant have no meaning in English, and the spelling of the term "proxyfire" differs from the marks PROXIFY or PROXIFIER typographically. Further more, the term "proxyfire" is a combination of two words "proxy" and "fire", which is the name the Respondent gave to a web application software tools developed by the Respondent independently. This software was released on September 1, 2006. The Respondent registered the domain name <proxyfire.org> in August 2006.
Rights or Legitimate Interests
The Respondent states that its use of the disputed domain names is in connection with a bona fide offering of a web application software tool named "proxyfire" which was developed independently by the Respondent and which was released in September 1, 2006, before notice of the proceeding to the Respondent.
The Respondent states that the disputed domain name <proxyfire.net> was transferred from Michael Paul (email@example.com) for free in November 2007 because of its help to Mr. Paul. The Respondent offered Mr. Paul`s contact details for confirmation of the story. The registration of the domain name <proxyfire.net> (February 22, 2006) predates the trademark registration of PROXIFY and PROXIFIER.
The Respondent further states that although it does not have a trademark right per se, the disputed domain names are commonly known to web users because the term "proxyfire" is homonymous with the software developed by the Respondent, and such statement can be supported by the following facts:
- The releases of the software Proxyfire which is available from its historical update record (http://www.proxyfire.net/forum/showthread.php?t=2023).
- The software Proxyfire is introduced and recommended by numerous American and Chinese famous websites including the CBS Interactive Group of the United States. See: http://download.cnet.com/Proxyfire/3000-2144_4-10700400.htmlгАБhttp://xiazai.zol.com.cn/detail/32/317840.shtml http://www.xdowns.com/soft/1/71/2007/soft_35018.htm http://www.zdnetasia.com/downloads/pc/swinfo/0,39043052,50002345r-39269416s,00.html
- A search with the key word "proxyfire" in the search engine Google brings up with over 113,000 results, most of which are related to the Respondent`s website, downloads of Proxyfire software and other relevant contents.
- From 2006 to date, the Proxyfire software has been downloaded for over a million times, ranking No. 2 in the competition, just next to CCProxy software.
The Respondent also states that he is making a legitimate noncommercial use of the disputed names, without intent for commercial gains by misleading web visitors or to tarnish the trademarks owned by the Complainant. The Respondent supports its statement by the following:
- The Respondent is a university student during the period from 2006 to 2009. Its main purpose in registering and using the disputed domain names is to provide a platform for web users with the same needs to communicate and for IT professionals to share knowledge and experience. The function and services provided by the Respondent`s website are therefore different from those by the Complainant`s website.
- Only minimal fees are charged to its registered users therefore commercial gain is not the major purpose of its website.
- According to UDRP Policy and Rules, the Respondent`s use of the disputed domain names from 2006 should fall within legitimate and fair use of the domain names i.e. there is no bad faith, for commercial gain, to mislead consumers or to tarnish the Complainant`s trade marks.
Registered and Used in Bad Faith
The Respondent states that its use of the disputed domain names falls within bona fide and fair use and does not belong to bad faith.
The Respondent states that the constant change of its server is really only out of economic considerations but not to evade administrative supervision. The Respondent is a student and can not afford operating an independent server therefore has to frequently change hosting companies which can provide more cost effective services.
6. Discussion and Findings
A. Identical or confusingly similar
The domain name comprises the word or combination of words "proxyfire" and the generic domain suffix. The Complainant`s trade mark registrations are for PROXIFIER and PROXIFY.
The names "proxyfire" and "proxifier" are very similar and substantially identical phonetically. The disputed domain names and the trade mark PROXIFY are not identical and not quite so similar visually, but are, in the panel`s view potentially confusingly similar.
The Panel finds that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or legitimate interests
In light of the panel`s finding under the next head, the panel does not find it necessary to address this issue.
C. Bad faith registration and use
The first of the two disputed domain names registered in the name of the Respondent, namely <proxyfire.org> was registered by the Respondent in August 2006. The Respondent`s evidence is that it launched its Proxyfire software the following month. The issue for the panel is the Respondent`s probable intent at the time this domain name was registered. In particular, whether or not when the Respondent registered the domain name <proxyfire.org> he did so with knowledge of the Complainant`s trade mark and with intent to exploit that trade mark unfairly or in some other way to cause damage to the Complainant.
The Complainant claims that the Respondent must have been aware of the Complainant and its trade marks at that time because while the Complainant`s trade mark registrations only came through in September 2006 in the case of PROXIFY, and in March 2008 in the case of PROXIFIER, the Complainant had been using these marks to substantial effect from at least as early as 2003 in relation to the trade mark PROXIFY and 2005 in relation to the trade mark PROXIFIER. The Panel notes that the Complainant`s trade mark registration document for PROXIFIER indicates a claimed first use in January 2005 and a first use in commerce in June 2006.
The Respondent states that when it registered the <proxyfire.org> domain name it was not aware of the Complainant and was not seeking to take advantage of the Complainant`s trade mark rights in any way. The Respondent has produced evidence to show that it now conducts a substantial business under and by reference to the domain names.
The Complainant prays in aid the Respondent`s more recent behaviour which the panel accepts is objectionable. The Respondent appears to have copied the Complainant`s Terms of Service, which the Complainant states were posted by the Respondent on or about November 2008. Moreover, it seems that since that time at least the Respondent has in addition sought to make life difficult for the Complainant by constantly changing its IP address to conceal its identity.
However, as to this latter behaviour, the Panel notes that (at least on the provided record before it), it all appears to post date by some considerable time the Respondent`s launch of its business under the Proxyfire name and the registration by the Respondent of the disputed domain names. Put another way, the Panel is not satisfied that this bad behaviour on the part of the Respondent is of any help in identifying what the Respondent`s intentions were at the date of registration of the first of the domain name, namely <proxyfire.org>.
The Respondent acquired the second domain name <proxyfire.net> in November 2007. It may well be that by that time the Respondent could have been aware of the Complainant`s trade mark and business, but by then the Respondent appears to have had a substantial business running under the Proxyfire name, and if that is the case the acquisition of <proxyfire.net> in November 2007 would in the Panel`s view unlikely to have been in bad faith.
This leaves the Panel with the difficult question as to whether or not the first of the two domain names, <proxyfire.org>, was registered by the Respondent in August 2006 with knowledge of the Complainant`s trade mark rights and with a view to exploiting them unfairly.
The Panel finds this a difficult issue to resolve on the present record but after careful consideration, finds it is not in a position to find in favour of the Complainant because, at the end of the day, the obligation is on the Complainant to prove its case under the Policy not only in relation to bad faith use, but also in relation to bad faith registration. Accordingly the Panel believes that doubts in these present circumstances must be resolved in favour of the Respondent. On the other hand, the Panel notes there are clearly aspects of the Respondent`s recent behaviour which are objectionable, and if for example it was to come to light only after the issuing of the present decision that the Respondent had in fact been aware of and utilizing the Complainant`s Terms of Service at or prior to registration of the first disputed domain name, or other new evidence of actual knowledge of the Complainant`s marks and business could be shown at the time of registration, the Panel would not exclude the possibility of grounds for a possible re-filing by the Complainant.
As the record stands, however, the Panel is not satisfied that the Complainant has succeeded in the present proceedings in showing that it is more likely than not that the disputed domain names were registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: July 7, 2009