Ya-Ya Shirt Company Holding B.V. brought UDRP over generic 4 letter domain name Yaya.com, which has been registered to Mr Yang of China [WIPO Case No. D2020-2493]. The domain name yaya.com registered with eName Technology Co., Ltd. (the “Registrar”).
The basic issue that came up before the panlelist was as to the Language of the proceedings. As the proceedings need to use the language in which Registration Agreement is entered into with the Respondent. Here the same was Chinese. But Complainant insisted that it would cause unnecessary delay and substantial expense, while Respondent was also adamant to have proceedings in Chinese. Therefore the Panelits held:
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English and the Response was filed in Chinese. The webpage to which the disputed domain name resolves is in both English and Chinese, from which it can be inferred that the Respondent is able to communicate in those languages. The Response refers to song lyrics in English, which confirms that inference. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. On the other hand, the Complainant submits that it cannot understand the Response. The Panel recalls that the Rules basically provide for a single submission from each Party. The Panel sees nothing in the Response that the Complainant should not have anticipated in the amended Complaint. Therefore, the Panel considers that requiring the Respondent to translate the Response into English would create an undue burden and delay. The Panel does not consider that the above approach causes unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept all submissions as filed in their original language, without translation.
The disputed domain name has registration date of November 1999. While the Complainant has been mainly oeprating within the country of Netherlands since 1992 while it started global operations since year 2000. The Trademarks of the Complainant have registration date since 1993 but global registrations are 2004 onwards only. But in any case, the Complainant satisfied the first condition as to identical similarity with the Trademark. While further factors as to date of use can be taken into account, while analyzing further UDRP conditions.
The Disputed domain name has never been put to use and previously is was put on sale. Panelist citing lack of demonstrable use, held it against the Respondent. Though YAYA is quite genericly used in Chinese language. Similar thing happened in the UDRP matter of Naturals.com. Accordingly:
The disputed domain name formerly resolved to a webpage that merely offered it for sale. The Complainant submits that the Respondent is not a licensee of the Complainant nor otherwise authorized to use the YAYA mark. At the time of this Decision, the disputed domain name no longer resolves to an active website. The Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent has identified himself in the Response as 杨林, which is transliterated in the Registrar’s WhoIs database as “Yang Lin”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The disputed domain name formerly resolved to a website that offered it for sale. It no longer resolves to any active website. The Panel does not consider either use to constitute a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, he points out that “yaya” is a transliteration of various pairs of Chinese characters. He also asserts that it is his daughter’s nickname. He submits that he intended to create a website to express his love for his daughter and to use the disputed domain name with a games website. However, the Respondent does not allege that he has actually used the disputed domain name in this way and he provides no evidence of any demonstrable preparations to do so.
The Respondent argues that he lawfully registered the disputed domain name with the Registrar. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134.
Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case regarding the second element of the Policy.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
But the domain name just got saved due to the prior registration and no global presence of the Complainant Company in 1999, though there was an attmept to sale for US $1 million. So panel concluded No Bad Faith, for the following reasons:
The disputed domain name was registered on November 27, 1999, years before the Complainant’s trademark registrations for YAYA and years before all its trademark registrations for YA-YA outside the Benelux. The Panel will not consider these trademark registrations further because, where a respondent registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1.
The disputed domain name was registered years after the Complainant’s trademark registration for YA YA SHIRT COMPANY, and months after it applied for its first trademark registration for YA-YA. Both registrations were made in the Benelux whereas the Respondent is resident in China. The Complainant submits that the disputed domain name is clearly intended to mislead and divert the Complainant’s customers. However, there is no evidence on record of use of the Complainant’s marks prior to the registration of the disputed domain name in 1999 and, by the Complainant’s own admission, it did not begin to sell goods outside the Netherlands until 2000, i.e., after the registration of the disputed domain name. While the Complainant registered its domain name <yaya.nl> shortly before the registration of the disputed domain name, there is no evidence on record that the website was active at that time: the Complainant provides archived screenshots of the Respondent’s webpage but only current screenshots of its own website. While the Complainant’s website includes a map of store locations in the Netherlands and neighbouring countries, there is no evidence of use of any of the Complainant’s marks anywhere else. There is no evidence of any third parties using any mark to refer to the Complainant or its goods and services. Accordingly, this evidence is not sufficient to give rise to an inference that the Respondent was aware, or should have been aware, of the Complainant’s marks at the time he registered the disputed domain name in 1999.
The Complainant submits that “yaya” means nothing in Chinese and that the Respondent has no reasonable justification for choosing the disputed domain name. However, the Panel notes that “yaya” is a transliteration of various pairs of Chinese characters including鸭鸭, 丫丫, 雅雅 and 芽芽with usages that have nothing to do with the Complainant. According to evidence provided by the Respondent, image and text searches in the Baidu search engine for these pairs of characters indicate that they variously refer to ducks, actors’ stage names and fictional characters’ names. Further, there are Chinese trademark registrations that consist of, or incorporate, the letters “yaya” in respect of a range of classes of goods and services, and many more that incorporate as their initial element characters that can be transliterated as “yaya”. Accordingly, there is no reason for the Panel to find that the Respondent’s registration of “yaya” in the disputed domain name implies some prior knowledge of the Complainant or its marks.
The Panel accepts the Complainant’s evidence that a domain name broker, acting on behalf of the Respondent, quoted an asking price for the disputed domain name of over USD one million in 2016. The Respondent’s website invited Internet users to contact that broker regarding the purchase of the disputed domain name and the Respondent is responsible for the broker’s representations in that regard. However, even though the Respondent has not documented any out-of-pocket costs directly related to the disputed domain name, the Panel is unable to draw the inference from the high price that the Respondent knew, or should have known, of the Complainant’s mark seventeen years earlier, in 1999, because there is no evidence of reputation of the Complainant or its marks at that time, and there are alternative plausible explanations for the choice of the disputed domain name.
The Complainant notes the close similarity between the webpage to which the disputed domain name resolves and the webpage to which the domain name <yanglin.cn> resolves, the passive holding of <yanglin.com>, and the use of a privacy service. The Panel sees nothing in this evidence that indicates bad faith in the circumstances of this case.
The Complainant also argues that the Registrar’s domain name portfolio is evidence of bad faith. However, the Complainant provides no evidence to support its assertion that the Registrar is “most likely” the Respondent nor any evidence that the Registrar has registered other domain names in bad faith.
The Complainant argues that it cannot sell its goods outside the Netherlands without the disputed domain name. The Panel finds this argument lacking in a factual basis.
Therefore, the Panel does not find that the disputed domain name has been registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: December 2, 2020