XIHA Oy (the Complainant) recently lost its complaint filed with the World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP) regarding the domain name (the Domain Name) on the grounds that Qiu Shengjie (the Respondent) had not registered the Domain Name in bad faith. The decision is interesting in that the Singaporean Panellist Kar Liang Soh presented a detailed and complex analysis in relation to the efficacy of the evidence submitted respectively by the parties surrounding the three hurdles of the UDRP before concluding in favour of the Respondent.

The Complainant has operated an online multilingual social network through its website at www.xihalife.com since July 2006. “Xiha” means “happy” or “joyful” in Mandarin. The website now has around 825,000 registered users from over 208 countries. The Domain Name was registered on 15 January 2001 and subsequently resolved to several parking webpages and a webpage offering domain names for sale. The Complainant apparently contacted the Respondent who offered to sell the Domain Name to it for USD 100,000. The Complainant therefore filed the complaint on 21 July 2010, seeking the transfer of the Domain Name.

To be successful under the UDRP, a complainant must evidence that:

  1.  The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
  2.  The respondent has no rights or legitimate interests in respect of the domain name; and
  3.  The domain name has been registered and is being used in bad faith.

With regard to the first limb, the Complainant contended that the Domain Name was identical or confusingly similar to the term XIHA in which the Complainant had acquired unregistered trade mark rights by virtue of its commercial use. In addition, the Complainant emphasised that it was not a requirement of the UDRP for the Complainant's rights to predate the registration of the Domain Name. To establish the second limb, the Complainant submitted that the Respondent had not made any commercial or fair use of the Domain Name, other than seeking to sell it. According to the Complainant, the Respondent was not commonly known by the term ''xiha'', nor had it been authorised by licensed by the Complainant to register and use the Domain Name. Finally, the Complainant stated that the Respondent had engaged in a pattern of conduct by registering a number of domain names to offer for sale and argued that this was a strong indication of bad faith, as well as the fact that the Respondent had been involved in various other complaints brought under the UDRP.

The Respondent attempted to rebut the Complainant's allegations with four arguments. Firstly, it pointed out that the Complainant had no prior rights in the term XIHA, given that the Domain Name was registered five years before the Complainant's alleged use of the term and the Complainant had neither trade mark applications nor business operations in China where the Domain Name was being used. Secondly, the website to which the Domain Name was pointing had been updated daily with news and information since May 2009 and the Respondent had also operated websites under third level domains (for instance, and ), giving rise to legal and reasonable business use of the Domain Name. Thirdly, the Respondent asserted that it had never offered to sell the Domain Name, as evidenced by the fact that the email address through which the Complainant had claimed to liaise with the Respondent did not belong to the Respondent. In addition, there was not enough evidence to link the Respondent with the previous UDRP disputes or the large number of other domain name registrations referred to by the Complainant. As for the last argument, the Respondent pointed out that the Complainant's website used the words ''xihalife'' rather than ''xiha'' prior to the filing of the complaint. Furthermore, as the Complainant's co-founder was a Chinese national, the Complainant should have been aware of the Domain Name when adopting the domain name , and thus the Respondent argued that the present complaint amounted to reverse domain name hijacking.

Taking into account the contradictions in the evidence put forward respectively by the parties and, in particular, the nature of UDRP proceedings as a rapid and cost-saving alternative dispute resolution in contrast with court proceedings, the Panel endeavored to make a general and balanced observation on the basis of the limited evidentiary resources as summarised above.

As for the first element of the UDRP, the Panel, with reference to the consensus view of previous panels, agreed with the Complainant's assertion that a complainant may acquire rights in a trade mark after a disputed domain name had been registered (although such circumstances may clearly have an impact on the issue of bad faith registration). The Panel went on to consider whether the term XIHA had become a distinctive identifier associated with the Complainant and its goods and services as a result of the Complainant’s commercial use. Given the user base of the Complainant's website, recognition by various publications and Google search results, the Panel found that this was the case and that the Complainant had acquired common law (or unregistered) trade mark rights. Faced with the Respondent's intention to differentiate ''xiha'' from ''xihalife'', the Panel maintained its position by stating that the word ''xiha'' was used by the Complainant as a unitary element and a separate identifier from the word ''life''. In view of the above circumstances, the Panel concluded that the first limb of the UDRP was therefore satisfied.

In assessing the second prong of the UDRP, the key issue was whether the Respondent could sufficiently substantiate its legitimate and fair use of the Domain Name since its registration. As evidence, the Complainant submitted that the Domain Name resolved to two parking webpages as of 17 February 2007 and 20 July 2010 and redirected to a webpage containing offers to sell domain names as early as 20 August 2004, whilst the Respondent countered that the Domain Name had been constantly exploited by the operation of an active website since May 2009. Having reviewed the evidence submitted, the Panel found that the Complainant's evidence was more probative on the grounds that the images of the webpages put forward by the Respondent were undated and did not show the URL of the website, unlike the usual printouts from popular browsers as provided by the Complainant. The Panel accordingly ruled that the Complainant's evidence prevailed and suggested that the existing website corresponding to the Domain Name appeared to have been uploaded after the Complaint was filed. The Panel further disregarded the Respondent's other contentions such as the public recognition of the website at www.xiha.com and other active websites under subdomains of the Domain Name, due to the absence of cogent evidence. As a result, the Panel concluded that the Respondent could not claim to have acquired any rights or legitimate interests in respect of the Domain Name, regardless of how long the Respondent had retained the Domain Name.

In order to support its assertion in terms of the registration and use of the Domain Name in bad faith, the Complainant argued that the Respondent had registered numerous domain names to offer for sale, based on the Respondent's association with the name ''Qiu Shengjie'' and three email addresses, namely [...]@gmail.com, [...]@9333.com and [...]@yima.net. Since the name ''Qiu Shengjie'' was not unique, the Panel considered that the evidence submitted was insufficient to establish a link between the Respondent and other domain names registered under this name. For the same reason, the Panel held that the Respondent could not be convincingly considered to have been involved in the previous disputes in connection with the said ''Qiu Shengjie''. With regard to the email address [...]@gmail.com through which the Complainant was alleged to have received the offer from the Respondent, the Panel pointed out that the Complainant had not provided any solid basis for such determination. Therefore, the contention that the Respondent had registered the Domain Name for the mere purpose of selling it was groundless.

Although the Panel appeared hesitant in excluding the Respondent's connection with the email addresses [...]@9333.com and [...]@yima.net that were associated with a significant number of domain name registrations, the Panel was of the view that ''the mere fact that a respondent is in the business of selling domain names is not a basis for establishing bad faith registration and use. There has to be additional evidence of that respondent's bad faith. For example, paragraph 4(b)(ii) illustrates that a pattern of conduct of registering domain names to prevent trademark owners from reflecting them in corresponding domain names amounts to bad faith registration and use. Also, if a respondent is aware that the domain name he is registering is a trademark, in particular with actual or constructive knowledge of the complainant's trademark, bad faith registration and use may be established.''

Given that the Domain Name was registered long before the Complainant commenced its use of the term XIHA in connection with its multilingual social network, in the Panel’s view it was inconceivable that the Respondent could possibly have had ''actual or constructive knowledge'' of the Complainant's subsequent use of the term at the time of registering the Domain Name. As previously discussed in relation to the case concerning the domain name in the September 2010 issue of Anchovy News (see the article entitled Bad Faith Registration And Use Under The UDRP: Cumulative…..Or Not?) the third limb of the UDRP requires that the domain name in question is registered AND used in bad faith, rather than simply registered OR used in bad faith. On this basis, according to the Panel, since no evidence amounted to a finding of bad faith registration on the part of the Respondent, there was no need to discuss whether the Domain Name was being used in bad faith. The Panel therefore held that the third limb of the Policy was not satisfied and the complaint was denied.

Brand owners who wish to recuperate domain names that pre-date the acquisition of their trade mark rights (registered or otherwise) should take note of the fact that, whilst technically speaking the UDRP does not prevent this, in reality under such circumstances it is very difficult to prove that registration of the domain name took place in bad faith. In order to obtain a transfer of the domain name at issue it is necessary to submit convincing evidence that the respondent knew of the brand owner’s business at the time that the domain name was registered, despite the brand owner’s lack of trade mark rights at that time. As can be seen from the above, this is easier said than done.

The decision is available at: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2 010-1204