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November 15, 2010 / Nate Harris

Proving Respondent’s Rights With Subdomains

Summary of Xiha Oy v. Qiu Shengjie, Chen Qing Mei
(WIPO Case No. D2010-1204)

Filed: July 21, 2010; Decided: October 28, 2010 (Panelist: Kar Liang Soh)

Disputed domain name: <xiha.com>

xiha.com

The Parties

Complainant Xiha Oy provides an “online multiligual social network” at its website <xihalife.com>. The website was started in 2005, and has 825,000 registered users from “over 208 countries.” [Quite an accomplishment, considering that, according to about.com, there are only 195 countries in the world.]

Respondent Cheng Qing Mei registered the disputed domain in 2001. It has resolved to many sites since that time, including a parking page and a news site. At least one individual with the same name as Mr. Mei has registered several other domains that have been the subject of successful UDRP complaints.

Identity or Confusing Similarity

From the manner in which the word “xiha” is used on the Complainant’s website at “www.xihalife.com” in relation to its online social networking services, the Panel has no doubt that the XIHA is used as a trademark and the first element above is made out.

Rights or Legitimate Interests

Mr. Mei claimed he had a right or legitimate interest in the disputed domain by virtue of various sites and services available through third-level domains, including <mail.xiha.com>, <membersxiha.xiha.com>, and <tea.xiha.com>.

The Panel notes that:

For purposes of proceedings under the Policy, a panel cannot expect a complainant to prove beyond a reasonable doubt that a domain name is not in use. As most domain names will host a website under a “www.” subdomain, it is generally accepted that the absence of a website under the “www.” sub domain of a domain name establishes a prima facie case that the domain name is not in use. The burden then shifts to the respondent. If the burden is not rebutted, as in the usual case of a respondent who fails to respond, the prima facie case will stand.

The Panel concludes that Mr. Mei has failed to prove that his third-level domains predated Xiha Oy’s rights in the XIHA mark. Therefore, the Xiha Oy has made out the second prong.

Bad Faith

The Panel finds that there is insufficient evidence to prove that Mr. Mei is the same individual found to have registered domain names in bad faith in other UDRP proceedings. Furthermore, the disputed domain was registered several years before Xiha Oy’s rights in its XIHA mark arose, making a finding of bad faith registration impossible.

Decision

The Complaint is denied.

Commentary

This case is noteworthy for the fact that subdomains, even private ones unknown to a complainant, may be enough to give the respondent rights or legitimate interest in the disputed domain, which would of course be fatal to the complaint. Can this approach be distinguished from decisions holding that an email address at the disputed domain is not enough to constitute rights or legitimate interests? See, e.g., CharterX, Inc. and Wyvern Consulting, Ltd. v. Gregg Westgate (Nat. Arb. Forum 1335604) [blogged here] and the cases cited therein.

Epilogue

<xiha.com> still points to the Respondent’s website.

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2 Comments

  1. Jani penttinen / Dec 20 2010 6:54 am

    Subsequently, after winning the process, the respondent has removed the content at xiha.com and returned it to parking. It is ironic that during the process the respondent claimed that it is running long-term business at the domain, and losing the domain would hurt all the users of their community. The respondent also stated it has never attempted to sell the domain is not planning to do so.

    Unfortunately the UDRP panel decisions are final and the respondent is now free to reveal that all the claims about the domain usage were false, and there is nothing WIPO or the complainant can do about it anymore. The domain is, as it always has, reserved only so that it can be sold at a high profit with no intention to ever use it.

  2. Nate Harris / Dec 20 2010 1:29 pm

    Thanks for the update, Jani. I’m going to post your comments as a separate post tomorrow, if that’s okay. It’s great to get a trademark owner’s perspective on this.

Comments are closed.