On May 15, 2020, Verizon acquired Blue Jeans Networks, Inc., which provides video conferencing products and services.
The matching trademark, BLUE JEANS, has nothing to do with the popular type of pants. By acquiring the company, Verizon became both the owner and protector of this mark and brand.
The Chinese registrant of BlueJeansChina.com claims to have been a partner of the company acquired by Verizon, in China. According to the ensuing UDRP filed by Verizon, the disputed domain name formerly resolved to a website that promoted the BlueJeans video, audio and web platforms, displaying the brand “BlueJeans by Verizon” and using materials copied from the Verizon website.
Final decision: transfer the domain BlueJeansChina.com to the Complainant.
Verizon Trademark Services LLC v. 胡绍军 (Hu Shaojun), 北京环宇佳合科技有限公司 (Beijing Huanyujiahe Tech. Ltd)
Case No. D2021-07011. The Parties
The Complainant is Verizon Trademark Services LLC, United States of America (“United States”), internally represented.
The Respondent is 胡绍军 (Hu Shaojun), 北京环宇佳合科技有限公司 (Beijing Huanyujiahe Tech. Ltd), China.
2. The Domain Name and Registrar
The disputed domain name <bluejeanschina.com> is registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on April 16, 2021.
On April 13, 2021, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 16, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent sent an email communication to the Center on May 8, 2021 requesting an extension of time to file the Response. In accordance with the Rules, paragraph 5(b), the due date for Response was automatically extended by four calendar days to May 13, 2021. The Response was filed in Chinese on May 9, 2021. The Respondent sent further email communications to the Center, including as regards a possible settlement, on May 9, May 17, and May 18, 2021.
On May 9, 2021, the Center informed the Parties that if they would like to explore settlement, the Complainant should submit a request to suspend the proceeding. No communication was received from the Complainant in this regard.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 3, 2021. 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.
In accordance with the Rules, paragraphs 10 and 12, the Panel issued Administrative Panel Procedural Order No. 1, in English and Chinese, on June 9, 2021. In that Order, the Complainant was requested to provide comments by June 14, 2021 on Annex 2 to the Response, which purported to show that the Respondent Beijing Huanyu Jiahe Technology Company Limited was a “BlueJeans Certified Partner” in 2020 and is a “BlueJeans Strategic Partner” in 2021. The Respondent was given the opportunity to provide comments in reply by June 16, 2021. The Parties were allowed to submit their comments in either English or Chinese and the date for the Panel’s Decision was extended to June 19, 2021. In an email communication dated June 11, 2021, the Complainant requested a suspension of this proceeding in order to allow it adequate time to investigate the validity of the Respondent’s assertions or, in the alternative, an extension of time to provide comments. On June 14, 2021, the Complainant filed its written comments in response to the Administrative Panel Procedural Order No. 1. The Respondent did not submit any further comments.
4. Factual Background
The Complainant is an intellectual property holding company and wholly-owned subsidiary of Verizon Communications Inc. (“Verizon”), a communication, information and entertainment company. On May 15, 2020, Verizon acquired Blue Jeans Networks, Inc., which provides video conferencing products and services. Blue Jeans Networks, Inc. was the owner of multiple trademarks consisting of or incorporating BLUE JEANS (written as two words), which it assigned to the Complainant on June 1, 2020. These trademarks include United States trademark registration No. 4762763 for BLUE JEANS, registered on June 30, 2015, with a claim of first use in commerce on June 1, 2011, specifying goods and services in classes 9 and 38, including downloadable and non-downloadable computer telecommunications software for providing video and audio communication, collaboration and conferencing. The assignment has not yet been reflected in the United States trademark register. However, the Complainant is the registrant of European Union Trade Mark registration No. 012191441 for BLUE JEANS, registered on February 26, 2014 with a claimed priority date of September 26, 2013, covering goods and services in classes 9, 38, and 42, including teleconferencing and video collaboration services. That trademark registration remains current. Verizon operates a website at “www.bluejeans.com” (the “Verizon website”) featuring advertising and information regarding many of its video conferencing products and services which are now branded “BlueJeans by Verizon”.
The Respondent is a Chinese company named Beijing Huanyujiahe Tech. Ltd. Its contact person is Hu Shaojun.
The disputed domain name was registered on November 23, 2016. It formerly resolved to a website in English and Chinese that displayed the words “BlueJeans China” in its header. The website advertised BlueJeans video, audio and web meeting platforms, displaying the words “BlueJeans by Verizon” repeatedly in the same color and font as the Verizon website and using material copied from the Verizon website. A notice identified the copyright owner as the BlueJeans Network. The contact details for product enquiries were in China and included an email address in the <bluejeanschina.com> domain. According to the Complainant, the website displayed several hyperlinks that redirected Internet users to certain pages on the Verizon website.
At the time of this Decision, the disputed domain name no longer resolves to any active website; rather, it is passively held.
5. Parties’ Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant’s BlueJeans (sic) marks. In the present case, the addition of the geographical term “China” does nothing to abate the confusing similarity of the disputed domain name to the Complainant’s mark.
The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not authorized the Respondent to register or use the disputed domain name and there is no connection between the Complainant and the Respondent. The Respondent had not received any license, authorization, or consent – express or implied – to use the BlueJeans (sic) marks in any manner at the time it registered and began using the disputed domain name or at any other time. The Respondent’s website markets the Complainant’s “BlueJeans by Verizon” services. It primarily features visual and textual elements copied directly from the Verizon website. Moreover, the Respondent’s website contains several hyperlinks that redirect Internet traffic to the Verizon website. There is no plausible bona fide explanation for the Respondent’s decision to use BLUEJEANS in connection with the disputed domain name except to appropriate its trademark value.
The disputed domain name was registered and is being used in bad faith. It is clear that the Respondent was aware of the Complainant’s rights in the BlueJeans (sic) marks at the time the Respondent registered and began using the disputed domain name. It is clear that the Respondent registered and is using the disputed domain name to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant markets it BlueJeans branded video conferencing solutions, inter alia, through a Reseller and Distribution Partner Program (the “BlueJeans Partner Program”). The Complainant has determined that: (i) the Respondent may have at one point in the past participated in the BlueJeans Partner Program as a Certified Partner, or at any other tier level; and (ii) the Respondent is not reselling or distributing the Complainant’s BlueJeans branded video conferencing solutions in China. The certificates that the Respondent has submitted, which suggest that it has participated in the BlueJeans Partner Program at the “Certified Partner” and “Strategic Partner” tier levels, are fictitious documents apparently fabricated for the purposes of this proceeding. In fact, there is no “Strategic Partner” tier level. False certificates aside, all participants in the BlueJeans Partner Program must enter into written agreements with the Complainant but the Respondent has not produced any such written agreement. It remains the Complainant’s belief that the Respondent has no rights or legitimate interests in the disputed domain name.
B. Respondent
The Respondent uses the disputed domain name in good faith to provide services. The Respondent is an authorized business partner of Blue Jeans Network, Inc., which was subsequently acquired by Verizon, and it is responsible for marketing and service in China in 2020 and 2021. The Respondent registered the disputed domain name legally and has always used it legitimately with no intention to mislead consumers for commercial gain. Certifications issued by Blue Jeans Network, Inc. show that the Respondent was an authorized Certified Partner of BlueJeans Network in 2020 and is an authorized Strategic Partner of BlueJeans Network for North Asia region in 2021. These certifications prove the cooperative relationship between the Parties and prove that the Respondent is not using the disputed domain name in bad faith.
The Respondent did not register the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor at a profit. The Respondent registered the disputed domain name only for reasonable and legal purposes in good faith, in order to provide better marketing and service for BlueJeans products in China. The Respondent did not register the disputed domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Respondent did not register the disputed domain name to damage the Complainant’s reputation or to disrupt its business. The Respondent did not register the disputed domain name to create confusion regarding the distinction between itself and the Complainant and mislead the public. There are no other circumstances indicating the Respondent acted in bad faith.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant and its legal representative are are unable to communicate in Chinese; the disputed domain name combines the coined word “BlueJeans” with the English language word “China”, which indicates that the Respondent is able to understand and communicate in that language; and the Complainant would likely incur substantial additional expense and delay if the Complaint had to be translated into Chinese.
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 amendment to the Complaint were filed in English whereas the Response was filed mostly in Chinese, with an Annex in English. The website to which the disputed domain name formerly resolved was in English and Chinese; and the Respondent’s initial email communication to the Center was sent in both English and Chinese, all of which indicates that the Respondent is proficient in both languages. The Respondent has not commented on the issue of the language of the proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and delay, whereas accepting all submissions as filed in their original language or languages will not cause 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 filed in Chinese in a timely fashion without translation.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the BLUE JEANS trademark (written as two words).
The disputed domain name wholly includes the BLUE JEANS trademark, except for the space between the words, for technical reasons. The disputed domain name also includes the country name “China” but that geographical term does not prevent a finding of confusing similarity as the trademark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel will assess whether the Respondent has rights to, or legitimate interests in, the disputed domain name by reference to the circumstances prevailing at the time of the filing of the Complaint. See WIPO Overview 3.0, section 2.11.
According to the Complainant’s submissions, the disputed domain name formerly resolved to a website that promoted the BlueJeans video, audio and web platforms, displaying the brand “BlueJeans by Verizon” and using materials copied from the Verizon website. The Respondent’s name was not displayed anywhere on the site. This all gave the impression that the website was the Complainant’s official website for China. The Complainant submits that there is no connection between the Parties and that the Respondent has not received any license, authorization, or consent to use the BLUE JEANS marks. At the time of this Decision, the disputed domain name does not resolve to any active website. Neither use of the disputed domain name appears, on its face, to be in connection with a bona fide offering of goods or services.
The Respondent is identified by the Registrar as “胡绍军 (Hu Shaojun), 北京环宇佳合科技有限公司 (Beijing Huanyujiahe Tech. Ltd)”, not “BlueJeans China”. There is no evidence that the Respondent has been commonly known by the disputed domain name.
The disputed domain name formerly resolved to a website offering products for sale. It is now passively held. Neither use is a legitimate noncommercial or fair use.
For the above reasons, 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, it submits certificates purporting to show that it was a Certified Partner of BlueJeans Network in 2020 and is an authorized Strategic Partner of BlueJeans Network for North Asia region in 2021. The Respondent does not provide or describe the terms of those partner arrangements. It argues that these certificates demonstrate that there is a cooperative relationship between the Parties but, even if that were true, nothing on the record indicates that the Respondent is entitled to pass itself off as the Complainant and operate a website that is presented as if it were the Complainant’s official website for China, as the Respondent has been doing. In any case, the Complainant alleges that there is no “Strategic Partner” tier level in the BlueJeans Partnership Program and the Respondent declined to reply to that allegation.
Accordingly, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case that it has no rights or legitimate interests in respect of the disputed domain name.
Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.
Therefore, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The disputed domain name was registered in 2016, after the registration of the BLUE JEANS trademark that is now owned by the Complainant. The disputed domain name incorporates the Complainant’s BLUE JEANS trademark, combining it only with the country name “China” and a gTLD suffix. The website to which the disputed domain name formerly resolved displayed the words “BlueJeans by Verizon” showing an awareness of both the trademark and its owner. The Respondent does not deny its awareness of the BLUE JEANS trademark; on the contrary, it argues that it has a cooperative relationship with the Complainant or its predecessor-in-title, or both. These facts give the Panel reason to find that the Respondent had the BLUE JEANS trademark in mind at the time that it registered the disputed domain name.
The disputed domain name was formerly used in connection with a website that was falsely presented as if it were the Complainant’s official website for China and that promoted BlueJeans products and services. While certain hyperlinks on the site may have redirected to the Complainant’s website, the contact details for product enquiries were in China and included an email address in the Respondent’s domain. In view of these circumstances and the findings in Section 6.2B above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website, as envisaged in paragraph 4(b)(iv) of the Policy.
The Panel notes that the use of the disputed domain name has changed and that it no longer resolves to any active website. This change in use does not alter the Panel’s conclusion; in fact, it may be a further indication of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bluejeanschina.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: June 19, 2021
