WIPO Domain Name Decision D2007-0934 for danfosi.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司

Case No. D2007-0934

1. The Parties

The Complainant is Danfoss A/S, Nordborg, Denmark, represented by internal representative, Denmark.

The Respondent is d7r9e1a1m/淄博丹佛斯测控仪表有限公司, Zibo, Shangdong, China.

2. The Domain Name and Registrar

The disputed domain name is registered with B, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2007. On June 27, 2007, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the domain name at issue. On July 3, 2007, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 12, 2007. 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”), 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 July 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 14, 2007. 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.

4. Factual Background

The Complainant, Danfoss A/S, is a multinational company and is in the business of research, development and production of mechanical and electronic components and solutions. The Complainant was founded in Denmark in 1933 and it manufactures and sells refrigeration and air-conditioning products, heating products, water control products, motion control and other products. Its products are sold and serviced on a worldwide basis by an international network of sales companies and distributors in more than 100 countries and regions.

Since 1994, the Complainant has established itself in China and has a manufacturing plant in Tianjin, a joint-venture in Anshan, sales companies in Shanghai, Hong Kong and sales offices in many major cities in China. Recently, the Complainant has also bought several companies in China and its annual net sales in China are estimated to be 1 billion RMB.

The Complainant is the registered trade mark owner of the DANFOSS mark in 97 countries worldwide and the first registration was obtained in Denmark on September 14, 1940 under registration no. VR 1940 00520. The DANFOSS word mark and logo are also registered in the European Union via OHIM. The trade mark is registered in classes 1, 6, 7, 9, 11, 12, 37 and 41. Since 1995, the Complainant has started to apply for trade mark registrations of the Danfoss, DANFOSS and 丹佛斯marks (“DANFOSS marks”) in classes 7, 9, 11 and 12 in China. All applications were approved and the marks are registered in China.

The Complainant has invested heavily on promoting the above DANFOSS marks and used the marks extensively on its products, product packages, advertisements, in documentaries and at exhibitions. The Complainant has also invested much on the electronic and online medium such as the Internet.

The disputed domain name was registered on October 28, 2003 by the Respondent d7r9e1a1m/淄博丹佛斯测控仪表有限公司. The company 淄博丹佛斯测控仪表有限公司 (Zibo Danfosi Control Instruments Co., Ltd.) was founded on March 18, 2003 and it manufactures and sells pressure transmitters, volume meters and digital display controllers. Consequently, Zibo Danfosi Control Instruments Co., Ltd. conducts commercial activities that are competitive and closely related to those of the Complainant’s.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is confusingly similar to the domain name and the DANFOSS marks in which the Complainant has rights. Furthermore, the word “danfosi” in the disputed domain name is confusingly similar to the Complainant’s Chinese trade mark 丹佛斯 because of the phonetic equivalent of the Complainant’s trade mark 丹佛斯 in China and the transliteration of 丹佛斯 into Latin script. Recently, the Beijing Second Intermediate People’s Court of the People’s Republic of China (No. 7913(2006)2nd Intermediate People’s Court, Civil, First Instance) stated that “danfosi” and “danfoss” are similar to each other and that the Respondent had no reasonable ground in using the registered domain name .

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

- No authorization has been granted by the Complainant to the Respondent to use the registered 丹佛斯(“danfosi”) as a domain name.

- Since “Danfoss” and “Danfosi” are confusingly similar to each other and misleading, the Respondent has no rights or legitimate interests in respect of the domain name.

- The word Danfosi is the Chinese phonetic equivalent of the Complainant’s registered trade mark 丹佛斯 because 丹佛斯 is pronounced Danfosi an the phonetic spelling, or Latin transliteration of 丹佛斯 in China is Danfosi. Thus, the Respondent has no rights or legitimate interests in respect of the domain name.

- The products displayed via “www.” are products which are in the same area of business as the Complainant and the purpose of the disputed domain name is therefore to intentionally attempt to attract for commercial gain Internet users and consumers to the website by creating a likelihood of confusion with the Complainant’s trade mark.

- The Respondent’s registration and use of does not and cannot constitute a bona fide offering of goods and services.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

The Respondent registered the domain name with the purpose of intentionally attempting to attract for commercial gain Internet users and consumers to the website by creating a likelihood of confusion with the Complainant’s trade mark 丹佛斯.

The Complainant’s trade mark 丹佛斯 is displayed on the webpage, which also creates a likelihood of confusion concerning the affiliation towards the Complainant.

The Respondent manufactures and sells pressure transmitters, volume meters and digital display controllers and thereby conducts commercial activities that are competitive and closely related to those of the Complainant’s. The Complainant contends that the Respondent’s intention in registering the disputed domain name which is equivalent to the Complainant’s trade mark 丹佛斯 has been to sell products similar to the Complainant’s. Consequently, the Complainant is deprived of earnings and at the same time the Respondent is exploiting the Complainant’s goodwill. The Complainant concludes that it is its firm belief that the disputed domain name has been registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was filed in the English language. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center informed by the concerned registrar that the language of the registration agreement for the disputed domain name is Chinese. In response to the Center’s communication in relation to the language of proceeding, the Complainant submitted a Chinese translation of the Complaint on July 12, 2007 to the Center and the Center proceeded to notify the Complaint.

(i) The Panel’s discretion under the UDRP

Paragraph 11 of the Rules provides:

“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.”

Thus, parties are at liberty to agree on the language of the administrative proceeding. In the absence of such an agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel reserves the right to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has exhausted all reasonable options to establish contact with the Respondent on this issue of the language of the proceeding.

Furthermore, the Complainant upon being notified by the Center that the language of the proceeding is Chinese has promptly submitted a Chinese translation of the Complaint to the Center within the stipulated time frame. The Respondent has then been notified of the Complaint and its contents in the Chinese language. The Complainant has alleged that the Respondent has no legitimate rights to the disputed domain name which is confusingly similar to the Complainant’s registered trade mark and that the Respondent has registered and used the domain name in bad faith. However, the Respondent has failed to respond to the Complainant’s contentions.

Under such circumstances it would not serve any useful purpose to either parties to continue this administrative proceedings in Chinese. In consideration of the present circumstances, the Panel hereby decides that, in accordance with paragraph 11 of the Rules, English shall be the language of the present administrative proceeding and the decision shall thus be rendered in English.

B. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. The domain name 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

C. Identical or Confusingly Similar

Having reviewed the documents adduced by the Complainant, the Panel is satisfied that the Complainant has established its rights in the DANFOSS marks in many countries including China. The Complainant has also registered the mark DANFOSS in the Chinese characters of “丹佛斯” in China. The English word “danfosi” is the transliteration of DANFOSS or “丹佛斯” in Han Yu Pin Yin (“汉语拼音”), the phonetic representation of the Chinese characters in English. Although the disputed domain name is visually different from the Complainant’s trade mark DANFOSS, it is nevertheless confusingly similar to the Complaint’s trade mark as the disputed domain name reproduces the Complainant’s trade mark DANFOSS phonetically in its entirety. Anyone who is conversant in the Chinese language is likely to conclude that DANFOSI probably refers to “丹佛斯” – the Chinese mark of DANFOSS. Comparing the disputed domain name and the Complainant’s mark, the Panel finds that they are confusingly similar.

The Panel thus finds for the Complainant on the first part of the test.

D. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “danfosi” in its business operations. In fact, the Chinese High Court has recently dismissed the Respondent’s appeal and ruled that the decision of the Beijing 2nd Intermediate People’s Court is to be upheld. In its judgment, the Chinese High Court has held that the mark 丹佛斯 or “danfosi” used by the Respondent is an infringement of the Complainant’s exclusive rights;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services and the fact that the use of the mark 丹佛斯 or “danfosi” by the Respondent has been conclusively ruled by a Chinese High Court to constitute an infringement of the Complainant’s exclusive rights cannot amount to a bona fide use of the domain name in relation to goods or services;

4. The Complainant and its trade mark DANFOSS enjoy a worldwide reputation with regard to its mechanical and electronic products which it manufactures and sells since as early as 1933. Consequently, in the absence of contrary evidence from the Respondent, the DANFOSS trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that the Complainant enjoys a long and widespread reputation in its DANFOSS trade mark with regard to its mechanical and electronic products since 1933. Both parties have been engaged in court actions over the use of the 丹佛斯 mark or “danfosi” term in China. The Panel finds that it is an undisputed fact that the Respondent has had actual notice of the Complainant’s trade mark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from the Respondent, the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.

In fact, the dispute between the Complainant and the Respondent over the use of the 丹佛斯 mark or “danfosi” term has resulted in a recent decision by the Beijing High Court of the People’s Republic of China (GMZZ No. 391(2007)). The High Court has ruled that “‘danfosi’ and DANFOSS are basically the same in spelling; although [the Respondent] claimed that ‘danfosi’ was Pinyin for the Chinese name, considering that the two marks are basically the same in pronunciation and figure, they constitute similar marks from an overall point of view.” Furthermore, the High Court ruled that the Respondent “has been advertising products including the infringing products in question through the domain name [], which tends to confusingly mislead the public as to the different service suppliers, and therefore constitutes infringement on the exclusive rights of Danfoss A/S.” Consequently, the High Court upheld the lower court’s decision that the Respondent shall cease using the domain name . The Panel finds that the Complainant has successfully established that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering products which are similar to the Complainant, i.e. pressure transmitters, volume meters and digital display controllers. Given the long and widespread reputation of the Complainant’s DANFOSS mark, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known and distinctive trade mark, intended to ride on the goodwill of the Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Potential partners and end users are led to believe that the website “www.” is either the Complainant’s Chinese site or the site of official authorized partners of the Complainant, while in fact it is neither of these. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s 丹佛斯 trade mark and this constitutes a misrepresentation to the public that the Respondent’s website is in one way or the other associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: August 28, 2007

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