WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Dow Chemical Company v. Hwang Yiyi Case No. D2008-1276 1. The Parties
The Complainant is The Dow Chemical Company, Midland, Michigan, United States of America, represented by the Gigalaw Firm, United States of America.
The Respondent is Hwang Yiyi, Jiangmen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 35 Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2008. On August 21, 2008, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the domain name at issue. On August 28, 2008, 35 Technology Co., Ltd. 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 dated August 28, 2008 by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 2, 2008. The Center verified that the Complaint and 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 September 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 26, 2008.
The Center appointed Douglas Clark as the sole panelist in this matter on October 7, 2008. 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.
The Complaint was filed in English, while the registrar confirmed to the Center that the registration agreement concerning the disputed domain name is in Chinese. On August 28, 2008, the Center notified the Parties in English and Chinese that the Complainant and the Respondent would both be given an opportunity to submit comments on the Complainant's language request, the Complainant being granted five days from the date of notification and the Respondent seven days. Among other things, the Respondent was requested to submit any comments, objections and any supporting materials as to why the proceedings should not be conducted in English, otherwise the proceedings would go forward on the basis that the Respondent had no objection to the Complainant's request that English be the language of the proceedings. The Center acknowledged the receipt of the additional submission by the Complainant to request the language of the proceedings be in English and kindly reminded the Respondent concerning the language of the proceedings on September 2, 2008. The Respondent did not file any objections to the language request within the specified due date of September 4, 2008. On September 5, 2008, the Center notified the Parties by email in English and Chinese inter alia:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response filed in either Chinese or English;
3) appoint a panel familiar with both languages mentioned above, if available.”
The Center also notified the Parties that the discretion to decide the language of the proceedings lay with the Panel to be appointed. The Panel's decision on the appropriate language is set out in the Discussion and Findings section below. 4. Factual Background
The Complainant is a diversified chemical company incorporated in 1897. The Complainant delivers a broad range of products and services to customers in approximately 160 countries, connecting chemistry and innovation with the principles of sustainability to help provide everything from fresh water, food and pharmaceuticals to paints, packaging and personal care products. The Complainant (or its affiliates) owns a number of registrations in numerous countries or geographic regions worldwide including China for trademarks and domain names that consist of the mark DOW or variations thereof.
The Respondent registered the disputed domain name on April 15, 2007. The domain name resolves to a website providing products and services in connection with “the chemical industry, the coating, the plastic and the agricultural use of product of chemical industry and the service”. 5. Parties' Contentions A. Complainant
The Complainant contends the following: Identical or confusingly similar
The Complainant relies in this regard on the following UDRP decision reading:
“[T]he fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy…”. Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
The Complainant further states that the addition of the letters “cn”, an abbreviation for the geographic designation “China”, to the domain name in addition to the DOW trademark does nothing to alleviate confusing similarity for purposes of Policy. If anything, the use of such a geographic word actually increases the confusing similarity. See, e.g., Mastercard International Incorporated v. Yuan Zhou,WIPO Case No. D2008-0196; Dr. Ing. h.c. F. Porsche AG v. feng feng / no,WIPO Case No. D2006-0257; Six Continents Hotels, Inc. v. Domain Park Limited,WIPO Case No. D2007-0313. Rights or Legitimate Interests
The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the DOW trademark in any manner. (See Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272; Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098; Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610).
The Respondent has no legal rights to use and has never used or made preparations to use, the domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent is using the domain name in connection with a website that offers goods and services that compete with the goods and services offered by the Complainant under the DOW trademark, and because the website is in Chinese, the Respondent's use specifically targets the Complainant's Chinese operations. In addition, given the Complainant's established use of the DOW trademark for 111 years, it is unlikely that the Respondent is commonly known by the domain name. The Complainant cites several UDRP decisions to prove the above contentions. (See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246; Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et. al., NAF Case No. FA117876).
The Respondent is not making a legitimate non commercial or fair use of the domain name, rather, the Respondent is using the domain name to direct consumers to a website that offers goods and services that compete with those of the Complainant. Registered and Used in Bad Faith
The Respondent is using the domain name in connection with a website that offers goods and services competitive with those offered by the Complainant, and describes it using text that could describe the Complainant. This usage clearly indicates that the Respondent “intentionally uses the domain name… aiming to profit from the Complainant's renowned trademark by attracting Internet users. The confusion created by the domain name makes potential customers to choose other services than the Complainant's, disrupting the Complainant's business.” Six Continents Hotels, Inc. v. NA InterMos,WIPO Case No. D2006-1313.
In addition, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the DOW trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website, in violation of paragraph 4(b)(iv) of the Policy.
The Respondent must have known of the Complainant's DOW trademark when it registered the domain name because the DOW trademark is internationally recognized mark that has been used for 111 years. The prior trademark registration of the Complainant predating the Respondent registering the domain name and the obvious connection between the DOW trademark and the Complainant are strongly suggest that the Respondent has registered and is using the domain name in bad faith.
The Complainant therefore requests that the disputed domain name be transferred in its favour. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The domain name registration agreement is in Chinese. Pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e. the default language of the proceedings shall be Chinese. However, the Complainant upon receiving the Notification of Language of Proceeding from the Center submitted a supported request as to why the proceedings should proceed in English.
Below is a summary of the Complainant's arguments regarding the Language of Proceeding.
a. According to ICANN's InterNIC website, the registration agreement is in English, unless the Registrar provides to the Center a registration agreement being in Chinese.
b. Given that the Registrar itself has been proven to be a cybersquatter in at least two previous proceedings under the Policy, the legitimacy of the registration agreement provided by the Registrar needs to be tested.
c. Even if the Panel rejects the above arguments, the current proceeding should be conducted in English because of the consensus view of UDRP decisions under the Policy holding that “in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.”
d. The domain name is in English and the website the domain name in connection with has a prominent portion in English. In this regard, the Complainant relies on the following UDRP decisions to prove that the proceedings should go forward in English. (See SWX Swiss Exchange v. SWX Financial LTD,WIPO Case No. D2008-0400; General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi,WIPO Case No. D2007-0645; and Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
Although the Center had made a preliminary determination to accept the Complaint filed in English, pursuant to paragraph 11 of Rules, the Panel is granted discretion to determine the language of proceedings having regard to the circumstances of the case. The Panel may choose to write a decision in either language, or request translation of either party's submissions after taking into account the fairness to both parties in their abilities to prepare the necessary documents and present the case.
The Panel has reviewed the submitted arguments above, and finds that the first two arguments are not determinative as to the request that the proceedings be conducted in English, since the registration agreement provided by the Registrar and verified by the Center is in Chinese. The Panel accepts the registration agreement is in Chinese.
The Panel notes that a practical policy or exception to the general language requirement set in paragraph 11(a) of the Rules and held by the majority of panels is that “in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.” In this case, from the printout of “company profile” of the Respondent's website under the domain name, the Respondent states that its headquarters is located in the United States and that it has more than 80 offices and 50 production bases worldwide and provides goods and services in about 175 countries around the world. Therefore, the Panel considers it is appropriate to conclude that the Respondent has the sufficient capability to communicate and conduct business in English.
The Panel also notes that the Respondent has failed to file any Response either to the Complaint or to a specific invitation to comment or object to the Complainant's language request. Indeed, in the Panel's view a respondent's failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the complaint. The Panel has considered this Policy issue in more details in its decision in Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191.
As noted, the Respondent claims to be a multinational company headquartered in the United States and can be presumed be competent in English and should not be disadvantaged or suffer any prejudice from the present case proceeding in English. Therefore, the Panel finds that in the circumstances of this case, paragraph 11 of Rules is best served by allowing the proceedings to be conducted in English. 6.2 Substantive Elements of the Policy
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The domain name is identical or confusingly similar to the Complainant's trademark or service mark; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant submitted numerous registration certificates for trademark DOW registered in the United States and China, and a table of all the trademark registrations incorporating the mark DOW around the world including China. The Complainant also submits a list of thousands of domain names containing the DOW mark or variations thereof. The Panel also notes that the distinctive element of the Complainant's name “The Dow Chemical Company” is also the mark DOW which is always used to designate the Complainant and universally recognized as the symbol of the Complainant. Therefore, the Panel has no hesitation in finding that the Complainant has trademark rights in the mark DOW.
Comparing the disputed domain name and the mark DOW, it is obvious that the domain name embodies the Complainant's mark DOW in its entirety and only deviates from the mark with the addition of a geographic indicator “cn” as a prefix. The Panel finds that the distinctive and prominent element of the disputed domain name is the term “dow” the trademark and symbol of the Complainant. The Panel notes that a number of UDRP panels have hold that a domain name with a mere addition of a geographic term to a mark does not negate the confusingly similarity between the domain name and the mark. (See Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768). The Panel accepts the Complainant's argument and cited UDRP decisions in this regard and finds that the composition of the domain name is likely to mislead the consumers into thinking that the goods and services in connection with the domain name originate from the Complainant or it is the Complainant's business developed specifically for the Chinese market.
Therefore, the Panel finds that the disputed domain name with the addition of a geographical indicator as a prefix to the Complainant's mark DOW is confusingly similar to the Complainant's mark and is likely to cause consumer confusion.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Absent a Response from the Respondent, the Panel accepts the Complainant's claim that the Complainant has never assigned, granted, licensed or in any way authorized the Respondent to register or use the DOW mark or to register or use any domain name incorporating any trademarks of the Complainant.
In this case, pursuant to paragraph 4(c) of the Policy, either the bona fide offering of goods or services in connection with the domain name or the Respondent having been commonly known by the domain name, if found by the Panel, will prove the Respondent's legitimate interests to the domain name. With respect to the bona fide offering, the Panel notes from the printouts of the website under the domain name that the company on this website is described as being very similar to the Complainant. Taking into account the confusingly similarity between the domain name and the mark DOW, the Panel believes that the Respondent intends to mislead the consumers into thinking that the Respondent has some kind of business relationship with the Complainant or it is the Complainant in China. Considering the Complainant's numerous trademarks and domain names consisting of mark DOW and its established reputation for the DOW mark for over 100 years, it is clear that the mark DOW has a strong connection with the Complainant. It is unlikely that the consumers will not associate the mark DOW with the Complainant. In fact, no evidence of record could demonstrate that the Respondent has been commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services.
Therefore, the Panel has not found any evidence to suggest that the Respondent has rights or legitimate interests in the domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
On the basis of the above findings and the worldwide fame of the DOW mark, in particular, the Respondent using the domain name on a website purporting to conduct business in direct competition with the Complaint, the Panel has no doubt that the Respondent registered the domain name with an actual knowledge of the Complainant and its well-known registered trademark DOW. Therefore, the Panel concludes that the Respondent has registered the domain name in bad faith.
Since no plausible explanation can be found why the Respondent has adopted a domain name that is confusingly similar to the mark DOW to conduct business in direct competition with the Complainant, the Panel finds that the Respondent is using the domain name intentionally to unfairly attract business by creating a likelihood of confusion with the Complainant's mark.
Therefore, the Panel finds that the Respondent has registered and is using the domain name in bad faith. 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.
Douglas Clark
Sole Panelist
Dated: October 22, 2008
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