WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kompass International Neunschwander SA v. Wangyixi, Wang yixi Case No. D2008-1838 1. The Parties
The Complainant is Kompass International Neunschwander SA of Courbevoie, France, represented by Osborne Clarke of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Wangyixi, Wang yixi of Fuzhou, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2008. On December 1, 2008, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On December 3, 2008, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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”).
Pursuant to a notification by the Center on the language of the proceedings, the Complainant requested on December 3, 2008 that English be the language of the proceedings. The Respondent did not respond to the notification.
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 December 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2009.
The Center appointed Soh Kar Liang as the sole panelist in this matter on January 15, 2009. 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 operates a franchise network which provides locally collected business information via its websites and physical publications on over 65 countries including China and has been in operation for over 60 years. The Complainant's worldwide turnover for 2008 was about EUR70 million (including EUR1.5 million in Asia). The collected data is assigned according to a classification system processed by 70 employees worldwide.
The Complainant holds trade mark registrations worldwide including the following (the “KOMPASS Trademarks”):
Country
Registration No
Trade Mark
Class
Registration Date
China
1062944
康帕斯K
16
19 January 1996
China
G640041
K KOMPASS
9, 16, 35
21 June 1995
China
1125270
康帕斯K KOMPASS
9
13 September 1996
China
1575924
康帕斯K KOMPASS
35
21 May 2001
China
G664595
KOMPASS
9, 16, 35
27 November 2006
China
70092
KOMPASS & device
16
21 March 2002
China
1524671
康帕斯
16
6 December 1999
China
1091534
康帕斯
35
19 January 1996
China
1125274
康帕斯
9
12 September 1996
UK
791039
KOMPASS
16
19 May 1959
UK
1514230
KOMPASS
9
21 October 1994
The Complainant also owns the following domain names (the “KOMPASS Domain Names”):
Domain name
Registration Date
10 May 1997
17 March 2003
.cn
7 April 2000
11 March 1998
30 May 1996
The Complainant has been using the KOMPASS Trademarks in China since 1994. The first use in China was on a printed company information book in 2 volumes. The Complainant's Chinese franchisee is represented by Kompass (China) International Information Service Co Ltd began operations in December 2000 and which operates online through websites at “www.” and “www..cn” and via various physical publications. There are currently 818,048 Chinese companies listed on “www.”.
The Respondent registered the disputed domain name on April 1, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that:
(1) The disputed domain name is confusingly similar to the KOMPASS Trademarks and the KOMPASS Domain Names. In particular, the disputed domain name is identical to the most distinctive and prominent component, namely the word KOMPASS which is a well-known mark. The disputed domain name conveys a strong impression of sponsorship or association with the Complainant;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent was founded in 2008 according to the website to which the disputed domain name resolves and the registration date of the disputed domain name post-dates the KOMPASS Trademarks, KOMPASS Domain Names and incorporation of the Complainant's Chinese franchisee. The Respondent has not demonstrated use of the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has not been commonly known by the disputed domain name and the Complainant did not consent to, license, or otherwise authorise the Respondent to use or register the disputed domain name; and
(3) The disputed domain name was registered and is being used in bad faith. The Respondent owns no trademark or other rights in the KOMPASS Trademarks or any similar mark. The website resolved from the disputed domain name is used to market and sell replica and/or counterfeit goods and demonstrates bad faith use. The Respondent is additionally intentionally attempting to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the KOMPASS Trademarks as to source, sponsorship, affiliation or endorsement. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
As the Registration Agreement was in Chinese, the language of the proceedings would generally have been Chinese. Nevertheless, the panel is entitled to determine the language of the proceedings having regard to the circumstances, including fairness to the parties, potential costs and delay to the proceedings and burden to the parties (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. Ltd., WIPO Case No. D2008-0293).
The Complainant supports the request for English to be the language of the proceedings as follows:
(1) The Complainant has been communicating with the Registrar of the disputed domain name in English; and
(2) The website to which the disputed domain name resolves is in English and evidences the Respondent's familiarity with English. There is no use of Chinese at the website.
The fact that the Complainant has been communicating with the Registrar in English per se is not sufficient reason for the proceedings to be in English. However, it does corroborate the obvious preference and better familiarity of the Complainant with the English language as opposed to the Chinese language.
The rationale behind the default language of the proceedings under paragraph 11(a) of the Rules is clearly intended to ensure that domain name holders are not prejudiced by an unfamiliar language in a domain name dispute. The mischief intended to be addressed by paragraph 11(a) of the Rules does not appear to exist in the current situation. The Respondent's choice of English (to the exclusion of Chinese) for the content of the website to which the disputed domain name resolves demonstrates the Respondent's likely English competence. Coupled with the failure and/or refusal of the Respondent to file a Response or even reply to the Center's notification on the language of the proceedings, there does not appear to be any benefit to either party for this Panel to impose a blind adherence to the default language under paragraph 11(a) of the Rules. Instead, it could clearly be burdensome on the Complainant and no doubt cause inordinate delay if Chinese were to be the language on the proceeding.
In view of the circumstances, this Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings. 6.2 Decision
Paragraph 4(a) of the Policy requires the complainant to satisfy the panel that:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The KOMPASS Trademarks are owned by the Complainant and precede the registration of the disputed domain names by several years. The KOMPASS Trademarks are accordingly trademarks in which the Complainant has prior rights. Further, the KOMPASS Domain Names which also precede the disputed domain names may be seen as signs capable of distinguishing the Complainant's goods and services from that of others and; in the Panel's view, may be regarded as trademarks (albeit not registered as such) in which the Complainant has rights.
This Panel is of the view that the addition of the descriptive suffix “trade” to the word “kompass” does not serve to distinguish the disputed domain name from the KOMPASS Trademarks and the KOMPASS Domain Names. This position is consistent with numerous panel decisions confirming that unless such combinations are capable of being sufficiently distinguished from the complainant's trademark, confusing similarity may be established (e.g. PM-International AG v. Man Utd Club,WIPO Case No. D2008-1432; Playboy Enterprises International Inc . v. Joao Melancia,WIPO Case No. D2006-1106; Philip Morris USA Inc. v. ADN Hosting,WIPO Case No. D2007-1609). The disputed domain name does convey a reasonable impression of sponsorship or association with the Complainant. There are no special circumstances in this case to depart from these established principles.
In the circumstances, this Panel finds that the disputed domain name is not sufficiently distinguishable from and is confusingly similar to the KOMPASS Trademarks and KOMPASS Domain Names. B. Rights or Legitimate Interests
The website to which the disputed domain name resolves describes the company “Kompass Trade Co., Ltd” as having been founded in 2008 and appears to portray “Kompass Trade Co., Ltd” as the owner of the website. The Complainant asserts that “Kompass Trade Co., Ltd” is a trade name of the Respondent. No Response has been filed and no contrary assertion exists in these proceedings.
The Respondent could have argued (but failed to do so since no Response was filed) that the trade name of the Respondent is “Kompass Trade Co., Ltd”, and therefore the Respondent has some right to register a domain name incorporating the word “kompasstrade” and the like. In the opinion of the Panel, such right, if it exists, must be properly based. Unfortunately, there is only a bare reference to the trade name “Kompass Trade Co., Ltd” on the website to which the disputed domain name resolves. There is no evidence that “Kompass Trade Co., Ltd” is an officially approved company name. Neither is there any indication on the record that the Respondent is commonly known by or is making a bona fide provision of services and goods in connection with the name “Kompass TradeCo., Ltd”.
There is no evidence to suggest that the Respondent has legitimately adopted the trade name. On the other hand, the Complainant has established trademark rights in China including in Class 35 under which retail store services are classified. The Complainant also asserts that the Complainant did not consent to, license, or otherwise authorise the Respondent to use or register the disputed domain name. Based on the foregoing (and the absence of contrary evidence), the Panel accepts that the Complainant did not consent to, license, or otherwise authorise the Respondent to use or register the disputed domain name and the use of the trade name “Kompass Trade Co., Ltd”.
In the circumstances, the Complainant has shown an uncontested prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, as such, the Panel finds that the Complainant has satisfied the second element. C. Registered and Used in Bad Faith
The Policy does not exhaustively list all possible examples of bad faith registration and use of a domain name. The experience of earlier panels has built on the non-exhaustive instances of bad faith registration and use expressly identified under the Policy.
In particular, the purported sale or offer for sale of counterfeit goods on a website resolved from a domain name has been acknowledged to raise a significant inference of bad faith use and registration of that domain name (ie, Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552; Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019). Unfortunately, the pervasiveness of personal Internet access makes it the perfect tool for exploitation by trademark counterfeiters. The World Wide Web and the domain name system should not be used as a platform for the perpetration of trade mark infringement. Abuse of the domain name system for such dishonest and illegal purposes should be stopped. Unless cogent reasons are provided in the face of evidence of purported sale or offer for sale of counterfeit goods to the conduct, the inference of bad faith use and registration must stand.
The website to which the disputed domain name resolves points to “Kompass Trade Co., Ltd” (and accordingly the Respondent) being a provider of counterfeit goods. Surprisingly suspicious aspects of the website include the following:
(a) The title of the website states “Replica Designer Purses buy and sell taobao China”;
(b) The source code of the website contains a meta-tag which states “… knock off handbags … copy replica, exact replica, designer replica, mirror image …”
(c) The source code of the website contains a meta-tag which states “… we are devoted to the retail and wholesale of AAA+++(99.9% mirror copy) Designer bags”
In the absence of a Response, the above strongly suggests that the disputed domain name was chosen to attract Internet users to the Respondent's website because of its confusing similarity to Complainant's KOMPASS Trademarks and is being used as a platform for sale or offer for sale of counterfeit goods. No Response having been filed to address the inference of bad faith use and registration which has been raised, this Panel determines that the disputed domain name is used and registered 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.
Soh Kar Liang
Sole Panelist
Dated: January 29, 2009
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