WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Truper Herramientas, S.A. de C.V. v. yongchangguojijinchukouyouxiangongsi / chenyuanfu Case No. D2009-0912 1. The Parties
The Complainant is Truper Herramientas, S.A. de C.V. of Jilotepec, Estado de Mexico, Mexico.
The Respondent is yongchangguojijinchukouyouxiangongsi / chenyuanfu of Taizhou City, Zhejiang Province, 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 July 8, 2009. On July 8, 2009, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On July 9, 2009, 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 for the disputed domain name. On July 13, 2009, the Center transmitted an email to the parties in Chinese and in English regarding the language of the proceeding. In response to a notification by the Center concerning the details of the Respondent, the Complainant filed an amendment to the Complaint on July 17, 2009 naming both yongchangguojijinchukouyouxiangongsi and chenyuanfu as the Respondent. On July 18, 2009 the Complainant submitted a request that English, or alternatively Spanish, be the language of the proceeding. The Respondent did not file any submissions with respect to the language of the proceeding by the due date.
The Center has verified that the Complaint together with the amendment to the Complaint satisfies 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 12, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent's default on August 13, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on August 20, 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 A. The Complainant
The Complainant is a Mexican company and the owner of trade mark registrations for the TRUPER trade mark in China, Chile, Mexico, the United States of America and many other countries around the world (the “Trade Mark”). B. The Respondent
The Respondent is a company or individual apparently with an address in China.
The disputed domain name was registered on November 29, 2008. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint.
A. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The disputed domain name completely contains the Trade Mark which is used to protect tools in China, Chile, Mexico, the United States of America and many other countries around the world.
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent is not using the disputed domain name with legitimate interests or rights. The Respondent is using the disputed domain name to confuse the consumer pretending to be the owner of the Trade Mark. The Respondent is also selling tools that are not manufactured by the Complainant while taking advantage of the name of the Trade Mark to sell its own products. This is confusing the consumer since the Respondent has no authorisation from the Complainant to use the Complainant's name and Trade Mark.
C. The disputed domain name was registered and is being used in bad faith
The disputed domain name was obviously registered and is being used in bad faith. The latter can be proved by the dishonest way in which the Respondent is using a worldwide registered trade mark to confuse the market pretending that the tools it sells are manufactured by the Complainant, or that the Respondent has a relationship with or authorisation from the Complainant. Moreover, the web page under the disputed domain name has an illogical mixture and usage of languages - Spanish, Chinese and English - which are obviously part of an apocryphal web page that is trying to benefit from the Truper name in Chile (where the Respondent is supposedly incorporated according to the web page), China (since there are many products described in Chinese on the web page, and Chinese is the country of the Respondent), and the United States of America since the Respondent is using a gTLD. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding and, if English is not possible, Spanish, for the following reasons:
(1) The IP address for the disputed domain name is inside the USA, which is an English speaking country;
(2) The website to which the disputed domain name is resolved states that the Respondent has “new products” in English;
(3) The website to which the disputed domain name is resolved states that the Respondent is based in Chile, which is a Spanish speaking country;
(4) Most of the contents of the website to which the disputed domain name is resolved is in Spanish;
(5) English is a widely-known language and it would be easier for everyone to communicate in English;
(6) It is a common excuse for cybersquatters and intellectual property violators to seek shelter on a local language to add obstacles to a procedure;
(7) It is illogical to register a top level domain name under a Chinese language policy for a company based in Chile that makes business inside Latin America with an IP address in the USA.
The Respondent did not make any submissions with respect to the language of the proceeding by the due date.
On July 9, 2009, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the language of the registration agreement is Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
There is no evidence that the Respondent does not understand the English language.
The disputed domain name comprises romanised latin script and is not a Chinese language domain name.
The website is predominantly in Spanish language, with some use of English language, and no use of Chinese language.
No evidence has been filed to suggest that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding if English is the language of the proceeding.
The Panel finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding.
Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding. 6.2 Decision
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The disputed domain name is identical with or confusingly similar to a trade mark 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 Panel finds that the Complainant has rights in the Trade Mark acquired through registration and use.
The disputed domain name comprises the Trade Mark in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) before any notice to the Respondent of the dispute, 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
(2) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate non-commercial 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 Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration and use of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The evidence shows that the Respondent has intentionally registered and used the disputed domain name for the purpose of attracting, for commercial gain, users to the Respondent's website to which the disputed domain name is resolved (the “Website”).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to rebut the Complainant's prima facie case and to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
By virtue of the use of the Trade Mark in the disputed domain name and the promotion of various tools and tooling products on the Website, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website, particularly because the Trade Mark has been registered and used by the Complainant in respect of tools and tooling products for many years.
The Panel notes that, whilst the Website contained certain Chinese language links as well as content predominantly in Spanish language on July 7, 2009 (as evidenced in the exhibits filed with the Complaint), as of the date of the Decision the Website is no longer using Chinese language, and is entirely in Spanish language, other than the use of certain English words such as “copyright”, “new products” and “more”.
The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: August 24, 2009
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