WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Cresa Partners LLC v. 上海恺信投资咨询有限公司 Case No. D2009-1133 1. The Parties
The Complainant is Cresa Partners LLC of Boston, Massachusetts, United States of America.
The Respondent is 上海恺信投资咨询有限公司 of Shanghai, the People's Republic of 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 25, 2009. On August 25, 2009, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name. On August 26, 2009, 35 Technology Co., Ltd. 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 August 27, 2009 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 amended Complaint on August 27, 2009.
On August 27, 2009, the Center transmitted an email to the parties in English and in Chinese concerning the language of the proceeding. The Complainant included in the Complaint a request that English 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 amended 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 proceedings commenced, on September 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 24, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent's default on September 28, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on September 30, 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 United States company and the owner of various registrations for the trade marks CRESA, CRESA PARTNERS, CRESA PARTNERS & Design and CRESA TRAC in the United States of America, Canada, the European Union, Hong Kong, SAR of China, Australia and India (“the Trade Marks”). The Complainant is also the applicant for registration of the trade mark CRESA PARTNERS in China (in respect of three separate pending applications, filed in December 2005).
The Complainant is also the owner of the domain name , registered since March 1998, and used in connection with the Complainant's website since August 1999. B. The Respondent
The Respondent is an entity apparently with an address in China.
The disputed domain name was registered on March 31, 2008. 5. Parties' Contentions A. Complainant
The Complainant is one of the fastest-growing real estate firms in the United States of America, and one of the largest real estate firms in the world. The Complainant has built up substantial value and goodwill in the Trade Marks.
Since March 2006, the Complainant, through its authorised licensee, Cresa Partners China Limited (“Cresa China”), has offered its real estate services in China. The Complainant's licence to Cresa China does not confer on the licensee the right to register domain names incorporating the Trade Marks.
From January 2007 until August 2008, Cresa China entered into a limited sub-licence with 上海恺信投资咨询有限公司 (Shanghai Kai Xin Consulting Co., Ltd.) (“Shanghai Kai Xin”) for the use of the Trade Marks in China. The sub-licence was limited to the provision of certain real estate services to the Complainant's clients. The sub-licence did not confer on Shanghai Kai Xin the right to register domain names incorporating the Trade Marks.
The individual listed under the WhoIs search for the disputed domain name, Cindy Lu, was until September 2008 an employee of Shanghai Kai Xin.
The disputed domain name was registered without the consent of the Complainant.
The website to which the disputed domain name is resolved (“the Website”) refers to “Cresa International” and claims that Cresa International was founded in the United Kingdom in 1998. The Website offers real estate services and states that Cresa International is headquartered in Shanghai, China.
(1) The Disputed Domain Name is Confusingly Similar to the Trade Marks
The disputed domain name is confusingly similar to the Trade Marks, as it incorporates the CRESA trade mark in its entirety with the addition of the letters “int”, a common abbreviation for the word “international”.
(2) The Registrant has no Rights or Legitimate Interests in the Disputed Domain Name
The Respondent has no rights or legitimate interests in the disputed domain name and the Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered in breach of the sub-licence agreement between Cresa China and Shanghai Kai Xin.
The Respondent has not made a legitimate non-commercial or bona fide fair use of the disputed domain name, and is using the disputed domain name to divert Internet traffic to the Website, where competing real estate services are advertised.
(3) The Respondent Registered and is Using the Disputed Domain Name in Bad Faith
The Respondent's Cindy Lu is a former employee of Shanghai Kai Xin and must have had actual knowledge of the Complainant's rights in the Trade Marks when the disputed domain name was registered.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trade Marks.
The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trade marks in a corresponding domain name.
The Respondent has registered and used the disputed domain name in order to disrupt the Complainant's business. 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 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. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that 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 for the following reasons:
(1) The disputed domain name is an English language domain name;
(2) The contents of the Website are entirely in English;
(3) The Website claims that Cresa International was founded in the United Kingdom;
(4) All of the above suggests the Respondent is quite adept in the English language; and
(5) The Complainant is not in a position to conduct the proceeding in the Chinese language without a great deal of additional expense and delay.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
On August 26, 2009, 35 Technology Co., Ltd. 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).
The Panel finds that persuasive 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).
However, the Panel does not agree with the contentions of the Complainant that conducting the proceeding in the Chinese language would cause a great deal of additional expense and delay.
Nonetheless, on balance, and 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.
The Panel further notes that the Center has throughout the proceedings issued its case-related communications with the parties in both English and Chinese.
Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name comprises the CRESA 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 the disputed 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).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The addition of the additional letters “int” does not serve to distinguish the disputed domain name in any way. In the present circumstances, these additional letters used in the disputed domain name should be disregarded in determining the question of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's CRESA 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:
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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 trademark 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 Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by approximately 15 years. The Complainant has therefore established a prima facie case that the Respondent has no rights or 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 Complainant has asserted that the Website to which the disputed domain name was previously resolved was used by the Respondent to market unauthorised, counterfeit goods. There can be no legitimate interest in the sale of counterfeits (Lily ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
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 produce any evidence to establish its 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 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 CRESA trade mark in the disputed domain name and the promotion of various real estate services under the name “Cresa International” and in competition with the Complainant and its Chinese licensee, Cresa China, 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.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
The Panel also finds that the Respondent's registration and use of the disputed domain name has caused disruption to the Complainant's business in contravention of paragraph 4(b)(iii) of the Policy.
Having found in favour of the Complainant under paragraphs 4(b)(iv) and 4(b)(iii) of the Policy, the Panel need make no finding with respect to the Complainant's allegation that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, under paragraph 4(ii) of the Policy.
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 domain name, , be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: October 13, 2009
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