WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Starbuzz Tobacco, Inc. v. Wenzhou Horizon Culture Media Co. Ltd. Case No. D2010-0251 1. The Parties
The Complainant is Starbuzz Tobacco, Inc. of Anaheim, California, United States of America, represented by The Patel Law Firm, P.C., United States of America.
The Respondent is Wenzhou Horizon Culture Media Co. Ltd. of Wenzhou, Zhejiang, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name (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 February 18, 2010. On February 19, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On February 23, 2010, 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. On February 23, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On February 24, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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”).
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 March 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2010.
On March 5, 2010, the Respondent sent an email in Chinese to the Center (which the Center forwarded to all parties) which translates to English as “We have no problem transferring to you. We do not require this domain name”.
On March 16, 2010, the Complainant submitted a request to suspend the proceedings. On the same day, the Center notified the Suspension of the proceedings to the parties and the concerned Registrar. On April 12, 2010, the Complainant submitted a request to reinstitute the proceedings. On April 13, 2010, the Center confirmed that the proceedings had been reinstituted and the due date for Response was April 18, 2010.
On April 13, 2010, the Respondent sent an email in English to the Complainant and the Center attaching an undated signed domain name transfer agreement in English wherein the Respondent agreed to transfer the Disputed Domain Name to the Complainant and provide any assistance necessary to complete the transfer. On April 15, 2010, the Complainant requested the Respondent among other administrative items to obtain from the Registrar and forward to the Complainant the authorization code to transfer the Disputed Domain Name pursuant to the agreement. On April 17, 2010, the Complainant reminded the Respondent to provide the requested assistance. No Response or further correspondence was received by the Center from the Respondent by April 19, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 28, 2010. 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 is in the business of manufacturing and distributing tobacco products. The Complainant has used the trade marks STARBUZZ and STARBUZZ TOBACCO on its products since at least 2005.
The Complainant owns trade mark registrations for the trade mark STARBUZZ in International Class 34 including the following: Jurisdiction TM No. Filing Date
United States 3113110 February 23, 2005
United States 3653296 May 7, 2008
China 7097307 December 5, 2008
European Union 007394951 November 15, 2008
The Complainant has also owned the domain name since March 12, 2004.
The Respondent registered the Disputed Domain Name on April 25, 2009. The Complainant is unable to find any Internet website to which the Disputed Domain Name resolve. The Respondent has indicated that it does not require the Disputed Domain Name and is willing to transfer it. The Respondent purported to transfer the Disputed Domain Name to the Complainant pursuant to an undated agreement. However, the Respondent did not respond to the Complainant's request for administrative assistance in the transfer of the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant contends that:
(a) The Disputed Domain Name is confusingly similar to the trade mark STARBUZZ and the Complainant's domain name ;
(b) The Respondent has no legitimate right to use the trade mark STARBUZZ or legitimate interests to use the Disputed Domain Name. The Complainant has never granted the Respondent any rights to the Disputed Domain Name; and
(c) The Respondent has at least constructive notice of the Complainant's superior rights to the trade mark STARBUZZ and the Respondent registered the Disputed Domain Name with the intent to misappropriate the goodwill of the trade mark STARBUZZ. The Respondent's intent to transfer the Disputed Domain Name for valuable consideration shows bad faith. The Respondent's lack of use of the Disputed Domain Name shows that the Respondent is squatting on the Disputed Domain Name. B. Respondent
Apart from providing an undated transfer agreement and indicating by email that it does not require the Disputed Domain Name which it is willing to transfer, the Respondent did reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The language of the registration agreement is Chinese. The default language of the proceeding is accordingly Chinese. However, having regard to fairness to the parties and procedural cost-efficiency and expedition, this Panel is entitled to determine that the language of the proceeding is otherwise under paragraph 11(a) of the Rules.
This Panel hereby determines that the language of the proceeding shall be English. In coming to this conclusion, this Panel is influenced by the following factors which show that it would serve no discernible purpose or benefit to adhere to the default language of the proceeding:
(1) The Complainant has requested that English be the language of the proceeding;
(2) The Complainant and its representative are not conversant with Chinese and will face significant difficulty participating in the proceeding;
(3) The Complaint is submitted in English and requiring the Complainant to translate the Complaint into Chinese will necessarily lead to substantial cost to the Complainant and procedural delay;
(4) The Respondent is able to communicate in English as is evident from the emails sent by the Respondent in this proceeding and the signed domain name transfer agreement; and
(5) The Respondent has not contested the proceeding and/or replied to the Complainant's contentions. 6.2 Discussion
To succeed in this proceeding, the Complainant must show that:
(1) The Disputed Domain Name is identical 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 Complainant clearly has trade mark rights in the trade mark STARBUZZ in view of the trade mark registrations for the same. The Disputed Domain Name incorporates the trade mark STARBUZZ in its entirety. The only difference between the Disputed Domain Name and the trade mark STARBUZZ is the suffix “smoking”. There is no doubt that the word “smoking” is descriptive of tobacco goods in International Class 34.
It is trite principle established by innumerous past panel decisions that a domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes and/or suffixes is generally confusingly similar to the trade mark (e.g., Chanel Inc. v. Dong Jiancai,WIPO Case No. D2010-0144). There are no special circumstances in the present circumstances to suggest that this principle should not be applied.
Therefore, applying this principle, this Panel holds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark STARBUZZ and the Complainant has satisfied the first limb of paragraph 4(a). B. Rights or Legitimate Interests
The Complainant has rights in the trade mark STARBUZZ and has denied any grant of any rights to the Respondent thereto. The lack of reply to the substantive allegations of the Complainant despite the Respondent clearly appreciating fully the import of the proceedings suggests that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. More importantly, when faced with the proceedings, the Respondent has admitted in writing that it does not require the Disputed Domain Name. This Panel is led to conclude from the Respondent's action that it has no interest, whether legitimate or otherwise, in the Disputed Domain Name.
Since the Respondent has neither claimed any right to nor exhibited any legitimate interest in the Disputed Domain Name, it is hereby held that the second limb of paragraph 4(a) is established prima facie without having been rebutted. C. Registered and Used in Bad Faith
The Disputed Domain Name incorporates the word “smoking” and use of the same potentially suggests an association with goods in International Class 34. Although it is not the role of this Panel to determine whether the Disputed Domain Name will infringe the Complainant's trade mark registrations, the circumstances raise a serious concern that registration and/or use of the Disputed Domain Name would be contrary to law. The Complainant has claimed no less in the Complaint.
The Complainant seeks to rely on the oft-quoted panel decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 which initiated the concept that passive holding of a trade mark may be bad faith use and registration. It should be highlighted that that case relates to the special situation of a domain name incorporating a well-known mark registered by an individual, the idea being that it is not plausible for an individual to register and use (in the sense of passive holding of) such a domain name other than for illegitimate purposes.
The Complaint does not provide sufficient information for concluding that the trade mark STARBUZZ is a well-known mark. Neither is the Respondent an individual. Therefore, the Telstra decision is not directly applicable.
However, the Respondent must in all likelihood have been aware of the trade mark rights of the Complainant at the time of registering the Disputed Domain Name. It is difficult to attribute to mere coincidence the Respondent's associated use of the suffix “smoking” with the clearly coined word “starbuzz” in the Disputed Domain Name. Further, when faced with the Complaint and the serious allegations therein, the Respondent went the “extra mile” by voluntarily offering to transfer the Disputed Domain Name instead of justifying its registration and passive holding of the Disputed Domain Name. It is not plausible that the Respondent registered and passively held the Disputed Domain Name other than for an illegitimate purpose. This Panel therefore concludes that a prima facie case of bad faith registration and use exists in the special circumstances of the case.
The situation immediately brings to mind paragraph 4(b)(i) of the Policy which describes an example of bad faith registration and use not limited to well-known marks:
“circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The Respondent's reaction to the Complaint is inexplicable unless it is acknowledged that the Disputed Domain Name was registered primarily for the purpose of transferring the Disputed Domain Name to the Complainant which was in fact what happened. The Respondent did sign an agreement to transfer the Disputed Domain Name to the Complainant.
There is no evidence that the Respondent has required valuable consideration in excess of out-of-pocket costs directly related to the Disputed Domain Name. But what is borne out of the facts is that the Respondent failed to make good on its promise to transfer the Disputed Domain Name under the transfer agreement. One can only wonder whether the Respondent anticipated some benefit or otherwise for the transfer which failed to materialize but this Panel must accept that the elements of paragraph 4(b)(i) have not been made out in the circumstances.
Be that as it may, paragraph 4(b)(i) is not an exhaustive example of bad faith registration and use. It is this Panel's view that paragraph 4(b)(i) is merely one instance of a larger category of situations where a domain name is registered primarily for the purpose of being transferred to the complainant for an unfair and/or illegitimate benefit on which bad faith registration and use may be founded. In the appropriate circumstances such as the present, registration of a domain name primarily for the purpose of transferring the domain name could potentially amount to bad faith registration and use quite apart from valuable consideration in excess of out-of-pocket costs directly related to the domain name.
There having been established a prima facie case of bad faith registration and use of the Disputed Domain Name without the same being rebutted by the Respondent, it is held that the third limb of paragraph 4(a) is satisfied. 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 Disputed Domain Name be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: May 12, 2010
Full & Egal Universal Law Academy