The Complainant is Janel, S.A. de C.V. of Delegación Iztapalapa, Mexico, represented by Arochi, Marroquin & Lindner, S.C., Mexico.
The Respondent is Lin ZanSong of YueQing, ZheJiang, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2010. On May 12, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On May 13, 2010, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 21, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. On May 26, 2010, the Respondent submitted a request that Chinese be the language of proceedings.
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 May 27, 2010. With respect to the language of proceedings, the Center indicated in its Notification of Complaint email as follows:
“The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has objected. 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 in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party’s submissions.”
In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2010.
On June 16, 2010, the Respondent transmitted by email to the Center indicating its objection to English being the language of proceedings and requesting the Complaint being translated into Chinese. On June 18, 2010, the Center transmitted by email to the Respondent stating that having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment).
The Center appointed Linda Chang as the sole panelist in this matter on June 23, 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.
The Panel issued Procedural Order No. 1 (the “Order”), which was transmitted by email to both parties on July 15, 2010, ordering the Complainant to provide a Chinese translation of the Complaint within 10 days from the date of the Order. The Respondent could then file a Response or comments (if any) regarding the documents to be supplied by the Complainant within 10 days from the date on which the Center forwarded the translated Complaint in Chinese to the Respondent.
The Complainant requested an extension to file a Chinese translation of the Complaint. The Panel granted an extension until August 8, 2010. On July 27, 2010, the Center received the Chinese translation of the Complaint which was subsequently transmitted to the Respondent on the same day. The Respondent’s due date to file a Response or comments (if any) was August 6, 2010. The Respondent did not respond by the due date. Having provided both parties with an opportunity to fully respond and the fact that the disputed domain name resolves to a website that does business in English (in addition to other languages), suggesting that the Respondent is also capable of understanding English, the Panel chooses at its discretion to render the decision in English.
Due to special circumstances, the Panel required an extension and the Center notified the parties accordingly on August 9, 2010. 4. Factual Background
The Complainant owns the following Mexican trademark registrations in class 16 relating to inking / typewriter ribbons, carbon paper, adhesives (glues) for stationery or household purposes, paper, cardboard and the like.
Trademark Registration No. Registration Date
JANEL
247,275
July 8, 1980
JANEL
363,843
June 27, 1989
JANEL
537,147
November 26, 1996
The Complainant is also the owner of domain name . It offers for sale products such as packaging tape, duct tape, masking tape, sticky notes, ribbons, and other stationary items for home, office and school.
The Respondent registered the disputed domain name on May 25, 2002. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name Is Identical or Confusingly Similar to the Complainant’s Trademark
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark to which the Complainant has rights.
The Respondent Has No Rights Or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the domain name.
The Complainant states the Respondent has made no bona fide offering of goods or services in connection with the disputed domain name, but is instead taking advantage of the popularity and the goodwill associated with the Complainant’s trademark. The website linked to the disputed domain name displays a “pay per click” advertising directory or sponsored listing in Spanish which shows links to products and services of Complainant’s competitors.
Moreover, the Complainant contends that the Respondent is not commonly known by the disputed domain name and, thus, does not have any rights or legitimate interests in the disputed domain name on that basis. The Complainant points to a Google search it conducted that shows no connection, link or relationship between “Lin ZanSong” and “Janel®”.
The Complainant also contends that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, but rather is simply using the site to post links that direct visitors to other websites that compete with or are closely related to the products or services of the Complainant.
Registered and Used in Bad Faith
The Complainant asserts that it has been in the Mexican and international market for over 40 years and it is unlikely that the Respondent, at the time or registration of the disputed domain name or thereafter, was not aware that he was infringing the Complainant’s trademark. It also emphasizes that the Respondent’s website is full of links to competitors of the Complainant.
The Complainant contends that the Respondent has tried in a deliberate way to attract, with spirit of profit, users from Internet to his website, and sites of third parties, creating a likelihood of confusion or risk of association with the Complaint’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant points to the Respondent’s involvement in other domain name disputes (美国电影艺术与科学学院诉Lin Zansong案,WIPO Case No. D2005-1034 and 不列颠百科全书公司诉Lin ZanSong, WIPO Case No. D2006-1518) where he was ordered to transfer the disputed domain names to the concerned Complainants. B. Respondent
The Respondent did not reply to the Complainant’s contentions by the due date. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark JANEL in Mexico. The disputed domain name is completely identical to the Complainant’s trademark.
The Panel holds that the disputed domain name is identical to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims by the due date.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The files on record have shown that:
- According to the information in the Complainant’s website at ”www..mx”, the Complainant operates in the stationary / office supply industry and its website is in Spanish.
- The Complainant’s JANEL mark was registered as far back as 1980, 22 years before the disputed domain name was registered by the Respondent.
- The Respondent did not respond to the Complainant’s contentions by the due date;
- The Respondent has registered other domain names corresponding and/or confusingly similar to other third parties trademarks, indicating a pattern of conduct giving rise to bad faith registration and use of the disputed domain name ; and
- The website linked to the disputed domain name displays a “pay per click” advertising directory or sponsored listing in Spanish (also the language used in the Complainant’s website) which shows links to products and services of Complainant’s competitors, suggesting the Respondent’s familiarity with the Complainant’s trademarks and business.
The Complainant has shown that the Respondent is using the disputed domain name to divert Internet users to a parking webpage linked to commercial websites of competitors of the Complainant in order to generate revenues on a “pay per click” basis. Given the Respondent’s previous pattern of conduct of registering other third party’s domain names, and that the sponsored links on the Respondent’s website are in Spanish advertising stationary / office supplies, the Panel finds it difficult to believe that it is a coincidence that the language of the website and products for which the sponsored links relate are the same to that of the Complainant. Moreover, the Respondent’s website includes a link that states “Buy this domain.” The Panel also conducted a basic Google search for “Janel”, which brought up the Complainant’s website in eighth place on the first page of the search results. The above, together with the fact that the trademark was registered much earlier than the disputed domain name, leads the Panel to believe that the Respondent already knew of the Complainant’s trademark and the relevant industry and intentionally registered the disputed domain name in the hope of commercial gain.
These circumstances lead the Panel to conclude that the Respondent’s use and registration of the disputed domain name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(a)(iii). 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.
Linda Chang
Sole Panelist
Date: August 18, 2010
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