The Complainant is Hansgrohe AG of Germany, represented by Patentanwalte Ruff, Wilhelm, Beier, Dauster & Partner, Germany.
The Respondent is Kaiping Aosgrohe Hardware Factory / Wang Libin of Guangdong, People’s Republic of China, represented by Jiaquan IP Law Firm, 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 June 10, 2010. On the same day the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On June 11, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 18, 2010.
The Center verified that the Complaint together with the amendment to 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 June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010. The Response was filed with the Center on July 10, 2010.
The Panel notes the Complainant’s request that English be the language of proceedings. Although the Respondent chose not to respond to this request, he provided a Response to the Complaint in English. The Panel draws from this the conclusion that the Respondent has agreed that the language of the proceedings be English. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 15, 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, Hansgrohe AG ("the Complainant") is a German company, founded by Mr. Grohe in Schiltach in 1901. The Complainant engages in the field of design-oriented bathroom solutions and innovative products for bathrooms as a living space in the field of fashion.
The Complainant owns ten production facilities in different and employs more than 3,000 people in its 36 branches and subsidiaries across the globe.
The Complainant is the owner of Chinese trademark registration No. 619221 – HANSGROHE, with the registration date of April 14, 1994.
The HANSGROHE trademark is widely-known and represents high-quality products in the sanitation sector.
The Complainant has also developed a presence on the Internet and is the owner of a domain name, which contain the name “hansgrohe” : . The Complainant is using this domain name in connection with its activities.
The Respondent registered the disputed domain name on September 29, 2006.
The disputed domain name currently leads to an error page. Nevertheless, the disputed domain name used to resolve to a website that engaged the promotion of sanitary products. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the HANSGROHE trademark, owned by the Complainant, seeing that it incorporates its suffix "grohe".
The Complainant further argues that the Respondent is attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark. The Complainant argues that this evidences the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent argues that the disputed domain name is not confusingly similar to the Complainant's mark, seeing that it differs from the Complainant's mark both visually and phonetically.
The Respondent further argues that it has legitimate interest in the disputed domain name. The Respondent argued that it has been using the AOSGROHE mark for many years for sanitary products.
The Respondent further argues that it registered the disputed domain name in good faith. The Respondent argues that it has been in the sanitary market since 1990, four years before the Complainant has registered its trademark in China, and has been marketing the Aosgrohe brand for a long time. The Respondent further argues that the fact that its AOSGROHE mark is vastly different from the Complainant's HANSGROHE mark in style, color, typesetting, font and content evidence that the Respondent did not register the disputed domain name in order to attract for commercial gain Internet users by misleading them to believe that the Respondent is affiliated with the Complainant.
For all of the above reasons, the Respondent requests that the Complaint denied. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As stated above, the Complainant is the owner of Chinese trademark registration No. 619221 – HANSGROHE, with the registration date of April 14, 1994.
The disputed domain name differs from the registered HANSGROHE trademark by the prefix (“aos” v. “hans”) and the additional gTLD “.com”.
The prefix “aos” and the prefix “hans” are fairly visually and phonetically different. At the same time, the entire term “aosgrohe” is somewhat phonetically similar to the registered mark HANSGROHE.
The Panel notes that even if the Complainant satisfies this requirement and proves that the marks are identical or confusingly similar, for the reasons detailed below, it is not necessary for the Panel to make a determination on this issue. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant claimed that the Respondent lacks rights or legitimate interests in respect of the domain name. However, such claim was made without providing dispositive information as to whether the Complainant has allowed the Respondent to use the disputed domain name. From the deficiencies found in the Complaint and later attempted to be corrected in the Complainant’s letter dated June 18, 2010 the Panel finds that the Complainant is making the argument that the Respondent lacks rights or legitimate interests such that the Complainant has not approved the use of the AOSGROHE mark by the Respondent.
In its response, the Respondent claimed to have rights in the AOSGROHE mark and argues that it has been in the sanitary market since 1990, four years before the Complainant registered its trademark in China, and has been marketing the AOSGROHE brand for a long time.
By contrast, the Complainant did not provide the Panel with evidence per se to show the Respondent's lack of legitimate interest in the AOSGROHE mark. The Panel cites the following with approval: "The Complainant has made repeated and strongly worded assertions that the Respondent has no legitimate interests in the domain name and has denigrated the explanations offered by the Respondent for his choice and use of the domain name. Extraordinarily, however, the Complainant has not included any evidence of the content of the Respondent’s website and how the domain name has actually been used to allegedly exploit some supposed benefit from the claimed association with the Complainant’s mark. In the absence of any such evidence, the Panel does not consider that any alleged benefit to the Respondent, or purported damage to the Complainant can be assumed simply because the Complainant owns some trademark registrations … There is no evidence whatever that the Respondent has sought to pass himself off as having any connection or association with the Complainant and no evidence whatever of any actual confusion or damage resulting from the Respondent’s use of the domain name " (Pierre Balmain, S.A. v. Bart Wentholt,WIPO Case No. 2003-0278).
The Complaint's deficiency in evidence contributes to the Panel's decision that the Complainant did not succeed in this particular case establishing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel notes that both the Complainant and the Respondent have registered rights in China: The Complainant owns Chinese trademark registration No. 619221 – HANSGROHE, with the registration date of April 14, 1994; The Respondent owns trademark registration No. 5656242 – 奥斯洁雅; AOSGROHE, with the registration date of August 21, 2009. In view of the timing of the registrations of the parties’ trademarks in China and the timing of the Complaint, and the use made by the Respondent of the disputed domain name, as well as the 奥斯洁雅; AOSGROHE, the Panel is of the opinion that the Respondent has shown it may have rights or legitimate interests in the disputed domain name.
The Panel notes that in effect the Complainant is requesting the Panel to rule that a registered right owner has no legitimate interest in its registered mark under the Policy. It is commonly agreed that "UDRP panels are not equipped to resolve complex disputes – such disputes are better dealt with by the courts" (Levantur, S.A. v. Media Insight,WIPO Case No. D2009-0608). The Panel concurs and finds that this present matter is better suited to the appropriate court.
Accordingly, the Panel finds that, on the record in the present proceedings, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Complainant argues that the Respondent is attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark. The Complainant argues that this evidences the Respondent's bad faith. The Complaint however is completely devoid of any specific information or evidence supporting the arguments made by the Complainant.
The Panel having regard to all the facts set out in the Complaint and Response is not convinced that the Respondent considered the Complainant’s trademark when taking the disputed domain name and has acted intentionally to attract, for commercial gain, Internet users based on similarity between the Complainant’s HANSGROHE trademark and the disputed domain name. The Panel reviewed all the evidence submitted by the parties and failed to see any evidence showing or suggesting the Respondent registered or used the disputed domain name is bad faith.
Accordingly, the Panel finds that the Complainant failed in the present proceedings to prove that the disputed domain name was registered and used in bad faith.
In any event, for the reasons mentioned above, the Panel is of the view that the present dispute involving seemingly conflicting trademark registrations is one better suited to the courts, and the present decision under the Policy in no way presents either party from pursuing the matter in a court of competent jurisdiction should it chose to do so. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Agmon
Sole Panelist
Dated: September 1, 2010
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