WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION EMU (AUS) Pty Ltd and EMU Ridge Holdings Pty Ltd v. yanghong Case No. D2010-0956 1. The Parties
The Complainant is EMU (AUS) Pty Ltd and EMU Ridge Holdings Pty Ltd of South Geelong, Australia, represented by Bryan Cave, LLP, Germany.
The Respondent is yanghong, of Chengdu, Sichuan, the People's Republic of China. 2. The Domain Names and Registrar
The disputed domain names and are 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 June 11, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On June 12, 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 June 14, 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. The Respondent did not comment on the language of proceedings by the specified due date. On July 19, 2010, the Complainant, EMU (AUS) Pty Ltd submitted a request to add EMU Ridge Holdings Pty Ltd as an additional Complainant to the Complaint. 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 12, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 14, 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, Emu (AUS) Pty Ltd is an Australian based company that engages in the field of sheepskin footwear and apparel. The Complainant's products are being sold in various countries around the world.
The Complainant, EMU Ridge Holdings Pty Ltd, is an affiliated company of Emu (AUS) Pty Ltd, that holds the Complainant's trademarks as a trustee.
The Complainant owns multiple trademark registrations for the mark EMU in many countries around the world. For example: Australian trademark registration No. 335503 – EMU, with the registration date of 1979; Community trademark registration No. 3640018 – EMU, with the registration date of 2005; Community trademark registration No.3611787– EMU, with the registration date of 2005; and others.
The owner for the Complainant's trademarks is Emu Ridge Holdings Pty Ltd, which is the Complainant's previous company name.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names, which contain the word “emu”. For example: , , , and . The Complainant is using these domain names in connection with its activities.
The disputed domain names and were registered by the Respondent on November 26, 2009.
The disputed domain name resolves to an on-line marketplace, which offers for sale boots that appear to carry the EMU mark.
The disputed domain name resolves to a parking webpage, which displays the following announcement: “Internet Explorer cannot display the webpage”. The Complainant alleges that this disputed domain name used to resolve to an on-line marketplace, which offers for sale boots that appear to carry the EMU mark.
The Complainant approached the Respondent by email on January 21, 2010, and demanded that the Respondent cease and desist from using the EMU mark in the course of trade, including its use in the disputed domain name .
The Respondent did not respond to the Complainant's cease and desist correspondence. 5. Parties' Contentions A. Complainant
The Complainant argues that it has established significant goodwill in the EMU mark, which has become well-known for sheepskin boots.
The Complainant further argues that its EMU mark is used broadly and extensively in connection with sheepskin boots, which is known by the public as a unique fashion product originating from Australia.
The Complainant further argues that the disputed domain names are comprised of the distinctive word “emu”, which is identical to the Complainant's trademark, and of the generic word “stiefel”, which means “boots” in the German language. The Complainant claims that the mere addition of the word “steifel” does not distinguish the disputed domain names from its trademarks.
The Complainant further argues that registering the disputed domain names many years after the Complainant had registered its trademarks is an indication that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant further argues the Respondent knew of the Complainant's EMU trademark when registering the disputed domain names, and that registering a domain name containing well-known trademarks like the EMU trademark, constitutes bad faith per se.
The Complainant further argues that the Complainant had not licensed or authorized the Respondent to use the EMU trademark.
The Complainant further argues that the Respondent is using the disputed domain names in bad faith by using them to offer for sale counterfeit EMU boots, while claiming that they are original products of the Complainant.
The Complainant further argues that the Respondent copied copyright protected content from the Complainant's website, without the Complainant's authorization.
The Complainant further argues that the content in the disputed domain names amounts to a commercial “personality theft”.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain names is Chinese.
The Complainant requested that the language of the proceedings should be in English.
The Panel cited the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceedings:
a) The website operating under the disputed domain name does not incorporate the Chinese language;
b) Both disputed domain names incorporate words in the English language, which relate to the nature of goods sold in the websites that operated under the disputed domain names;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of the proceedings. B. Additional Complainant
On July 19, 2010, the Complainant Emu (AUS) Pty Ltd submitted a request to add EMU Ridge Holdings Pty Ltd as an additional Complainant.
Paragraph 10(a) and (d) authorizes the panel to administrate the proceedings in a manner as it considers appropriate and determine the admissibility, relevance, materiality and weight of the evidence. Indeed, under the Rules, the Panel may conduct the administrative proceeding in such manner as it considers appropriate (See e.g. Al Ghurair Group LLC v. Ghurair Group,WIPO Case No. D2004-0532; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray,WIPO Case No. D2002-0624; Voigtländer GmbH v. John Voigtlander,WIPO Case No. D2003-0095).
The Panel has considered the evidence and concluded that EMU Ridge Holdings Pty Ltd is an essential party in this case, as it is the holder of the Complainant's EMU and EMU AUSTRALIA trademarks. The Panel is of the opinion that adding EMU Ridge Holdings Pty Ltd as an additional Complainant does not prejudice the Respondent, as it merely serves to clarify the issue of the Complainant's rights in its trademarks. The Panel therefore allows the incorporation of EMU Ridge Holdings Pty Ltd as an additional Complainant in these proceedings. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are 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. The Complainant owns multiple trademark registrations for the mark EMU. For example: Australian trademark registration No. 335503 – EMU, with the registration date of 1979; Community trademark registration No. 3640018 – EMU, with the registration date of 2005; Community trademark registration No.3611787– EMU, with the registration date of 2005; and others.
The disputed domain names and differ from the registered EMU trademark by the additional word “stiefel” and the additional gTLDs “.com” and “.net”.
The disputed domain names integrate the Complainant's trademark EMU in its entirety, as a dominant element.
The additional word “stiefel” does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant's EMU trademark. The meaning of “stiefel” in German is “boots”. A translation of the word “boots” cannot act as a distinguishing element, especially as boots are goods that are regularly sold under the EMU trademark by the Complainant.
Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.com” or “.net” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLDs “.com” and “.net” are without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. D. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain names.
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the EMU trademark, or a variation thereof. The Respondent had not submitted a Response and did not provided any evidence to show any rights or legitimate interests in the disputed domain names that are sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. E. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant owns registrations for the EMU trademark since the year 1979. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain names it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain names are resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain names are resolved to.
The disputed domain name currently leads Internet users to a website that promotes the sale of boots, some of which carry the EMU mark.
The Complainant contends that the disputed domain name also used to resolve to a website that promoted the sale of boots, some of which carried the EMU mark.
The Respondent's use of the EMU mark to promote goods that are regularly sold by the Complainant clearly indicates that the Respondent registered these disputed domain names with knowledge of the Complainant and of the use the Complainant is making in the EMU mark and subsequent intent to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain names for quasi-identical goods to the ones the Complainant manufacture and markets (as well as the Complainant's counterfeit's good) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The Panel cites the following with approval: “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic' bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
The disputed domain name currently resolves to a parking webpage, which displays an error announcement. However, the fact that the Respondent does not use this domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
The Panel also notes that the disputed domain names are confusingly similar to the Complainant's trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In addition, the Panel makes notice of the Complainant's contention that the Respondent has infringed upon its copyrights. Previous panels have ruled that an intentional infringement the Complainant's copyright may amount in itself to bad faith (TPI Holdings Inc. v. JB Designs,WIPO Case No. D2000-0216).
The Panel also finds that the Respondent's failure to respond to the Complainant's cease and desist letter indicates on the Respondent's bad faith (See Compiere Inc. v. Access, Denied,WIPO Case No. D2007-0131).
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the EMU trademark in the disputed domain names and the Respondent's failure to respond to the Complainant's cease and desist letter, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names in bad faith. 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 names and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: July 28, 2010
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