Complainant is LouenHide Pty Ltd. of Stafford, Australia, represented internally.
Respondent is Jiang Kang of Changsha, Hunan, China, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2011. On August 30, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 30, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2011. An email communication in response to the Complaint was sent to the Center on September 22, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 30, 2011. 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 record shows that two email communications were sent to the Center in response to the Complaint by Respondent. The first email sent to the Center on September 1, 2011 was in the Chinese language and requested (1) a copy of the Complaint translated into the Chinese and (2) permission to respond to the Complaint in Chinese. The Center responded to this communication on September 1, 2011 pointing out that the Rules explicitly state that the language of the proceeding shall be the language of the registration agreement (unless otherwise agreed by the parties) and that use of the Chinese language in the proceeding would not be appropriate because the language of the Registration Agreement for the disputed domain name is English. On September 22, 2011, Respondent sent a second email to the Center in Chinese which detailed its operations, its use of the disputed domain name, it’s responses to Complainant’s allegations, and its intended use of the disputed domain name for the future. On September 23, 2011, the Center issued a communication acknowledging Respondent’s communication of September 22, 2011 and advised that acceptance of Respondent’s arguments would be at the discretion of the Panel given that they were presented in a language which differs from that of the Registration Agreement. 4. Factual Background
Complainant LouenHide Pty Ltd. is an Australian entity founded in 2006 which produces and distributes handbags and accessories under the trademark LOUENHIDE. Complainant’s goods have been featured in multiple magazines, newspapers, and other publications including Marie Claire, NW Magazine, Australian Women’s Weekly, Woman’s Day, The Herald Sun, Qantas Magazine, InStyle, 9 to 5 Magazine, and Notebook Magazine. Copies of advertisements and items from the aforementioned publications featuring Complainant’s products have been submitted with the Complaint which include materials dated between 2009 and 2011. Complainant owns trademark registrations for the LOUENHIDE trademark including Australia Registration No. 1199402 for LouenHide for bags, purses, and related goods in Class 18, Australia Registration No. 1375944 for LouenHide for apparel and footwear in Class 25, United States of America Registration No. 3930678 for LouenHide for bags, purses, and related goods in Class 18, and WIPO Registration No. 1038728 for LouenHide for bags, purses, and related goods in Class 18. The WIPO registration designates the United States of America. No other trademark registrations have been cited.
Respondent is a Chinese resident identified as Jiang Kang of Changsha, Hunan, China. Respondent acquired the disputed domain name on June 28, 2011 and has used the disputed domain name to display a webpage which advertises real estate agency services provided under the Chinese name , which is the phonetic equivalent of “Louenhide”. 5. Parties’ Contentions A. Complainant
Complainant claims that its goods are of the highest quality and sold in multiple countries through its distributors in Europe, Asia, North America, and Australia. According to Complainant, consumers recognize the LOUENHIDE trademark due to the quality of Complainant’s goods and substantial advertising and press coverage, all of which have built substantial goodwill for the LOUENHIDE trademark.
Complainant notes that the disputed domain name is identical to its LOUENHIDE trademark with the exception of its .com suffix and maintains that Respondent has no rights or legitimate interest in the disputed domain name, is not commonly known by the term “Louenhide”, and has never been authorized by Complainant to use its LOUENHIDE trademark. Complainant alleges that Respondent has no legitimate basis for registering or using the disputed domain name, and notes that its LOUENHIDE trademark has no meaning apart from its use for Complainant’s goods. Complainant claims that Respondent has not and could not make bona fide use of the disputed domain name due to the reputation of the LOUENHIDE mark and its association with Complainant’s goods. In support of this claim, Complainant cites Respondent’s brief use of the domain name for a Chinese language website which did not offer legitimate goods or services and subsequent passive holding of the disputed domain name.
Complainant alleges that the disputed domain name was transferred to Respondent after a cease and desist letter was sent to the prior registrant by Complainant on June 17, 2011. Complainant maintains that Respondent acquired the domain name in bad faith because it incorporates Complainant’s trademark in its entirety. Complainant also cites the webpage posted by Respondent and passive holding of the domain name by Respondent as indications of bad faith use. B. Respondent
Respondent maintains that it is a small real estate information agency which operates one retail location in Hunan, China. Respondent claims to have very limited capital and notes that the limited content available on its website is the result of its own work without professional web designers. Respondent has stated that it intends to develop a fully functional website to allow its clients to search rentals and sales information in its local area. Respondent states that it has no intention of infringing Complainant’s trademark and maintains that Complainant’s trademark is not internationally known and is not protected in China. Respondent emphasizes its non-infringing use of the domain name and intent to use the domain in good faith in response to Complainant’s allegations, and claims that its use of the disputed domain name to date and its intended future use of the disputed domain name for services marketed to Chinese consumers which are distinct from the goods sold by Complainant establishes that Complainant should not be adversely affected Respondent’s ownership and use of the disputed domain name. Respondent further states that it was unaware of Complainant’s trademark rights before the present proceeding was initiated. 6. Discussion and Findings A. Language of Proceeding and Communications Received from Respondent
Respondent claims to have a very limited knowledge of English and sent Chinese language communications to the Center on September 1, 2011 and September 22, 2011. The first communication explains that Respondent has limited knowledge of English and understands that the disputed domain name is subject of an administrative proceeding. The first communication also requests a Chinese language translation of the Complaint and permission to respond in Chinese. The Center acknowledged this first request and advised Respondent that use of Chinese in the proceeding would not be appropriate because English is the language of the proceeding based on its use in the Registration Agreement for the disputed domain name. The second communication on September 22, 2011 was a response to the Complaint which addressed the allegations and detailed Respondent’s use and intended use of the disputed domain name. On September 23, 2011, the Center acknowledged receipt of the response dated September 22, 2011 and restated paragraph 11(a) of the Rules, specifically the following:
Language of the Proceedings - 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 Center noted that the Registrar confirmed that the language of the registration agreement for the disputed domain name is English and stated that acceptance of the response would be determined by the Panel. The Panel is familiar with both English and Chinese and, given the circumstances of this case, has decided to consider the communications submitted by Respondent in rendering its decision. The Panel has considered whether it may be necessary or appropriate to require the Respondent to translate its submitted Response into English. However, given that the Panel is familiar with Chinese, and sees nothing exceptional in the Response which the Complainant could not reasonably have anticipated at the time of filing, the Panel sees no compelling reason to further delay the proceedings. In any event, the UDRP framework does not make provisions for a party’s right of reply, as of right, and the Panel believes it is fair here to consider Respondent’s submitted Response in Chinese. The Panel finds the Response contains information pertinent to (even if not dispositive of as such) the merits of the case, and prefers to decide the case on the basis of the most complete available record. B. Identical of Confusingly Similar
The disputed domain name is identical to the LOUENHIDE trademark in which Complainant has rights. The only difference between the disputed domain name and Complainant’s LOUENHIDE trademark is the .com suffix of the disputed domain name. It is well established that a gTLD suffix such as .com does not add distinction to a domain name. See, e.g., Playboy Enterprises International, Inc. v. Hector Rodriguez,WIPO Case No. D2000-1016 (holding the top-level domain “.com” suffix to be “so deminimis as to be inadequate” to preclude confusion occurring between the registered trademark PLAYBOY CHANNEL and the disputed domain name ).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Rights or Legitimate Interests
Complainant maintains that it has not authorized Respondent to use the LOUENHIDE mark and that Respondent has no rights in the LOUENHIDE mark. Complainant also alleges that Respondent has no apparent legitimate connection to the disputed domain name .
The record shows that Respondent has advertised real estate services on the disputed domain name using “Louenhide” and , the Chinese phonetic equivalent of “Louenhide”. Specifically, a webpage featured at the disputed domain name displayed Chinese content which can be translated as follows:
“Louenhide is a real estate agent focused on providing value-added real estate agency services. Owners or purchasers may contact us and we will do our best to provide the best high-quality services”
The above webpage was featured at the disputed domain name before the Complaint was filed. Respondent maintains that it is a small real estate company which is developing the disputed domain name to be a searchable real estate database to increase its business presence, and notes that the informational page detailed above was the first step in its development of the disputed domain name.
The Panel notes that Respondent has not provided any evidence of rights in the term “louenhide” other than its use of the term on its website. However, as further explained below, Complainant has not established that Respondent should have been aware of its trademark rights or that Respondent’s use of the disputed domain name to advertise real estate agency services has been illegitimate or in bad faith.
In light of the evidence presented and the Panel’s finding regarding the third element of the Policy, the Panel is not addressing the second element of the Policy. D. Registered and Used in Bad Faith
Complainant alleges that Respondent’s registration of the disputed domain name was in bad faith because the disputed domain name “is obviously connected with the Complainant and its products that the very use by someone with no connection with the Complainant suggests opportunistic bad faith” (citing Charles Jourdaan Holding AG v. AAIM,WIPO Case No. D2000-0403; see also Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, two decisions cited in the aforementioned case). The Panel is not convinced that opportunistic bad faith is present here. First, there is no evidence in the record which indicates to the satisfaction of the Panel that Complainant’s LOUENHIDE trademark is famous or well-known. Moreover, as indicated above, there is evidence in the record showing that Respondent has used the disputed domain name to advertise services which are distinctive from the goods sold by Complainant under its LOUENHIDE mark prior to receiving notice of Complainant’s rights in the LOUENHIDE mark. The Complainant has not convinced the Panel that Respondent knew or must have known of Complainant’s rights when it registered the disputed domain name (e.g., trademark registration in China, evidence of sales in China, evidence of advertising directed to the Chinese public, or evidence of publicity in China). Complainant cites its June 17, 2011 cease and desist letter as evidence of notice of Complainant’s trademark rights, however this letter was sent to a prior registrant of the domain name, not to Respondent. The record indicates that the first notification of Complainant’s trademark rights to Respondent was through the filing of the subject Complaint. Prior to this notice, Respondent had used the disputed domain name to advertise real estate agency services, services which are distinguishable from the goods provided by Complainant under its LOUENHIDE mark. There is no evidence in the record which establishes that the real estate agency services advertised by Respondent would be confused with Complainant’s goods or that Respondent has used the domain name to trade off of Complainant’s mark, to benefit from consumer confusion, to disrupt Complainant’s business, or for any other purpose which would be indicative of bad faith use.
In summary, Complainant has not sufficiently established bad faith registration and use by Respondent. There is no reason to reject Respondent’s claim that it had no knowledge of Complainant when it acquired the disputed domain name, and therefore the Panel finds no compelling evidence showing that the domain name has been used in bad faith. The present circumstances support a finding for Respondent. See Televisa v. Retevision Interactiva S.A.,WIPO Case No. D2000-0264 (finding no bad faith observing that “Complainant has provided insufficient documentary evidence that Respondent should have known the existence of Complainant’s trademarks” and that “Evidences provided by Respondent shows that the Respondent’s domain names were used in connection with the bona fide offering of goods and services prior to the dispute”).
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied by Complainant. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Kimberley Chen Nobles
Sole Panelist
Date: November 4, 2011
Full & Egal Universal Law Academy