Complainant is V-Kool International Pte Ltd of Singapore, represented by Ladas & Parry, United States of America.
Respondent is huangboping of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2011. On November 4, 2011, the Center transmitted by email to Hangzhou E-Business Services Co., Ltd. a request for registrar verification in connection with the disputed domain name. On November 10, 2011, Hangzhou E-Business Services Co., Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 10, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On November 15, 2011, Complainant confirmed its request that English be the language of proceeding. 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 Respondent of the Complaint, and the proceedings commenced on November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. Respondent did not submit any response. Accordingly, the Center confirmed Respondent’s default on December 12, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 28, 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. Language of the Proceeding
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the registration agreements for the disputed domain names is Chinese. Complainant has filed arguments in support of English being recognized as the language of the proceedings based on the observations that (1) the domain name is composed of Latin characters in the English language, and (2) translation of the Complaint would place undue burden upon Complainant. Respondent was notified regarding the language issue in both the Chinese and English language and offered an opportunity to respond regarding the language to be used in this proceeding. Because Respondent did not object by the deadline, the Center initiated the administrative proceeding in the English language and sent all further communications to Respondent in the English and Chinese languages. The Center also invited Respondent to submit a response in the English or Chinese languages. 4. Factual Background
Complainant produces clear window coatings which it sells under its V-KOOL trademark. Complainant owns multiple trademark registrations which incorporate its V-KOOL trademark including registrations in China and the United States. Complainant has provided evidence of these registrations which cover window films (amongst other goods).
The disputed domain name was created on September 16, 2010. The registrant of the disputed domain name is identified as huangboping, Respondent in this proceeding.
The website at the disputed domain name features Complainant’s V-KOOL trademark alongside Chinese characters, combinations of literal and numeric characters, and English content including the words “Energy Rejected”, “UV Reduction”, and “Visible Lightaramission”. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its V-KOOL trademark because it incorporates its V-KOOL trademark in its entirety and combines this trademark with the letters “im”. Complainant maintains that the letters “im” in the domain name make the disputed domain name confusingly similar with its common law trademark I’M V-KOOL, which Complainant claims has been in use in China for window films and coatings since 1997. Complainant maintains that the disputed domain name infringes its registered trademark rights in V-KOOL and its common law trademark rights in I’M V-KOOL. Complainant maintains that the disputed domain name was registered without Complainant’s authorization or consent, and that Complainant has not authorized, licensed, or consented to Respondent’s registration and use of a domain name incorporating the V-KOOL trademark or the I’M V-KOOL trademark. Regarding use of the domain name, Complainant states that the content of the website displayed at the disputed domain name is likely to cause consumer confusion. Specifically, Complainant alleges that Respondent is using the disputed domain name to pass itself off as Complainant through its use of Complainant’s trademarks and its offering of goods which are branded with the V-KOOL trademark. Finally, Complainant alleges that Respondent’s registration of the disputed domain name is an intentional attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s V-KOOL and I’M V-KOOL trademarks as to the source, sponsorship, affiliation or endorsement by or of Complainant. Based on the aforementioned arguments, Complainant has requested that the disputed domain name be transferred from Respondent to Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.
The content featured on the disputed domain name includes terms displayed in the English language. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay. A. Identical or Confusingly Similar
The disputed domain name combines Complainant’s V-KOOL trademark and the letters “im”. The use of “im” with Complainant’s V-KOOL trademark as featured in the disputed domain name does not sufficiently distinguish the disputed domain name from the V-KOOL trademark to dispel the likelihood of confusion. V-KOOL is a distinctive trademark and use of this trademark in a domain name has the potential to lead Internet users to believe that the disputed domain name is authorized by Complainant or somehow related to Complainant.
Complainant maintains that it has been using the trademark I’M V-KOOL for a significant period of time (since 1997 in China, for example), however the record does not contain any evidence of common law use or consumer recognition of this trademark. Due to this lack of evidence, the Panel cannot conclude that the disputed domain name is identical to the I’M V-KOOL trademark in which Complainant is claiming rights under common law. However, the Panel believes that the incorporation of Complainant’s distinctive V-KOOL trademark in its entirety in the disputed domain name supports a finding of confusing similarity. It has been held that in certain circumstances the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652 (observing that “a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or confusingly similar approximation, regardless of the other terms in the domain name”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant has established trademark rights in V-KOOL which precede registration of the disputed domain name. It is clear from the record that Complainant sells window panels under its V-KOOL trademark and various other compound word marks incorporating V-KOOL. It is also established by the record that Complainant owns trademark rights in China, the jurisdiction identified as Respondent’s home country.
There is no evidence in the record indicating that Respondent has ever traded under the term “V-Kool” or “I’m V-Kool” that Respondent has trademark rights in either of these terms, or that Respondent has any other rights or legitimate interests in V-KOOL or “I’m V-Kool”.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The Panel is satisfied that Respondent had knowledge of Complainant’s V-KOOL trademark when registering the disputed domain name given that the disputed domain name incorporates Complainant’s distinctive V-KOOL trademark in its entirety. The record shows that Complainant’s trademark rights in China precede the creation of the disputed domain name.
It is clear from the content of the websites displayed at the disputed domain name that Respondent is aware of Complainant. The content features Complainant’s V-KOOL trademark displayed alongside images of cars and literal/numeric combinations such as V70, V40, V-14, V-05, V-X60, and V15. The pages displayed at the disputed domain name also feature the English words alongside percentages, specifically “Visible Lightaramission 41%”, “Energy Rejected 98%”, and “UV Reduction 99%”. The content of the disputed domain name also features Chinese characters which in English can be translated as “Warranty Information”, “Warranty Card Activation”, “How to Choose Window Film”, “Car Window Film Buying Guide”, and “The Origin and Development of Glass Film”. It is clear from this content that Respondent’s use of the disputed domain name creates a likelihood of confusion with Complainant’s V-KOOL trademark.
Use of a domain name which is confusingly similar to Complainant’s V-KOOL trademark to display content regarding window films, ultraviolet reduction, and literal/numeric characters resembling model numbers creates a risk that Internet users will confuse the domain name with a domain name operated and maintained by Complainant. Specifically, the content is directly related to the goods sold by Complainant under its V-KOOL trademark, and there is no evidence that Respondent has used the disputed domain name in connection with a bona fide offering goods and services which are distinguishable from Complainant’s V-KOOL trademark. The use of the disputed domain name to advertise goods identical to those offered by Complainant is indicative of an intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. Continued use of the domain name in this manner could lead consumers to mistakenly believe that the links featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: January 13, 2012
Full & Egal Universal Law Academy