The Complainant is Biotherm of Monaco, Monaco, represented by Dreyfus & associés, France.
The Respondent is Shenzen Seoheqn Cosmetics Co. Ltd of Shenzhen, Guangdong, 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 November 23, 2011. On November 23, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On November 24, 2011, 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 November 24, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On November 24, 2011, the Complainant confirmed its request that English be the language of proceedings. The 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 the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on November 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2011. The Center received email communications from the administrative and technical contact of the disputed domain name in Chinese on December 5, 2011 and the email reply from the Complainant on December 21, 2011, regarding the identity of the proper registrant as the Respondent. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on January 19, 2012. 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.
Administrative Panel Procedural Order
The Complainant made reference in its Complaint to an opposition decision against the Respondent but did not exhibit it to the Complaint. The Panel on February 1, 2012 issued a procedural order in accordance with paragraphs 10 and 12 of the Rules requiring the Complainant to provide a copy of the opposition decision. This was received by the Center on February 6, 2012. The opposition decision which was a decision in favour of the Complainant was made by the Trademark Office of the People’s Republic of China refusing registration of a mark applied for by the Respondent including the word “Siotherm”.
Language of Proceedings
The language of the Registration Agreement is Chinese. 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 Complainant requested the language of the proceeding be in English on the following grounds:
1. The disputed domain name consists of Latin characters which suggests the Respondent understands other languages than Chinese;
2. The website under the disputed domain name includes various phrases in English, namely: “Smooth Arethusa of Water”, “Re-Own the Young Brilliance”, “Face Tighten Series”, “Water Aqua Nourishment”, “Energy Face Series”, “Soft Whitening Light” and “Beautiful White Series”, and thus it can be assumed that the Respondent is conversant and proficient in the English Language.
3. There is a recent similar case involving the same registrar (Lacoste Alligator S.A. v Wang Liming,WIPO Case No. D2009-0559) where the registrar had English and Chinese registration agreements. The panel accepted the arguments of the complainants regarding the language of proceedings and decided that English should be the language of proceedings.
4. English has been used in the Complaint due to the fact English is the most widely used language in international relations and one of the working languages of the Center.
5. Conducting the proceedings in English would be fair to the parties. The point of the domain name resolution procedure is to allow for a speedy and low cost resolution of domain name issues. The Complainant would have to incur additional expenses for translation, if all documents were to be filed in Chinese.
The Respondent has not responded to the proceeding nor to the Complainant’s request that the language of the proceeding to be in English.
The question of the appropriate language of proceedings has been addressed in the recently issued WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.3 which provides:
“Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.
In order to preserve the panel's discretion under paragraph 11 of the UDRP Rules to determine the appropriate language of proceedings in such cases, where a complainant files a complaint in a language other than that of the registration agreement, the WIPO Center will notify both parties (in all relevant languages wherever possible) of the potential language issue, inviting the complainant to either translate the complaint or, if not submitted already, to submit a supported request (e.g., by reference to prior party communication, website language, or respondent identity) that the complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the respondent with an opportunity to comment on or object to any such language request that may be made by the complainant. If the complainant elects not to translate but rather to submit a supported language request, such request and any comments that may be received from the respondent would normally be placed before the panel for determination of the language issue upon the panel's appointment. The panel, having made such determination, would have power to order any further procedural steps (up to and including ordering the translation of the complaint) it would deem necessary. In such cases, prior to appointment and determination by the panel, the WIPO Center would (wherever possible) send its communications to the parties in "dual language" (i.e., in both the language of the registration agreement, and the language of the complaint).”
This procedure set out above has been followed in this case. The questions for the Panel to determine are: first, in the circumstances of the case, is it fair for the Respondent to proceed in a language other than the Registration Agreement, i.e. English ; and, second is it unfair to require the Complainant to translate the Complaint into Chinese?
In this case, none of the factors cited by the Complainant either individually or taken together are particularly convincing in this Panel’s view to justify not using Chinese as the language of the proceedings. Almost all domain names are in Latin characters. For this Panel, this does not indicate any familiarity with English language (the Panel notes that the Mandarin Chinese can also be written in Latin characters, referred to as “pinyin”). The words used on the website are clear advertising slogans and in some cases ungrammatical. They do not justify a conclusion the Respondent is conversant, let alone proficient, in English. The case cited by the Complainant involved a different factual situation where the contents of the website under the disputed domain name was entirely in English. In this case, the content of the website is principally in Chinese. Point 4 above (i.e. the widespread use of English), cannot in itself be a ground to justify using English as this would override paragraph 11(a) of the Rules. It does, however, favour using English over some other language if the panel is minded to use a language other than that of the Registration Agreement. Maintaining speed and low cost is always a factor, but itself cannot be a determinative factor.
The Panel has, nevertheless, determined to use English as the language of proceedings in this case, because the Respondent has not responded at all to the proceedings and/or to the request for the language of the proceedings to be English. In this case, where the Respondent has also faced a similar complaint filed by the same Complainant with the Trademark Office in China in Chinese, there can be no doubt that it is aware of the nature of these proceedings. The Respondent also did not respond to the Chinese opposition proceedings and has clearly chosen not to respond to these proceedings either. Further, as will be seen below, the Panel considers this a clear case of bad faith registration and accordingly the Panel should refrain from placing procedural hurdles in the way of the Complainant who should be entitled to speedy resolution of its Complaint. 4. Factual Background
The Complainant is a French skincare company, founded in 1952 and specializes in the manufacture of skincare products. It is currently an affiliate of L’Oreal. The Complainant entered the Chinese market in 2003.
The Complainant has registered numerous trademarks for BIOTHERM around the world including, inter alia, an international registration for BIOTHERM registered in March 1972 covering classes 3 and 5, a Chinese registration for BIOTHERM in class 3 in 1988, and a Chinese registration for BIOTHERM and the simplified Chinese characters BI OU QUAN (碧欧泉) in class 3 in 2000.
The Complainant has also registered the following domain names: (1996), (1996) and (2002).
The Respondent previously filed a trademark application in 2006 for聖欧泉 SIOTHERM & Device. The Complainant uses a trademark in China of 碧欧泉 BIOTHERM and BIOTHERM PLANCTON & Device. The Chinese characters in the Respondent’s application are a combination of traditional and simplified characters.
The Complainant successfully opposed the application on the basis that the trademarks were confusingly similar. The opposition decision was issued in 2010.
The disputed domain name was registered in April 2009. 5. Parties’ Contentions A. Complainant
Confusingly similar
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered trademarks for BIOTHERM and its domain names.
The Complainant particularly relies on arguments that it is typo-squatting. Its principal arguments are that:
1. “Siotherm” is a common or obvious misspelling of “Biotherm”.
2. that proximity on the keyboard is not the sole relevant factor in determining if there is typo-squatting because keyboards may change from one country to another, citing AltaVista Company v. Geoffrey Fairbain,WIPO Case No. D2000-0849, and particularly the passage:
“Confusing similarity turns on the inherent distinctiveness of the trademark, the extent of use of the trademark, the extent of time the trademark has been in use, the nature of the wares, services and business, the similarity in sound, appearance and idea suggested by the trademark and the domain name among other factors.”
3. The sonority of the disputed domain name and “Biotherm” is very close. They share three sounds out of four.
4. Visually they are very close with 7 of 8 letters being the same.
No rights or legitimate interests
The Complainant submits that the Respondent is not known under the name “Biotherm” or any similar name, it is not affiliated with the Complainant in anyway nor has the Complainant authorized the Respondent to register or use the trademark BIOTHERM or any similar mark.
Further the Respondent has never replied to the Complainant and recently (before the Complaint was filed) deactivated the website at the disputed domain name. This also shows the Respondent has been acting in bad faith.
Registered and used in bad faith
The Complainant contends that the Respondent knew, or should have known of the Complainant when it registered the disputed domain name based on BIOTHERM’s fame worldwide and in China and the fact that it was rejected to register a trademark very similar to the Complainant’s BIOTHERM trademark.
Further the mark has been used in bad faith by directing consumers to a site selling cosmetics that is not connected to the Complainant. The Respondent is thus taking advantage of Complainant's reputation and goodwill to attract Internet users as to source, sponsorship, affiliation or endorsement of the website. The fact that the disputed domain name was recently deactivated and was offered for sale are other circumstances evidencing bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 first question in this case is whether the disputed domain name is confusingly similar to the Complainant’s registered trademark BIOTHERM.
The Panel is not satisfied that this case falls under the category of “typo-squatting”. The substitution of an “s” for a “b” is not a common typo on a QWERTY keyboard. The Panel notes the Complainant’s submissions that not necessarily all keyboards are QWERTY keyboards. The Complainant has not however identified a keyboard on which an “s” would be an obvious typo for a “b”. Further, in China where the Respondent is located and appears to be directing its website (by use of the Chinese language), the QWERTY keyboard is used. To find that “s” is an obvious typo for “b” would be extending the concept of typo-squatting too far.
The AltaVista Company v. Geoffrey Fairbain, supra. cited by the Complainant would appear to provide grounds for finding the disputed domain name to be confusingly similar to the Complainant’s trademark.
However, the consensus view of panelists is that the content of the website should “usually be disregarded” in determining confusing similarity for the first element of the Policy.
WIPO Overview 2.0, paragraph 1.2 provides:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. […]
The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).”
This consensus view does not create a complete prohibition against making reference to the content of the website, but it does suggest that a panel should have very good grounds for doing so. The Panel considers this must be correct. UDRP panelists should seek to keep the test for confusing similarity as simple as possible.
Panels should also seek to make consistent UDRP decisions so as to bring as much certainty as possible to the UDRP process. Nevertheless, there should also not be a mechanical application of consensus views where this would create an injustice that goes against the underlying goal of the Policy.
One of the purposes of the Policy is to prevent bad faith use of domain names. Paragraph 4(b)(iv) provides that it is bad faith use if:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel is satisfied on the evidence that this is exactly what the Respondent has set out to do. The Respondent sought to register a trademark incorporating Siotherm and other elements very similar to the Complainant’s trademark BIOTHERM. The Respondent has used this trademark on its website at the disputed domain name even after the Complainant has successfully opposed that trademark application for SIOTHERM by the Respondent.
The goal of the Respondent was clearly to create a trademark and use it in such a way, including use of the disputed domain name, to attract custom. On the basis of the clear intent of the Respondent to use the disputed domain name in a way so that it will cause confusion to consumers, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark BIOTHERM. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to provide any evidence as to any rights or legitimate interests it may have. In the circumstances, and for the reasons given above, the Panel accepts that the Complainant’s submissions that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As set out above the Panel is satisfied that the disputed domain name was registered and used in bad faith pursuant to paragraph 4(b)(iv) 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 disputed domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: February 15, 2012
Full & Egal Universal Law Academy