The Complainant is Standard & Poor's Financial Services LLC of New York, New York, United States of America (“United States”) represented by Proskauer Rose, LLP, United States.
The Respondent is Wang Kang Lin of Guizhou Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On April 19, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 April 27, 2012.
On April 26, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceedings. On April 26, 2012, the Complainant confirmed its request that English be the language of the proceedings. On April 28, 2012, the Respondent requested that Chinese be the language of the proceedings.
The Center has verified that the Complaint together with the amendment to the Complaint satisfy 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 May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 21, 2012. The Response was filed with the Center on May 16, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 7, 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. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Delaware in the United States and the owner of numerous registrations worldwide for the trade mark STANDARD & POOR’S (the “Trade Mark”), the earliest dating from 1962. B. Respondent
The Respondent is an individual based in China. C. The Disputed Domain Name
The disputed domain name was registered on April 4, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was established in the United States in 1941 and is a leading provider of financial and market intelligence services, under the Trade Mark. The Complainant operates under the Trade Mark in at least 23 countries, providing market intelligence services in respect of approximately 30 markets worldwide. The Trade Mark is a well-known trade mark worldwide.
The disputed domain name is confusingly similar to the Trade Mark. It contains the Trade Mark in its entirety, save that the symbol “&” has been replaced with the word “and”, and there is no apostrophe.
The Respondent is not commonly known under the disputed domain name and does not have any rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use the Trade Mark or to register the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent has made no use of the disputed domain name. The Respondent’s representative has, in an email correspondence with the Complainant’s legal representatives, and, in response to the Complainant’s offer to pay the Respondent’s out-of-pocket expenses incurred in registering the disputed domain name, asked for a “proposal”. This amounts to an attempt to solicit an offer of payment in excess of the Respondent’s out-of-pocket expenses in registering the disputed domain name. B. Respondent
The Respondent made the following submissions in the Response.
The disputed domain name is not confusingly similar to the Trade Mark and can easily be distinguished from the Complainant’s various trade mark registrations in China.
Although the Respondent did not have the authorization of the Complainant to register the disputed domain name, this does not mean the Respondent does not have rights in respect of the disputed domain name. The Respondent believes the Complainant does not have any trade mark rights in respect of “standardandpoors”, and there was no need for the Respondent to seek approval from the Complainant before registering the disputed domain name.
The Respondent contends that the Complainant’s various trade mark registrations in China do not confer well-known mark status on the Trade Mark, and that it is not uncommon for different persons to register the same common trade mark.
The Respondent’s intention in registering the disputed domain name was to set up a business in respect of “Standard Puer Weight Loss Tea”1, “Poors” being the Chinese transliteration for Puer tea.
The Respondent has no knowledge of the finance industry and had never heard of the Complainant before receipt of the Complaint. The Complainant has not filed any evidence to prove bad faith registration and use on the part of the Respondent and to prove that the Respondent intended selling the disputed domain name to the Complainant for more than the Respondent’s out-of-pocket expenses. 6. Discussion and Findings 6.1 Language of the Proceedings
The language of the registration agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceedings should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceedings for the following reasons:
(1) the Complainant has communicated with the Respondent’s representatives by email in English ;
(2) given the fame and repute of the Trade Mark, the Respondent was clearly targeting a United States company when it registered the disputed domain name, and thus would have been on notice that any discussions concerning the disputed domain name would be in English.
The Respondent has requested that Chinese be the language of the proceedings for the following reasons:
(1) the Respondent is a resident of Guizhou in China and is unfamiliar with English;
(2) the Complainant has already sent an English language email to the Respondent, but the Respondent was unable to respond as the Respondent is unfamiliar with English;
(3) the language of the registration agreement is Chinese; and
(4) it would be extremely unfair for the Respondent if the language of the proceedings were to be English.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Although the Respondent professes no knowledge of English, the Respondent appears to have had little difficulty in engaging in email communications with the Complainant’s representatives, or arranging a representative to do so on the Respondent’s behalf, prior to the filing of the Complaint. Furthermore, the Respondent has been able to analyse the Complaint and prepare and file the Response, or arrange for a representative to assist the Respondent in doing so, notwithstanding the Respondent’s professed English language difficulties. It appears therefore the Respondent, or its representative, is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
Furthermore, it appears the Respondent is being somewhat disingenuous in claiming it was unable to respond to the English language email communications of the Complainant’s representatives, when, in fact, the Respondent’s representative did engage in English language communications with the Complainant’s representatives.
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent, or its representative, is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. it will accept the filing of the Complaint in English;
2. it will accept the filing of the Response in Chinese;
3. the Decision shall be rendered in English. 6.2 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 70 years.
The disputed domain name is identical to the Trade Mark, save that the word “and” is used instead of the symbol “&”, and there is no apostrophe.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is agreed amongst the Parties that the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 70 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent claims to have registered the disputed domain name in order to set up a business in respect of “Standard Puer Weight Loss Tea”. To date, however, the Respondent has made no use of the disputed domain name whatsoever. The Panel notes the correct “pinyin” transliteration for Puer tea is “puer”, and most certainly not “poors” as claimed by the Respondent. The Panel finds the Respondent’s contentions in this regard unbelievable and fanciful.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any credible evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“Circumstances indicating that the Respondent has registered or 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 Respondent’s documented out-of-pocket costs directly related to the domain name.”
In all the circumstances of these proceedings, and in particular given the repute of the Trade Mark, the Respondent’s passive holding of the disputed domain name, and the request for a “proposal” from the Respondent’s representative, the Panel has no hesitation in concluding that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for an amount far in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain name.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(i) of the Policy.
The Panel also considers, in all the circumstances of these proceedings, the repute of the Trade Mark and the Respondent’s passive holding of the disputed domain name provide sufficient further grounds for a finding of bad faith under the Panel’s general discretion under paragraph 4(b) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 21, 2012
1 “标准普洱减肥查”.
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