The Complainant is Normalu of Kembs, France, represented by Fidal., France.
The Respondents are Shanghai Pinpoint Network-Tech co. / Honchie of Shanghai, China. 2. The Domain Names and Registrars
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd.
The disputed domain name is registered with Web Commerce Communications Limited dba WebN. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012.
On April 23, 2012, the Center transmitted by email to Web Commerce Communications Limited dba WebN. a request for registrar verification in connection with the disputed domain name . On April 23, 2012, Web Commerce Communications Limited dba WebN transmitted by email to the Center its verification response confirming that the Respondent, Shanghai Pinpoint Network-Tech co., is listed as the registrant and providing the contact details.
On April 26, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name . On May 2, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent, Honchie, is listed as the registrant and providing the contact details.
On May 3, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceeding. On May 9, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not make any submissions with respect to the language of the proceeding.
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 Respondents of the Complaint, and the proceeding commenced on May 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Response was filed with the Center on June 5, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 18, 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 France and the owner of several national and international registrations for the word and logo trade mark BARRISOL (the “Trade Mark”), the earliest dating from 1987, including registrations in China, where the Respondents are based. B. Respondents
The Respondent Shanghai Pinpoint Network-Tech co. is a company incorporated in China and the applicant for registration in China of the trade mark巴力BARRISOL BARRIQUE.
The Respondent Honchie appears to be an individual based in China. C. Disputed Domain Names
The disputed domain names and were both registered on the same date, August 1, 2008. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a well-known manufacturer of stretch ceilings, established in France in 1967. The Complainant’s stretch ceilings are manufactured and sold under the Trade Mark using over 1200 authorized installers in over 110 countries worldwide, including in China. The Complainant has received over 30 architectural awards worldwide for its stretch ceilings manufactured and sold under the Trade Mark.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety, together with the non-distinctive words “fabric” and “star”.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated with or authorized by the Complainant in any way and are not commonly known under the name BARRISOL.
The disputed domain name is linked to a website (the “Website”) which features the Complainant’s word and logo Trade Mark, pictures of the Complainant’s original BARRISOL stretch ceilings and translations of technical information regarding the Complainant’s stretch ceiling products taken from the Complainant’s official website, and appears to offer for sale stretch ceilings under the Trade Mark.
The disputed domain name is inactive.
The Complainant has had an exclusive distribution agreement for the Chinese market with a company named EURASIA AP since 2004.
The operator of the Website appears to be affiliated with or related to one of the Complainant’s former distributors for the Chinese market in the early 2000s, PUNFET (EUROPE) Co Ltd.
The Respondents have registered and used the disputed domain names in bad faith.
The Respondents are using the disputed domain name in order to create a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Website. The Website does not contain any disclaimer as to the Respondents’ relationship with the Complainant. The Complainant believes the Respondents are using the Website to offer for sale either stretch ceilings not manufactured by the Complainant, or counterfeit stretch ceilings under the Trade Mark.
The Respondents’ passive use of the disputed domain name amounts to registration and use in bad faith. B. Respondents
The Respondents made the following submissions in the Response.
The Respondents claim to have registered the disputed domain names legally, and claim rights and legitimate interests in the disputed domain names. The Respondents also claim the disputed domain names were registered in good faith.
The Respondents claim the Complainant does not do any business in China, the Trade Mark is not a well-known trade mark, and the Respondents use of the disputed domain names in doing business in China is therefore not likely to mislead the public.
The Respondents claim the main products sold on the Website are fire resistant membranes. The Respondents also claim to have been awarded a certificate during the Shanghai 2010 World Expo.
The Respondents have two registrations in China for the trade mark BARRISOL which were published in October 20111, and a pending registration for the trade mark巴力BARRISOL BARRIQUE which has recently been accepted by the Chinese Trade Marks Office.
The Respondents claim to have vigorously promoted their business in China under the disputed domain names and deny their actions have been in bad faith or have caused any harm to the Complainant. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreements for the disputed domain names 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 proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondents to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding 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 proceeding. 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 proceeding (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 proceeding for the following reasons:
(1) The disputed domain names are in the English language;
(2) The Website is available in the English as well as Chinese language;
(3) Requiring the Complainant to submit documents in Chinese would cause undue delay and substantial further expense.
The Panel notes that, although the Website appears at first glance to have an English language version, the “English” icon on the Website is in fact inactive, and the Website is entirely in the Chinese language.
The Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. The Respondents chose to file the Response in 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).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondents, or its representative, are 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 proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English. 6.2 Consolidation of Multiple Respondents
UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
Each of the disputed domain names comprises the Trade Mark in its entirety and was registered on the same date. The listed registrant contact information for each of the disputed domain names contains the exact same contact person, email address, telephone number and facsimile number. The address for both is in Shanghai, China.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties. Accordingly, the Panel, having regard to all relevant circumstances, concludes that consolidation of the Respondents is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area2. 6.3 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 by over 40 years the date of registration of the disputed domain names.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to disputed domain names has little, if any, effect on a determination of confusing similarity between the domain names and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of the non-distinctive, generic words “fabric” and “star” does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are 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 the 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.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names 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 names by over 40 years. There is therefore a prima facie case that the Respondent has no rights and 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 has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
To the contrary, not only has the Respondent registered the disputed domain names comprising the Trade Mark many years after the Complainant first sold its stretch ceiling products in China under the Trade Mark, but the Respondent has also brazenly set up the Website featuring the word and logo Trade Mark, pictures of the Complainant’s stretch ceilings, and translations of technical information taken from the Complainant’s website.
Furthermore, the Respondents have recently obtained two registrations in China for the trade mark BARRISOL and have recently had a pending application in China for the trade mark巴力BARRISOL BARRIQUE accepted by the Chinese Trade Marks Office. The Respondent has clearly done this in a blatant attempt to legitimize its unauthorized use of the Trade Mark in China.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
It is clear that the Website is being used in order to pass off the business of the Respondent (or the business of the operator of the Website) as a business of or licensed by the Complainant, as evidenced by the blatant and prominent use of the Trade Mark on the Website, the use of pictures of the Complainant’s stretch ceilings on the Website, and the apparent copying and translating of technical information from the Complainant’s official website.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The disputed domain name has not been used. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of this disputed domain name by the Respondent amounts to an additional ground for a finding bad faith on the part of the Respondent.
Finally, the Panel considers the Respondent’s conduct in attempting to rely on its trade mark registrations and pending trade mark application in China to establish unauthorized de facto trade mark rights in the Trade Mark amounts to clear further evidence of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are 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 names and be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: June 26, 2012
1 The Panel notes however that neither of these registrations is registered in the name of either of the Respondents.
2 For ease of reference, the Panel shall refer to the Respondents in the singular in the rest of this Decision.
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