Complainant is Trelleborg Automotive Germany Gmbh of Breuberg, Germany represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Zhangxianqiong of SiChuan, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Guangzhou Ming Yang Information Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2012. On June 19, 2012, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the disputed domain names. On June 21, 2012, Guangzhou Ming Yang Information Technology 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 June 21, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On June 21, 2012, Complainant confirmed its request that English be the language of the proceeding. On June 26, 2012, Respondent submitted its request that Chinese be 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 Respondent of the Complaint, and the proceedings commenced on June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. An informal communication from Respondent was filed with the Center on July 19, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 30, 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
Complainant is a member of a similarly named global industrial group offering polymer technology and applications support that has been listed on the Stockholm Stock Exchange since 1964. Complainant’s parent Trelleborg AB is the registered owner of a Community trademark consisting of the word “trelleborg” registered on December 22, 2008. Complainant’s parent also owns a number of domain names prominently featuring the word “trelleborg” in the second level domain. Complainant is the registered owner of the business name “Trelleborg Automotive Germany GmbH” registered on April 13, 1983.
On January 3, 2011, Complainant and Vibracoustic GmbH & Co. KG (“Vibracoustic”) announced a joint venture. Complainant and Vibracoustic plan to merge their respective automotive anti-vibration operations into an independent company. Vibracoustic has consented to Complainant filing the Complaint on Vibracoustic’s behalf and to register the disputed domain names in Complainant’s name if transfer is granted. Carl Freudenberg KG is the registered owner of an international trademark consisting of the word “vibracoustic,” registered in 1998, and designating a variety of countries, including China. Carl Freudenberg KG is the founder of The Freudenberg Group, and Vibracoustic is a member of The Freudenberg Group.
Respondent is based in China. The disputed domain name registrations were created on June 14, 2011. 5. Parties’ Contentions A. Complainant
Complainant requests the proceedings be in English because (1) Respondent has replied to a previously-sent cease-and-desist letter using articulate English, (2) the business names incorporated into the disputed domain names are German and not Chinese, which indicates Respondent seeks to draw English-character-based Internet search traffic, (3) Respondent has a demonstrated familiarity with English, and (4) it would be cumbersome and to Complainant’s disadvantage to be forced to translate its portion of the proceedings into Chinese.
Complainant claims it has authority to argue on behalf of the VIBRACOUSTIC trademark owner and to accept transfer of the disputed domain names on behalf of the VIBRACOUSTIC trademark owner because Complainant has evidence of consent to such agency from one or more officers of Vibracoustic.
Complainant claims the disputed domain names are confusingly similar to the TRELLEBORG and VIBRACOUSTIC trademarks because the disputed domain names contain the trademarks in their entirety and because their combination (including insertion of a hyphen) does not distinguish the disputed domain names from the TRELLEBORG and VIBRACOUSTIC trademarks or the registered business names. Rather, their combination increases the likelihood of confusion because the terms relate directly to Complainant’s business and its joint venture with Vibracoustic associated with the TRELLEBORG and VIBRACOUSTIC trademarks and business names. Furthermore, the confusion will likely lead to presumed association between the owner of the disputed domain names and Complainant, which may tarnish Complainant’s reputation since the websites linked to the disputed domain names have offered them for sale.
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because (1) Respondent has not established rights through common usage, (2) Respondent registered the disputed domain names one month after the joint venture was announced in Shanghai, (3) Respondent knew of Complainant’s legal rights in the TRELLEBORG and VIBRACOUSTIC trademarks and the registered business names prior to registering the disputed domain names, (4) Respondent registered the disputed domain names primarily for the purpose of selling them to Complainant, which indicates bad faith, (5) Respondent has no relationship with Complainant and is not authorized by Complainant in any way to use the TRELLEBORG and VIBRACOUSTIC trademarks or the registered business names, and (6) Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.
Complainant claims Respondent has registered and is using the disputed domain names in bad faith because (1) Respondent replied to a cease-and-desist letter by offering to sell the disputed domain names to Complainant at an inflated price, (2) prior to Respondent’s receipt of the cease-and-desist letter, the websites linked to the disputed domain names included text stating that the disputed domain names were for sale, and the disputed domain names have not been actively used otherwise, and (3) Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain. B. Respondent
Respondent has requested the language of proceedings be Chinese and has indicated receipt of the Complaint and other documents sent by the Center, but Respondent has not replied to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreements for the disputed domain names 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 requested the language of the proceeding be Chinese, but has not otherwise participated in the proceedings.
The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file a response in either language. The text offering the disputed domain names for sale, once featured on the websites linked to the disputed domain names, was in both English and Chinese, and Respondent has responded to an English language cease-and-desist letter in competent English. This demonstrates to the Panel that Respondent has a working knowledge of the English language. Taking the foregoing points into account along with Respondent’s default and lack of any substantive communication in the proceedings, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary cost and delay. B. Identical or Confusingly Similar
“The first question to be answered is whether Complainant has rights in a mark to which the disputed domain name is alleged to be identical or confusingly similar. These rights need not be rights of ownership and need not be exclusive. A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark. A Complainant, through its affiliation with its grandparent corporation which owns a trademark registration, has been held to have rights in and duties concerning the mark.” Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756.
The record shows Complainant’s parent Trelleborg AB owns trademark rights in TRELLEBORG that have been recognized in Europe prior to the creation of the disputed domain name registrations in 2011. The record also shows that Complainant is the registered owner of and operates under a business name incorporating the TRELLEBORG trademark, and that Complainant is affiliated with Trelleborg AB. As a result of these facts, the Panel finds that Complainant has a sufficient basis to rely on rights in the TRELLEBORG trademark for the purposes of this Complaint. Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107.
The record also shows through a preponderance of evidence that, for similar reasons as those discussed above, Vibracoustic has at least a license to use the VIBRACOUSTIC trademark, and that Vibracoustic has granted limited authority to Complainant to claim the disputed domain names on the behalf of Vibracoustic and their joint venture. The Panel finds that the Complainant has a sufficient basis to rely on these rights in the combination of the TRELLEBORG and VIBRACOUSTIC trademarks, at least so far as the combination is reflected in the presently disputed domain names, for the purposes of this Complaint. See DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939 (in the absence of evidence to contrary, it would be “unreal” to ignore relationship of founder to own company and not infer at least an implied license to use, such license granting “rights which meet the requirements of paragraph 4(a)(i) of the Policy”); Komatsu Deutschland GmbH v. Ali Osman / ANS, supra (the fact that the complainant operated under the trademarked “Komatsu” name, as a subsidiary of Komatsu Limited, was persuasive); Telcel, C.A. v. jerm and Jhonattan Ramírez,WIPO Case No. D2002-0309 (owner of one trademark in co-branding matter need not be a party to the proceeding because there was evidence of grant of rights to complainant and because the disputed domain name was confusingly similar to complainant’s mark by itself).
The disputed domain names combine the literal element consisting of Complainant’s TRELLEBORG trademark with the literal element consisting of the VIBRACOUSTIC trademark. The Panel views the “trelleborg” portion of the disputed domain names as identical to Complainant’s TRELLEBORG trademark, and so the disputed domain names feature Complainant’s trademark in its entirety. The Panel also views the combined “trelleborg” and “vibracoustic” portions of the disputed domain names as identical to the simple combination of the TRELLEBORG and VIBRACOUSTIC trademarks, and so the disputed domain names feature the combined trademarks in their entirety.
It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s country of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence”).
The mere addition of another trademarked term to Complainant’s TRELLEBORG trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227.
Here, each of the disputed domain names incorporates the entirety of Complainant’s trademark, and the addition of the VIBRACOUSTIC trademark does not reduce the prominence of Complainant’s trademark therein. Rather, the addition of the VIBRACOUSTIC trademark increases the likelihood of confusion because it relates directly to Complainant’s business, goods, and joint venture associated with the TRELLEBORG trademark and the combination of the TRELLEBORG and VIBRACOUSTIC trademarks. Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809. It is therefore likely that consumers would be confused by the use of Complainant’s trademark, as well as the combination of trademarks, in the disputed domain names. See, generally, Telcel, C.A. v. jerm and Jhonattan Ramírez, supra.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s TRELLEBORG trademark and the combination of the TRELLEBORG and VIBRACOUSTIC trademarks. The Panel concludes and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the term “trelleborg” or “vibracoustic.” As such, Complainant has successfully presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, which Respondent has not rebutted. Discussed more fully below, the Panel also finds Respondent is not engaged in a bona fide offering of goods and services. Furthermore, there is no evidence in the record to indicate that Respondent’s use of the disputed domain names is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain names.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
Policy paragraph 4(b) provides that the following circumstance (among others) is deemed to be evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
The record shows Complainant has rights in the TRELLEBORG trademark that precede creation of the disputed domain names. The disputed domain names feature Complainant’s trademark and incorporate the trademark in its entirety. A simple Internet search for “trelleborg” results in links predominantly related to Complainant and Complainant’s websites. Similarly, the disputed domain names feature the combination of Complainant’s trademark and the VIBRACOUSTIC trademark and incorporate the combined trademarks in their entirety. A simple internet search for the combination of “trelleborg” and “vibracoustic” results in links predominately related to Complainant and Complainant’s joint venture with Vibracoustic. The Panel finds that Respondent was likely aware of Complainant and Complainant’s joint venture with Vibracoustic, or should have known, when registering the disputed domain names.
In addition, the record shows that the content of the websites linked to the disputed domain names featured an offer to sell the domain names to the public, that the disputed domain names were otherwise unused, and that Respondent offered to sell the disputed domain names to Complainant for a sum in excess of typical out-of-pocket costs related to registering and linking simple “for sale” websites to the disputed domain names. The Panel finds that the circumstances surrounding the advertisement for sale and offer to sell to Complainant indicate that Respondent’s primary purpose for registering the disputed domain names was to sell it to either Complainant or a competitor to Complainant for a sum more likely than not in excess of out-of-pocket costs related to Respondent’s registration and use of the disputed domain names. This, especially coupled with Respondent’s prior knowledge, indicates Respondent registered and is using the disputed domain names in bad faith.
The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(i) of the Policy. 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.
Kimberley Chen Nobles
Sole Panelist
Date: August 13, 2012
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