The Complainant is Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) of Tokyo, Japan, represented by Baker & McKenzie, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Zhang qianqian of Jilin, China and fu longyang of Dengfeng, China. 2. The Domain Names and Registrars
The disputed domain name is registered with Xin Net Technology Corp.
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2012. On July 19, 2012, the Center transmitted by email to Xin Net Technology Corp. and B, Inc. a request for registrar verification in connection with the disputed domain names. On July 20 and 23, 2012, Xin Net Technology Corp. and B, Inc. respectively transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 23, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 26, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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, and the proceeding commenced on July 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on August 20, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 24, 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 Japan and the owner of numerous national and international registrations for the trade mark SEIKO (the “Trade Mark”), the earliest dating from 1925, including an international registration designating China, where the Respondent is based. The Trade Mark has been registered in the United Kingdom since 1963. The Trade Mark is a well-known mark worldwide in respect of watches. B. Respondent
The Respondents are individuals apparently with addresses in China. C. The Disputed Domain Name
The disputed domain name was registered on June 6, 2012.
The disputed domain name was registered on July 4, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant commenced operations in Japan in 1881 and first marketed watches under the Trade Mark in 1924. The Trade Mark is a famous international trade mark in respect of watches. The Complainant markets and sells its watches under the Trade Mark worldwide.
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 “uk” and “watch”.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names have been used in respect of unauthorised websites offering for sale watches under the Trade Mark (the “Websites”). Furthermore, the Websites have reproduced images of the Complainant’s watches as well as the Complainant’s advertising campaigns for its watches, the copyright in which is owned by the Complainant. The content of the Websites suggests, contrary to the fact, that the Respondent is an authorised reseller of the Complainant’s watches. The Websites do not contain any disclaimers in respect of the Respondent’s relationship with the Complainant.
The disputed domain names have been registered and used in bad faith.
The Respondent is using the disputed domain names in order to create a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
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 proceeding 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 proceeding should be English.
Paragraph 11(a) of the Rules 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 primary reason that the Websites are English language websites clearly targeted to consumers in the United Kingdom, which demonstrates the Respondent is proficient in the English language and will not be unduly prejudiced should the proceeding be conducted in the English language.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judiciously 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 notes, for the reasons specified by the Complainant, it appears the Respondent 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).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent 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 proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules 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 disputed 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. The disputed domain names were registered at around the same time, on July 4, 2012 and June 6, 2012, respectively. The listed registrant contact information for each of the disputed domain names contains the exact same telephone number and facsimile number. The content of the Websites is almost identical.
All of this suggests that common control is being exercised over the disputed domain names.
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 area1. 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 the date of registration of the disputed domain names by over 60 years.
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 a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name 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 disputed domain names contain the Trade Mark in its entirety. The Panel concludes that the addition of the generic and descriptive words “uk”, the common acronym for the United Kingdom, and “watch” 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 non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has 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 60 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, 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 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, the disputed domain names are being used in respect of the Websites which have not been authorised by the Complainant and which offer for sale discounted watches under the Trade Mark.
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 any legitimate noncommercial 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 of the disputed domain names in bad faith on the part of the Respondent:
By using the disputed domain names, 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.
The Panel finds the Respondent’s conduct in registering the disputed domain names and offering for sale on the Websites discounted watches under the Trade Mark, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent has copied and reproduced on the Websites various images the copyright in which is owned by the Complainant. The Panel finds this conduct amounts to further evidence of bad faith.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
In all the circumstances of this case, the Panel finds the failure of the Respondent to file a Response is a further indication of bad faith.
For 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 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 M.W. Hughes
Sole Panelist
Dated: September 7, 2012
1 Where appropriate, for ease of reference, the Panel shall refer to the Respondents in the singular in this Decision.
Full & Egal Universal Law Academy