The Complainant is Mr. Price Group Limited of Durban, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Shanghai Shunchao Digital Technology Co., Ltd. of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 35 Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 26, 2012, the Center sent an email communication to the parties, both Chinese and English, regarding the language of the proceeding. On October 29, 2012, the Complainant confirmed its request which was included in the Complaint that English be the language of the proceeding. The Respondent 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 Respondent of the Complaint, and the proceeding commenced on November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 23, 2012.
On November 26, 2012, the Center received a short email communication from the Respondent mainly arguing the difference between the disputed domain name and the Complainant’s trade mark. The Center acknowledged receipt of the email on the same day indicating the Panel (upon appointment) would have the sole discretion to determine its admissibility and/or any appropriate procedural steps.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 28, 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.
On November 30, 2012, the Respondent sent a further brief email communication to the Center arguing the Respondent had registered the disputed domain name for its own use; domain names are registered on a first come, first served basis; trade mark registrations are class specific and the Complainant’s registration in China is for clothing and other goods in Class 25; and therefore the disputed domain name has nothing to do with the Complainant’s trade mark. 4. Factual Background A. Complainant
The Complainant is a company incorporated in South Africa and the owner of over 300 registrations in numerous countries for the trade mark MR PRICE (the “Trade Mark”). The Trade Mark is a well-known trade mark in South Africa in relation to retail. B. Respondent
The Respondent is a company apparently incorporated in, and with an address in, China. C. The Disputed Domain Name
The disputed domain name was registered on April 7, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is one of Southern Africa’s foremost retailers of clothing, footwear, fashion accessories, home ware and textiles. The Complainant first commenced using the Trade Mark in 1985. The Complainant presently operates 510 stores across Africa under the Trade Mark, which include 338 MR PRICE stores, 36 MR PRICE SPORT stores and 136 MR PRICE HOME stores. The Complainant’s retail sales for the 2012 financial year totaled almost US$1.3 billion.
The disputed domain name is identical with the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It has been passively held by the Respondent. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name has been registered and used in bad faith.
In response to a cease and desist letter sent by the Complainant’s representatives, the Respondent offered to sell the disputed domain name to the Complainant “for a good price”. This indicates the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or a competitor of the Complainant for a price exceeding its reasonable out-of-pocket expenses incurred in registering the disputed domain name. B. Respondent
The Respondent did not file a formal Response, but sent two separate email communications to the Center after the deadline for filing the Response had expired. 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) 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 Complainant is a South African company and conducts its business in English;
(2) The disputed domain name consists of two English language words;
(3) The Respondent’s initial response to the cease and desist letter from the Complainant’s legal representatives was in English, which suggests the Respondent is able to comprehend English;
(4) The Complainant would incur significant further expense and the proceeding would be delayed if it were to be conducted in Chinese.
The Respondent did not file a formal 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).
It is clear from the Respondent’s response to the Complainant’s representatives that it understands and is able to communicate in the English language. 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) that the language of the proceeding shall be English. 6.2 Unsolicited Filings
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, panels have the sole discretion under the Rules to determine the admissibility of unsolicited filings.
In the present proceeding, the Respondent did not file a Response, but sent two separate emails to the Center after the deadline for the Response had expired.
As this is a clear-cut transfer case, and the Respondent’s submissions have done nothing to aid the Respondent’s case, the Panel has determined, for procedural efficiency and in the interests of transparency, that it will refer to the Respondent’s unsolicited filings in this decision. However, in all the circumstances, it is not necessary for the Complainant to be given the opportunity to make any further submissions in reply. 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 name by over 25 years.
The disputed domain name is identical with the Trade Mark. It is trite that, for the purposes of determining confusing similarity between domain names and trade marks under paragraph 4(a) of the Policy, punctuation marks such as hyphens are to be disregarded.
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 non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) 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
(2) The Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(3) The Respondent is making a legitimate non-commercial or fair use of the disputed domain name, 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 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 25 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 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 any legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. 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)(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 trade mark 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.
The evidence shows the Respondent has offered to sell the disputed domain name “for a good price”. The Panel has no hesitation in concluding, in all the circumstances, in using this expression the Respondent clearly intended to offer to sell the disputed domain name for an amount 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.
For 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 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: December 12, 2012
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