Complainant is Abdij Affligem of Afligem, Belgium represented by Geraldine Hopmans-Beelaerts, Kingdom of the Netherlands.
Respondent is Jiang Jun of Tiyuguanglu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On April 24, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On April 26, 2013, Complainant requested that English be the language of proceeding. On April 29, 2013, Respondent requested that Chinese be the language of 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 May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2013. Apart from Respondent’s language submissions, which was also reiterated in its email on May 6, 2013, Respondent did not formally reply to the Complaint.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 6, 2013. 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 non-profit organization located in Belgium, who has licensed its AFFLIGEM brand to Brouwerijen Alken-Maes N.V., which is part of the Heineken Company located in the Netherlands. Complainant and its predecessors in title have used the mark AFFLIGEM for many years in relation to beer and ales. Complainant is the registered owner of various word marks and stylized trademarks consisting of the word “affligem” in a number of jurisdictions, including countries within Europe and North America. Complainant has owned its European registrations since October 17, 2008 and December 4, 2008, and its United States registrations since February 19, 2002 and August 18, 2009. The Panel accepts that AFFLIGEM is a well known trade mark.
Respondent “Jiang Jun” is based in China. The disputed domain name was registered on March 26, 2013. The disputed domain name expires on March 26, 2015. 5. Parties’ Contentions A. Complainant
Complainant requests the proceedings be in English because (1) to the best of Complainant’s knowledge, the language of the Registration Agreement is in English, (2) the Complaint has been submitted in English, (3) the language used on Respondent’s website was English stating that the website was for sale, and (4) since Chinese (the native language of Respondent) and Dutch (the native language of Complainant) are not understood by both parties, English as a neutral language should be appropriate.
Complainant further requested that the proceedings be in English after Respondent—by email to the Center—objected to Complainant’s request. Complainant further requested the proceedings be in English because (1) a “.com” domain name normally has English content and an English speaking public, as it was originally administered by the United States Department of Defense and remains under United States jurisdiction, (2) Respondent must know a way to read or understand English, and (3) Complainant received an email from a friend of Respondent which was in English.
Complainant claims the disputed domain name is identical or confusingly similar to Complainant’s AFFLIGEM trademark because Complainant owns several registrations to the AFFLIGEM trademark in several countries of the European Union and the United States for beer and ales, and because the right to use the identical name “affligem” in connection with beer and ales should be reserved for the trademark owner.
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because (1) Respondent appears to be using the disputed domain name only to sell it for EUR 3000, (2) the website which resolves from the disputed domain name has been inactive since Complainant offered to purchase the disputed domain name, (3) Respondent’s website was updated only once since registration, (4) there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, and (5) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but rather, aiming for commercial gain by keeping the disputed domain name with the intent to sell it.
Complainant claims Respondent has registered and is using the disputed domain name in bad faith because (1) Respondent publicly listed the disputed domain name for sale soon after registration for EUR 3000, substantially more than the out-of-pocket costs of Respondent, and (2) knew of Complainant’s AFFLIGEM trademark by virtue of Respondent including targeted results relating to Complainant’s goods on its website. B. Respondent
Respondent objected to Complainant’s request for the proceeding to be in English and requested that the proceeding be in Chinese. Respondent did not otherwise file a formal reply to Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
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. Respondent objected to Complainant’s request and requested to have the language of the proceeding be Chinese. The Center has communicated notice of the Complaint in both English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The content featured on websites linked to the disputed domain name was displayed in English before Complainant sought to purchase the disputed domain name from Respondent, and this demonstrates to the Panel that Respondent has a working knowledge of the English language. Further, the disputed domain name incorporates English language words, including the generic term “beer” added to Complainant’s AFFLIGEM trademark. Taking the foregoing points into account along with Respondent’s failure to file a formal reply, 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. Standard for UDRP Proceedings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. C. Identical or Confusingly Similar
The record shows that Complainant owns trademark rights in AFFLIGEM throughout Europe and North America prior to the disputed domain name’s registration in 2013. The record also shows that Respondent is purporting to use—or has used—the disputed domain name in connection with the sale of the goods for which Complainant owns trademark rights.
The disputed domain name combines the literal element consisting of Complainant’s AFFLIGEM trademark with the generic term “beer.” The Panel views the “affligem” portion of the disputed domain name as identical to Complainant’s AFFLIGEM trademark, and so the disputed domain name features Complainant’s trademark in its entirety. The Panel finds that Complainant has established its rights in the AFFLIGEM trademark.
The mere addition of a generic term to Complainant’s AFFLIGEM 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 that mark.” Research in Motion Ltd. v. One Star Global LLC,WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trade mark 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 trade mark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffman-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.” Id.
Here, the disputed domain name incorporates the entirety of Complainant’s trademark, and the additional generic term does not reduce the prominence of Complainant’s trademark therein. The addition of the generic term “beer” only increases the likelihood of confusion because they relate to Complainant’s business. See Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809. Further, the inclusion of a generic term to Complainant’s AFFLIGEM trademark does not create a new or different mark that is materially different from Complainant’s AFFLIGEM trademark. It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain name.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s AFFLIGEM trademark and that the requirements of Paragraph 4(a)(i) of the Policy have been satisfied. D. 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 “affligem”. Thus, Complainant has successfully presented a prima facie case, which Respondent has not rebutted. Further, as discussed below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
The Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy have been satisfied. E. Registered and Used in Bad Faith
The record shows that Complainant owns trademark rights in AFFLIGEM that predate creation of the disputed domain name. The disputed domain name is predominantly composed of Complainant’s trademark and incorporates the trademark in its entirety. An Internet search for “affligem” returned links predominantly associated with Complainant or Complainant’s website. The Panel finds that Respondent was likely aware of Complainant or should have known of Complainant when registering the disputed domain name.
The record also shows that before Respondent’s website started returning a “Network Error,” the contents of the website resolving from the disputed domain name featured the AFFLIGEM trademark and advertised similar-looking goods as those offered by Complainant under the AFFLIGEM trademark. The Panel finds that Respondent’s past advertisement of goods constitutes commercial competition with Complainant and Complainant’s goods that trades on the goodwill invested in Complainant’s AFFLIGEM trademark.
The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. See Lancôme Parfums et Beaute & Comagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. By registering the disputed domain names using Complainant’s AFFLIGEM trademark and advertising goods in competition with Complainant using Complainant’s well-known and registered trademark, Respondent is intentionally diverting traffic from Complainant’s business and websites. Indeed, the disputed domain name resolved to a website with click-through advertisements to Complainant’s competitors. Such “parking pages” inherently derive commercial gain. See Hermès International v. Whois privacy services provided by DomainProtect LLC / Domain Administrator, Internetconsult Ltd,WIPO Case No. D2011-2146 (“[I]t is very likely that this parking page provides revenues to the Respondent, who is therefore trading off the reputation of the Complainant’s famous trademarks.”).
Paragraph 4(b)(i) of the Policy states that where a registrant “has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name”, such behavior may constitute evidence of bad faith registration and use.
The record shows that Respondent offered the disputed domain name for sale for EUR 3000, which is in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name. Respondent has owned the disputed domain name for less than a year. Such use cannot exceed a fraction of the amount for which Respondent has offered it for sale, and thus, the record shows that Respondent primarily obtained the disputed domain name for the purpose of selling the disputed domain name to Complainant or Complainant’s competitors for valuable consideration. The record offers no evidence to refute this finding.
Further, Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.
The record shows that Respondent has used the disputed domain name to advertise goods in commercial competition with Complainant and Complainant’s goods. Moreover, the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the website linked to the disputed domain name, without an accurate disclosure of Respondent’s relationship with Complainant, illustrates an intent to deceive consumers into believing that the disputed domain name is associated with, affiliated with, and/or endorsed by Complainant and cannot constitute a bona fide use. The record offers no evidence to refute this finding.
The Panel concludes that Respondent’s conduct falls within the scope of Paragraphs 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the requirements of Paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Kimberley Chen Nobles
Sole Panelist
Date: June 20, 2013
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