The Complainant is NV Nutricia of Zoetermeer, Netherlands, represented by Dreyfus & associés, France.
The Respondent is Linyu / Yi wenfeng, of Xiamen, Fujian, China, and Shenzhen, Guangdong, China, respectively. 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 June 12, 2013. On June 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 17, 2013. On June 18, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, 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 together with the amended 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 June 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on July 15, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 31, 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 A. Complainant
The Complainant is a company incorporated in the Netherlands and the owner of an international registration and three national registrations in China for the trade mark KARICARE (the “Trade Mark”). B. Respondent
The Respondent is an individual apparently with an address in China. C. The Disputed Domain Name
The disputed domain name was registered on February 22, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a leading specialist producer of baby food. It has been the owner of the Trade Mark since 1996. The Trade Mark was developed in 1993 and is based upon the KARITANE brand of infant milk formula manufactured in New Zealand since 1927. It is a combination of the word “Kari” from the place name and the brand KARITANE, and the word “Care”. From 1993, the KARITANE trade mark was progressively replaced with the Trade Mark. For a time both the KARITANE and KARICARE brands were used on the same products to assist in brand transition and educating consumers. The Trade Mark therefore reflects a long history in the infant formula market and is well recognized. It has been used extensively and continuously across the world since 1993, particularly in Asia.
The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, together with the generic and non-distinctive word “baby”.
The Respondent has not made any use of the disputed domain name. The Respondent has not been authorized to register and use any domain names incorporating the Trade Mark and is not affiliated with the Complainant in any way. The Respondent is not commonly known by the disputed domain name and has not made a non-commercial or fair use of it. The Complainant sent a cease and desist letter to the Respondent by registered letter, fax and email, seeking transfer of the disputed domain name. The Respondent has never replied.
The disputed domain name has been registered and used in bad faith. The Respondent must have known of the Complainant and the Trade Mark when it registered the disputed domain name. The Complainant has satisfied the relevant factors for establishing bad faith registration and use when domain names have been passively held. 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 following reasons:
(1) The Complainant is located in the Netherlands and has no knowledge of Chinese;
(2) If the language of the proceeding were to be Chinese, the proceeding would be unduly delayed and the Complainant would incur translation costs that are likely to be higher than its overall costs for the proceeding; and
(3) English is the primary language of international relations and it is one of the working languages of the Center.
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 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).
This is not a proceeding where the Complainant has been able to adduce any evidence to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The evidence shows that the disputed domain name has never been used and the Respondent has not entered into any communications with the Complainant or the Center.
The Panel does not find the third reason put forward by the Complainant convincing. Chinese is one of the many working languages of the Center.
Had the Respondent corresponded with the Center to advise the Respondent is not proficient in the English language, the Panel would likely have determined that Chinese shall be the language of the proceeding.
The Panel is however mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. Absent any communications whatsoever from the Respondent, and absent any evidence of use by the Respondent of the disputed domain name, the Panel concludes, in all the circumstances, 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 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 many 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 trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain name comprises the Trade Mark in its entirety together with the non-distinctive and generic word “baby”. This does not serve to distinguish the disputed domain name from the Trade Mark in any significant way, in particular as the Complainant’s products manufactured, marketed and sold under the Trade Mark are for use by babies.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and 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:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed 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 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 authorized, 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 many years. The Panel finds on the record that 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 (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and 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 has been used in connection with a bona fide offering of goods or services. The disputed domain name has not been used at all.
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 a 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 fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name has never been used by the Respondent.
It is long been established under UDRP jurisprudence that passive holding of a domain name can, depending on the circumstances, amount to registration and use in bad faith.
The Panel considers the following matters are supportive of a conclusion that the disputed domain name has been registered and used in bad faith:
1. The disputed domain name comprises the Trade Mark in its entirety together with the word “baby”, which in itself is strong evidence to suggest the Respondent, in registering the disputed domain name, was aware of the Trade Mark and of the Complainant’s baby food products manufactured, marketed and sold under the Trade Mark;
2. The Complainant is active in the Chinese market and has registrations for the Trade Mark in China, where the Respondent is apparently based;
3. Internet searches for the Trade Mark overwhelmingly display hits for the Complainant’s products bearing the Trade Mark;
4. The Respondent has provided incorrect contact details (an incomplete address and incorrect telephone and fax numbers); and
5. The Respondent did not respond to the Complainant’s cease and desist letter and did not file a Response.
The Complainant contends the Trade Mark is a well-known trade mark, and relies on the decision in N.V. Nutricia v. Moniker Privacy Services / Jorge Romero,WIPO Case No. D2011-0215 to support its contention. The Panel is unable to conclude, on the evidence, that the Trade Mark is a well-known trade mark. The findings of the learned panelist in the cited decision were that the Complainant’s products (and by inference not just the Complainant’s products manufactured and sold under the Trade Mark) are widely recognized in relation to baby nutrition and feeding. In order to achieve recognition as a well-known or famous mark under the Paris Convention, the Complainant would need to adduce cogent evidence to demonstrate that the Trade Mark is extremely well-known amongst the relevant public. There can be no doubt that the Complainant is a leading international player in the field of baby food. The Panel is however unable to conclude, on the evidence filed with the Complaint, that the Trade Mark is a well-known or famous trade mark.
The Panel nonetheless finds, in all the circumstances, and in particular for the reasons listed above, that the requisite element of bad faith has been satisfied.
For all 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: August 14, 2013
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