The Complainant is INDÚSTRIA E COMÉRCIO DE CONFECÇÕES DI MIRMAY LTDA of Nova Trento, State of Santa Catarina, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Qingrui Chen of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2013. On June 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2013, 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 July 1, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 3, 2013, the Complainant confirmed its request that English be the language of the proceeding. On July 6, 2013, the Respondent requested 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 the Respondent of the Complaint, and the proceeding commenced on July 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2013. The Response was filed with the Center on July 31, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 7, 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 Brazil and the owner of several registrations in Brazil and one registration in Paraguay for the trade mark DIMY (the “Trade Mark”). B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on November 16, 2001. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was founded in 1994. It manufactures and sells a wide range of fashion products under the Trade Mark and the trade mark DI MIRMAY, including clothing, bags and accessories.
The Trade Mark is derived from the Complainant’s trade mark DI MIRMAY, which is part of the
Complainant’s corporate name, and which was specially coined by combining the first three letters of the names of the Complainant’s founders, Miriam Bettencourt Melo and Mayra Voltolini Sartori.
DIMY/DIMIRMAY is one of the most desired fashion brands in Brazil, particularly amongst teenage girls and young women. The Complainant’s DIMY products constantly appear in fashion editorials in the most important Brazilian fashion magazines.
The Complainant has over 270 employees and manufactures more than 50,000 items per year, sold in over 1,000 retail stores.
The Complainant’s DI MIRMAY and M device trade mark was registered in Brazil with a filing date of December 20, 1996. Its registration for the word mark DIMY-DIRMAY was registered in Brazil with a filing date of August 22, 2005. The filing date for each of its registrations for the Trade Mark in Brazil is August 27, 2007.
In addition to its registrations for the Trade Mark, the Complainant claims unregistered trade mark rights in respect of the term DIMY. The Complainant claims to have been using the Trade Mark as an abbreviation for its DI MIRMAY trade mark continuously since 1996.
The disputed domain name is confusingly similar to the Trade Mark.
The Respondent has not been authorised to use the Trade Mark and has no rights or legitimate interests in the disputed domain name. The Respondent has been using the disputed domain name since as early as 2008 in respect of a Portuguese language pay per click website with direct references to the Trade Mark and the Complainant’s products, and featuring sponsored links to fashion related websites (the “Website”). The Website has at various times contained wording such as “verão 2008 DIMY” (summer 2008 DIMY) and “roupas dessa marca” (clothes for this brand). All of this suggests the Respondent targetted the Complainant and the Trade Mark when it registered the disputed domain, or at the least, at the time the registration for the disputed domain name was renewed. Such use is in breach of the Respondent’s express warranty under paragraph 2 of the Policy, and, furthermore, clearly misleads Internet users into believing the Website is sponsored by, affiliated with and/or endorsed by the Complainant.
The Respondent is not commonly known by the Trade Mark, and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent has intentionally registered and used the disputed domain name in order to divert traffic to the Website for commercial gain. There is no doubt that the Respondent was completely aware of the Complainant’s Trade Mark when the Respondent registered the disputed domain name and is now using the disputed domain name for financial gain, taking advantage of the Complainant’s well known trademarks in order to attract users and then divert the Complainant’s customers to third party websites.
The Complainant points to the Respondent’s apparent registration and use of almost 3,000 domain names as further evidence of bad faith, through engaging in a pattern of registering domain names in order to prevent the legitimate owners from reflecting their trade marks in the respective domain names.
The Complainant further contends that the failure of the Respondent to provide full and complete WhoIs information for the disputed domain name constitutes further evidence of bad faith. B. Respondent
The Respondent made the following submissions in the Response.
The Respondent contends the Complainant and its legal representatives have provided false or incomplete contact information and the proceeding should be dismissed on this ground alone.
The Respondent also asserts that the Complainant has engaged in reverse domain name hijacking.
The Respondent submits that the word “dimy” is a common generic surname and that, at the time of registration of the disputed domain name, the Complainant did not possess any rights in respect of the Trade Mark. The Respondent also claims there are existing third party registrations for the trademark DIMY in China.
The Respondent claims that given there are approximately 1.5 billion Chinese people in the world, there must be thousands of people with the same name as the Respondent.
The Respondent claims to have used the disputed domain name for 12 years using 4 different IP server addresses. The most recent upgrade of the Website was in May 2009. In addition, the Respondent has registered numerous ccTLD domain names comprising the Trade Mark and has set up various related DIMY websites. The Respondent also claims to use the disputed domain name in respect of the provision of email account services and claims to have more than 350,000 “members”. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain names 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.
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 content of the Website has always been in English and Portuguese;
(2) The website for , which is associated with the email address provided by the Respondent in the WhoIs information for the disputed domain name, is resolved to a pay per click website in English and Portuguese;
(3) Most of the other domain names apparently registered by the Respondent resolve to English language pay per click websites;
(4) All of the above demonstrates that the Respondent is proficient in English;
(5) The Complainant’s first language is Portuguese and the Respondent’s first language is Chinese, but both parties are able to understand English;
(6) The Complainant is unable to communicate in Chinese; and
(7) If the language of the proceeding were Chinese, it would cause delay and would be unfair to the Complainant, which would incur significant translation costs.
The Respondent has requested that Chinese be the language of the proceeding, for the following reasons:
(1) The Respondent was born in China, has never been outside China and cannot understand English. The Respondent is therefore unable to understand the documents filed by the Complainant;
(2) The language of the registration agreement for the disputed domain name is Chinese; and
(3) It would be unfair to the Respondent if the proceeding were to be conducted in English.
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).
Notwithstanding the Respondent’s assertions that it cannot understand English, the Respondent has nonetheless proceeded to file a lengthy Response with numerous annexures. The Panel finds, in all the circumstances, that sufficient evidence has been adduced by the Complainant to suggest that the Respondent is conversant 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.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. It will accept the filing of the Complaint in English;
2. It will accept the filing of the Response in Chinese; and
3. It will render its Decision in 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.
The Complainant claims unregistered trade mark rights in the Trade Mark dating back to 1996. However, the earliest evidence of use filed with the Complaint is an excerpt from a Brazilian fashion magazine dated July 2007. The Panel is therefore unable to conclude, on the evidence, that the Complainant’s rights in the Trade Mark predate July 2007.
Although the disputed domain name was registered six years before (1) the date of registration of the Trade Mark; and (2) the earliest available evidence of use of the Trade Mark, the consensus view in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition) (“WIPO Overview 2.0”) in relation to this issue is as follows:
“Registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”.
The disputed domain name contains the Trade Mark in its entirety. The Panel therefore 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:
(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 authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. 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 (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).
On the evidence, the Panel concludes that the Respondent has failed to establish 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. The Respondent is not the owner of any registered trade mark rights in respect of the disputed domain name. Furthermore, on the Respondent’s own evidence, it has used the disputed domain name in respect of the Website, the content of which has been changed several times.
The evidence filed by the Complainant shows that, since at least 2008 and up until the date of filing of the Complaint, the Website was a Portuguese language website featuring the Trade Mark and references to the Complainant’s fashion products, as well as sponsored links to the websites of third party competitors of the Complainant.
The Panel concludes that, notwithstanding the voluminous submissions and materials filed by the Respondent with the Response, in all the circumstances of this proceeding, the evidence suggests the disputed domain name was registered for opportunistic reasons, and not for a genuine bona fide commercial purpose.
The Respondent has adduced no evidence to show that the Respondent has been commonly known by the disputed domain name.
The Panel finds the assertion of the Respondent that it has over 350,000 “members” who subscribe to email services under the disputed domain name unconvincing and not supported by the evidence.
The evidence does not support the conclusion that the Respondent is making a legitimate noncommercial 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
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The history of the Respondent’s use of the disputed domain name suggests that the Respondent’s behaviour since at least 2008 has been opportunistic. The content of the Website used by the Respondent from 2008 until recently clearly demonstrates that, at some stage following the registration of the disputed domain name, the Respondent became aware of the Complainant and its Trade Mark, and commenced use of the Portuguese language Website in order to capitalise on the Complainant’s reputation in the Trade Mark in respect of fashion products.
The Complainant claims to have used the Trade Mark since 1996. If this were the case, then in the Panel’s view, given the content of the Website from 2008 until recently, this would be a clear cut case of bad faith registration and use of the disputed domain name.
However, as detailed above, the Panel is unable, on the evidence, to conclude that the Complainant had any registered or unregistered rights in respect of the Trade Mark which predate 2007. Therefore, on a strict, literal interpretation of the UDRP, at the time of registration of the disputed domain name, the Respondent could not have contemplated the Complainant’s then non-existent rights, and, accordingly, the third element under paragraph 4(a) of the Policy (which requires bad faith registration and use) would not be made out.
This Panel has considered whether to adopt a less rigid approach in determining the question of bad faith in the present proceeding and, looking at the totality of the circumstances, assess the concept of “bad faith registration and use” as a unitary concept (see paragraph 3.1 of the WIPO Overview 2.0). In this Panel’s view, such an approach may be more appropriate in cases such as the present, where the evidence clearly shows the Respondent, upon becoming aware of the Complainant and its Trade Mark some time in or around 2008, has deliberately changed the content of the Website so as to intentionally attract, for commercial gain, Internet users to the Website.
In accordance with Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786, such a finding would require a conclusion that, in all the circumstances, the Respondent’s use of the Website in the manner described above amounted to breach of the express warranties under paragraph 2 of the Policy which require the Respondent to not, at the time of registration, or in future, use the disputed domain name in any manner that would knowingly violate any applicable laws or regulations.
The Panel would note further that, at some stage following the filing of the Complaint, the content of the Website has been changed completely. The disputed domain name is currently resolved to a Chinese language website, with no reference whatsoever to the Complainant or to fashion products. All of this serves to significantly undermine the assertions of the Respondent regarding the Respondent’s purported bona fide and genuine use of the disputed domain name, and lack of bad faith registration and use.
Whilst sympathetic to the Complainant and noting the line of reasoning put forward in Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, supra, relied upon by the Complainant, the Panel is mindful however that the majority of UDRP panelists continue to adhere to a more literal interpretation of the third limb under paragraph 4(a) of the Policy.
In all the circumstances of this proceeding, on the evidence filed, and given the consensus position adopted by the majority of panelists regarding the Octogen line of authorities, the Panel therefore feels bound to reach the conclusion that the requisite element of bad faith has not been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel notes, for the record, the Respondent’s allegations of reverse domain name hijacking are unwarranted. There is no evidence to suggest that the Respondent has any relevant trade mark rights which predate the established rights of the Complainant in the Trade Mark, or, indeed, that the Complainant should have been aware of any such rights prior to filing the Complaint in this proceeding. Moreover, as indicated above, the history of the Respondent’s use of the disputed domain name suggests that the Respondent’s behaviour has, since at least 2008, been opportunistic.
For all the foregoing reasons, the Panel concludes that, although the disputed domain name has clearly been used in bad faith, it was not registered in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has not been made out. 7. Decision
For the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Sole Panelist
Dated: August 22, 2013
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