The Complainants are Colgate-Palmolive Nederland B.V. and Colgate-Palmolive Investments (BVI) Ltd. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domain Whois Protection Service of Hangzhou, Zhejiang, China / Li Lingying of Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 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. The Center sent an email communication to the Complainants on July 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 24, 2013. On July 23, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 24, 2013, the Complainants 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 proceedings commenced on July 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2013. The Response was filed with the Center on August 22, 2013.
The Complainants lodged a supplemental submission on August 28, 2013 in response to the Response. The Respondent did not comment on the supplemental submission.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 3, 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.
Pursuant to the Administrative Panel Procedural Order No. 1 on October 3, 2013, requesting for further comments from the Parties in relation to the WhoIs history for the Disputed Domain Name as of March 9, 2005 contained in the Complainants’ Supplemental Submission, the Complainants submitted a second Supplemental Submission on October 10, 2013. The Respondent also submitted comments on the same matter on October 11, 2013. 4. Factual Background
The Complainants are subsidiaries of Colgate-Palmolive Company. The Complainants have registered the trademark SANXIAO in many jurisdictions, including but limited to: Jurisdiction Trade Mark No. Application Date
China
875282
October 18, 1994
China
1472792
June 21, 1999
China
2017387
June 28, 2000
Registration dates for the above were not included in the evidence.
The Disputed Domain Name was registered on March 8, 1998. As of April 22, 2013, the Disputed Domain Name resolved to a website which presents sponsored links to websites relating to oral care products.
The Respondent is an individual and only became the registrant on record from December 17, 2012. Other than the WhoIs details relating to the Disputed Domain Name, not much information about the Respondent is provided in the evidence. 5. Parties’ Contentions A. Complainant
The Complainants contend that:
1) The Disputed Domain Name was owned by an entity related to the Complainants (i.e., Colgate-Palmolive Company) from March 8, 1998 to around March 9, 2005. The registration of the Disputed Domain Name was inadvertently allowed to lapse. From 2005 until the Complaint was filed, the Disputed Domain Name was held by a succession of different registrants. The merits of the Respondent’s registration of the Disputed Domain Name should be assessed as of the date of the Respondent’s registration. The Respondent’s acquisition of the Disputed Domain Name post-dated the Complainants’ acquisition of the SANXIAO trademark;
2) The Complainants own trademark registration 1094034 for a composite mark comprising SANXIAO and the Chinese characters “三笑”. The Disputed Domain Name is confusingly similar to the Complainants’ SANXIAO trademark. The generic Top-Level Domain (gTLD) “.com” should not be taken into consideration in comparing the Disputed Domain Name with the Complainants’ SANXIAO trademark;
3) The Respondent has no legitimate interests in the Disputed Domain Name. The Respondent was listed as registrant only in 2013, long after the Complainants had established rights in the SANXIAO trademark through extensive use begun in 1997. In 2012 alone, the Complainants sold over 290 million toothbrushes under the trademark SANXIAO. The Complainants did not authorize or permit the Respondent to register the trademark SANXIAO as a domain name. There is no relationship between the Complainants and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name. The Complainants’ SANXIAO products are well known and the Respondent has no rights therein;
4) The Respondent has registered and is using the Disputed Domain Name in bad faith. The Respondent is using the Disputed Domain Name to generate pay-per-click revenue through links to the Complainants’ competitors in the oral care industry. Given the fame of the Complainants’ SANXIAO trademark in China, consumers are likely to believe that the Disputed Domain Name is related to or associated with the Complainants. The only reason for the Respondent’s use of the SANXIAO trademark is to intentionally confuse consumers to trade on the Complainants’ rights and reputation and to drive traffic to its website all for its own commercial benefit. The Respondent’s claim, that the retail price of RMB 1 for each of the Complainants’ SANXIAO toothbrush, is unfounded. Even if it were so, this would mean more than USD 47 million worth of SANXIAO products were sold in 2012 alone. B. Respondent
The Respondent contends as follows:
1) The WhoIs history for the Disputed Domain Name as of March 9, 2005 is disputable and should not be considered. The WhoIs information is easily amended. The WhoIs History, even if relied upon, shows that the Complainants voluntarily gave up their rights to the Disputed Domain Name and the Complainants should not be allowed to claim back the same;
2) The Complainants’ SANXIAO trademark is not confusingly similar to the Disputed Domain Name. The Complainants’ SANXIAO trademark was not a well-known trademark at the time the Disputed Domain Name was registered. There are other trademark registrations in China for SANXIAO and Chinese words pronounced phonetically as SANXIAO not associated with the Complainants. The Disputed Domain Name is not the same as and not confusingly similar to the SANXIAO trademark because it includes the “.com” Top-Level Domain;
3) The Respondent has rights in the Disputed Domain Name. The Respondent had previously used the Registrar’s WhoIs protect services to maintain privacy. Many Internet startups protect their privacy prior to launch. By virtue of being the registrant of the Disputed Domain Name, the Respondent has rights in the Disputed Domain Name. The word SANXIAO is a phonetic representation of many possible interpretations in Chinese, e.g., 三笑 (3 laughs), 三小 (3 little), 三校 (3 schools). The term “三笑” may be associated with a popular Chinese idiom “一日三笑、人生难老”, a famous Chinese literary work “三笑姻缘”, among other things; and
4) The Disputed Domain Name was not registered or used in bad faith. The Disputed Domain Name was derived from the idiom “一日三笑、人生难老” and is intended to be used for a non-profit website for promoting humour. The Respondent has been making preparations for construction of the website. The Respondent has at no time offered to sell or transfer the Disputed Domain Name. The Respondent was unaware of the website which is resolved from the Disputed Domain Name and the pay-per-click details on the website. Only after checking with the Registrar did the Respondent realize that the pay-per-click details on the website arose from the Registrar’s DNS configuration of the Disputed Domain Name. The Respondent is aware that SANXIAO toothbrushes are sold at supermarkets for RMB 1 each. The Respondent is disappointed that the Complainants, being a famous foreign brand, is taking action against a domain name which has been registered for 15 years and is about to be launched as a non-profit enterprise. From the Respondent’s recollection, toothbrushes under the SANXIAO trademark are often retailed at supermarkets at RMB 1. 6. Discussion and Findings 6.1. Language of Proceeding
As the registration agreement is in Chinese, the default language of the proceeding is Chinese. However, the Panel is entitled to determine otherwise having regard to the circumstances. In the present case, the Complainants have requested that English be adopted as the language of the proceeding instead. Having regard to the circumstances, the Panel decides that English be adopted as the language of the proceeding subject to the Respondent being allowed to submit documents in Chinese. In making this determination, the Panel has taken the following factors into consideration:
1) The website resolved from the Disputed Domain Name is in English;
2) The Panel is bilingual and able to deal with submissions in both English and Chinese;
3) The Respondent has responded to the Complaint, the Supplemental Submission and the second Supplemental Submission of the Complainant, all of which are in English, and the Response and the Supplemental Submission of the Respondent indicate to the Panel that the Respondent fully comprehended the content of these documents;
4) The parties have already submitted their various documents and imposing any strict language requirements will lead to unnecessary hardship on the Parties and delay to the proceeding; and
5) No apparent procedural benefit may be achieved by insisting that Chinese be maintained as the language of the proceeding. 6.2. Discussion
In order to succeed in this proceeding, the Complainants must establish all three limbs of paragraph 4(a) of the Policy, namely, that:
1) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In view of the trademark registrations for the trademark SANXIAO, the Complainants have clearly established that they have rights in the same. For the purpose of paragraph 4(a)(i) of the Policy, it is not a requirement that the Complainants’ mark must be well known. The Panel notes that these rights pre-date the registration of the Disputed Domain Name.
The historical WhoIs evidence indicates that the Disputed Domain Name was first registered to the Complainants’ related company. Despite the Respondent’s protest, there is no reasonable basis in the evidence to question the reliability of the historical WhoIs evidence and the Panel accepts that the Disputed Domain Name was held by the Complainants’ related company until the registration was inadvertently lost in 2005.
There is no doubt that the Disputed Domain Name is identical and confusingly similar to the Complainants’ trademark SANXIAO. The Respondent’s submission that the Disputed Domain Name is distinguishable from the trademark SANXIAO by virtue of the gTLD “.com” which flies in the face of the consensus of past UDRP panels to ignore the gTLD when comparing a disputed domain name and a trademark for purposes of paragraph 4(a)(i) of the Policy.
Accordingly, the Panel holds that the first limb of paragraph 4(a) of the Policy is established on the evidence. B. Rights or Legitimate Interests
The evidence in the proceeding clearly shows the long and extensive use of the trademark SANXIAO by the Complainants in China. The Respondent only became the registrant of the Disputed Domain Name on December 17, 2012. Even if it is accepted that the Respondent was the real registrant behind the privacy service on record just before the Respondent was disclosed as registrant, the Respondent’s holding of the Disputed Domain Name only dates as far back as December 17, 2012, which is still long after the Complainants’ registration of the SANXIAO trademark. The Complainants have also confirmed that there is no relationship between the Complainants and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the Disputed Domain Name. There is no evidence before the Panel to show that the Respondent is commonly known by the Disputed Domain Name or that the Respondent owns any trademark rights in the trademark SANXIAO. In the circumstances, the Complainants have established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Respondent claimed that the Disputed Domain Name was derived from the idiom “一日三笑、人生难老” and that is has been making preparations for construction of a website to be used for a non-profit website for promoting humour. The Respondent’s claim is a bare assertion without any supporting evidence. In fact, this bare assertion appears to contradict the Respondent’s other claim of ignorance that the website resolved to the pay-per-click website. It is inexplicable that in making preparations for construction of a website, the Respondent or the party appointed by the Respondent to construct the website did not know that the Disputed Domain Name resolved to another website. The lack of such knowledge can only suggest that no real preparations have yet been undertaken. As such, the Panel does not find the Respondent’s claims to be believable.
Since the Respondent has not provided any cogent basis to rebut the prima facie case established by the Complainants, the Panel holds that the prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name stands.
Accordingly, the Panel holds that the second limb of paragraph 4(a) of the Policy is established on the evidence. C. Registered and Used in Bad Faith
Based on the evidence submitted, the Panel accepts that the trademark SANXIAO is well known, or at least known to the Respondent. The Respondent has admitted awareness of toothbrushes being sold under the trademark SANXIAO on the market. Regardless of whether the toothbrushes were actually sold for RMB 1 as claimed by the Respondent, the volume of sales as supported by the evidence appears significant to the Panel. The undisputed fact that the website resolved from the Disputed Domain Name offered links to the Complainants’ competitors in the oral care industry exhibits an association of the Disputed Domain Name with the Complainants’ products of interest. The Panel does not accept the Respondent’s claim of ignorance regarding the content of the website resolved from the Disputed Domain Name. As the registrant, the Respondent ought to know what the Disputed Domain Name is being used for. Even if the Respondent did not possess actual knowledge (about which the Panel is not convinced), the Respondent certainly has constructive knowledge of the website resolved from the Disputed Domain Name. It is inconceivable that the use of the SANXIAO trademark in the Disputed Domain Name is for any purpose than to intentionally confuse consumers to trade on the Complainants’ rights and reputation and to drive traffic to the website derived therefrom for some commercial benefit.
In the Panel’s view, the evidence falls squarely within the situation outlined in paragraph 4(b)(iv) of the Policy. Despite the Respondent’s claim that the Disputed Domain Name was derived from the idiom “一日三笑、人生难老” and intended for a non-profit website for promoting humour, there is no evidence as such. Such a claim would have seem more consistent against the registration of a domain name incorporating the Chinese characters “三笑”. The Respondent unfortunately did not offer any explanation for selecting the English letters SANXIAO in preference over “三笑” as the Disputed Domain Name, particularly when the Respondent is already admittedly tainted with knowledge of products under the Complainants’ SANXIAO trademark. In the absence of evidence to the contrary, the Respondent’s claim appears to the Panel to be one made on hindsight, rather than as the reason for registration of the Disputed Domain Name.
In view of the above, the Panel determines that the third limb of paragraph 4(a) of the Policy is also established by on the evidence available in the proceeding. 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 Complainants.
Kar Liang Soh
Sole Panelist
Date: November 4, 2013
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