The Complainant is J Barbour & Sons LTD of Newcastle, United Kingdom of Great Britain and Northern Ireland, represented by McDaniel & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Cao Guge, Zhou Guge of Fuzhou, Fujian, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , and are registered with HiChina Zhicheng Technology Ltd. and PDR Ltd. d/b/a PublicDomainR respectively (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 names. On July 19 and July 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Cao Guge is listed as the registrant of seven of the disputed domain names and providing its contact details, and also disclosing Zhou Guge, Cao Guge is the registrant of one of the disputed domain names and providing its contact information. 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 25, 2013, the Complainant submitted a request for an extension to its language submission due date. On July 26, 2013, the Center notified the Parties that the due date for the Complainant to submit its language submission was extended to August 5, 2013 and the due date for the Respondent to submit its language submission was extended to August 7, 2013. On July 26, 2013, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended/amendment to the Complaint. On August 5, 2013, the Complainant filed an amended Complaint in both English and Chinese, and requested 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 August 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 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 A. Complainant
The Complainant is a company incorporated in England and the owner of numerous registrations worldwide for the trade mark BARBOUR (the “Trade Mark”), including a registration in China registered since August 1997. B. Respondent
The Respondent appears to be an individual based in China. C. The Disputed Domain Names
The disputed domain names were registered on the following dates:
November 6, 2012
November 15, 2012
December 20, 2012
December 20, 2012
November 4, 2012
November 17, 2012
December 12, 2012
November 4, 2012 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was incorporated in 1912. The Complainant and its predecessor in title have been using the Trade Mark continuously since 1894 in respect of clothing and associated goods manufactured and sold by the Complainant. The Complainant has promoted the Trade Mark extensively worldwide.
By virtue of such longstanding use, the Trade Mark has obtained substantial goodwill and reputation so that members of the public associate the Trade Mark exclusively with the Complainant.
The disputed domain names are identical to the Trade Mark as they incorporate the Trade Mark.
The Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent is using the disputed domain names in respect of pay-per-click websites used to generate income by placing advertisements and by facilitating “click throughs” to unauthorised clothing websites which are unrelated to the Complainant (the “Websites”). 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 agreements for five of the disputed domain name is English. The language of the registration agreements for the remaining three 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. 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 as the Websites are English language websites.
The Respondent did not file any submissions with respect to the language of the proceeding and did not file a Response.
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).
The Panel notes, for the reasons specified by the Complainant, it appears the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
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.
Furthermore, the Panel notes the Complainant has prepared and filed a Chinese language version of the Complaint, which has been served on the Respondent.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be 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 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 names by well over 100 years.
UDRP panels have consistently held that domain names are generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain names contain the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive words “jacken”, “jacket”, “sales”, “2012”, “outlets”, “clearance”, “usa”, “outlet”, “sale” and “womens” does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are 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 circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in a domain name:
(i) 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
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the 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 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 names or to use the Trade Mark, or to offer for sale and sell goods under the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by well over 100 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, 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 Complainant contends the Websites are used by the Respondent to generate revenue through advertising and pay per click revenue, by reference to clothing websites unrelated to the Complainant. Unfortunately, the Complainant’s legal representatives did not file with the Complaint any screenshots of the Websites in order to substantiate these claims. The Respondent did not, however, refute these claims.
The Respondent has failed to show that it has acquired any rights in respect of the disputed domain names or that the disputed domain names are 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 names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names are currently being passively held and have all been resolved to the same “website under maintenance” web page. Such passive use cannot give rise to any rights or legitimate interests in the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. 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)(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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent has not filed a Response and has therefore not refuted the assertions of the Complainant that it has been using the disputed domain names in respect of the Websites, which the Complainant contends were unauthorised and were used to generate revenue through advertising and pay per click revenue via links to unrelated third party clothing websites.
It is difficult for the Panel to make a definitive conclusion of bad faith registration and use on these grounds alone, absent any evidence regarding the Websites.
However, it is well-established under UDRP jurisprudence that passive holding of a disputed domain name can, in certain circumstances, amount to evidence of bad faith. In all the circumstances of this case, and notwithstanding the lack of evidence regarding the Websites, the Panel considers the inference is clearly there to be drawn that, at some stage following the filing of the Complaint, the Respondent has taken down the Websites and resolved each of the disputed domain names to the same “website under maintenance” web page. Alternatively, even if the disputed domain names have never been actively used, in all the circumstances, given the Complainant’s longstanding rights in the Trade Mark, and given the failure of the Respondent to file a Response to refute the allegations in the Complaint, the Panel concludes such passive use would also amount to registration and use of the disputed domain names in bad faith for the purposes of the Policy.
In all the circumstances, and based upon the passive use of the disputed domain names, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , and
Sebastian M.W. Hughes
Sole Panelist
Dated: September 20, 2012
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