Complainant is Eastman Chemical Company of Kingsport, Tennessee, United States of America (“US”), represented by Baker & McKenzie, United Kingdom.
Respondent is Jie Chen “Chenjie” of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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.
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”).
On December 2, 2013, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On December 4, 2013, Complainant confirmed its request that English be the language of proceedings by email to the Center. Respondent did not submit any comments by the specified due date.
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 December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Yijun Tian as the sole panelist in this matter on January 20, 2014. 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, Eastman Chemical, is a company incorporated in Kingsport, Tennessee, US. Complainant is a global chemical company which manufactures a variety of chemicals including materials, additives and functional products, speciality chemicals and fibres found in products for everyday use. Complainant has through extensive sales, advertising and marketing acquired significant goodwill and reputation in the US, China and across the world. Complainant employs approximately 13,500 employees worldwide in 43 manufacturing locations and has 29 sales offices.
Complainant has exclusive rights in several trademarks (hereafter “EASTMAN Marks”). Complainant is the exclusive owner of well-known registered EASTMAN trademarks globally (see Annexes 3-5 to the Complaint), including the US (since 1995), European Union registration (since 1994) and China (since 1995). It also owns the domain names which was registered 17 years prior to the disputed domain name, and which was registered 12 years prior to the disputed domain name (see Annex 1 to the Complaint).
Respondent is Jie Chen “Chenjie” of Xiamen, Fujian, China. The disputed domain name was registered by Respondent on July 3, 2013, long after the EASTMAN Marks became internationally famous (see Annex 1 to the Complaint). 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The “Eastman” word used in the disputed domain name is the core identifying element of the disputed domain name and is identical to the name and mark in which Complainant has rights in that it contains the identical letters, which appear in the same order as in Complainant’s EASTMAN name and mark.
When a domain name wholly incorporates the Complainant’s registered mark, this is sufficient to establish confusing similarity for the purposes of the Policy.
Where a domain name is composed of a trademark juxtaposed with a geographical qualifier, a reader will naturally separate those elements in this manner.
Forming a domain name by appending a country name to a trademark owner’s mark reinforces the risk of confusion as anyone looking at a composition such as “chinaeastman” is likely to conclude that the word “China” describes the geographical source of origin of Complainant’s products or services and that Complainant is operating or doing business with the trademark.
The “.com” element is widely recognized as a descriptor. It provides an internet identity and does not detract from the core element of the disputed domain name, namely, the word “Eastman”, which is identical to Complainant’s well-known EASTMAN Marks.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
(b1.) No bona fide offering of goods or services in connection with the disputed domain name.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to use the EASTMAN Marks in any domain name. Neither have any other members of Complainant’s group of companies.
Respondent and the companies referenced on the website resolved to the disputed domain name are seeking, and have sought, to exploit Complainant ’s EASTMAN Marks for commercial gain.
Respondent is fully aware that the EASTMAN name and mark is a well-known global brand, owing to the fame of the EASTMAN Marks and the global advertising, marketing and sales conducted by Complainant exclusively under the EASTMAN Marks.
The website resolved from the disputed domain name refers to “the company’s core product” which lists a number of chemical products, including: “…coalescent, hydroxyl ethyl, methyl cellulose and coatings”. The website also states that the company has “…a comprehensive pre-sales and after-sales support provided by the professional sales staff and service technicians…”.
The offering of goods and services in association with an infringing trademark does not constitute a “bona fide” offering of goods and services within the meaning of the Policy.
The term “Eastman” is novel and has no direct or descriptive meaning in the English language. The word “China” is non-distinctive and clearly refers to the People’s Republic of China, the sovereign state in East Asia, a region in which the Complainant actively operates and has rights. The disputed domain name cannot sensibly refer to anyone other than Complainant.
(b2.) Respondent has not been commonly known by the disputed domain name
Complainant is not aware of any evidence that Respondent was commonly known by the disputed domain name prior to its date of registration; there is no evidence that Respondent is known as “chinaeastman”.
Respondent does not represent itself under the name “chinaeastman”; rather, the website refers to the activities of “Eastman Chemicals (UK) Ltd”, a company which was incorporated at Company’s House in England and Wales.
In the event that Respondent adopted the well-known EASTMAN Marks in other instances, this can only have been done so to create an unfair commercial advantage for Respondent.
Respondent has not used the trademark in a legitimate manner, has not become commonly known by the disputed domain name and has instead used the EASTMAN Marks in the disputed domain name in bad faith
Respondent has taken unfair advantage of an internationally known trademark in which Complainant has rights and a substantial reputation.
(c) The disputed domain name was registered and is being used in bad faith.
Circumstances indicate that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location (paragraph. 4(b)(iv) of the Policy).
Respondent has not registered or used the disputed domain name in good faith. The onus is on Respondent to make appropriate enquiries to ensure that the registration of the disputed domain name does not infringe or violate third party rights.
Simple research on the Internet would have allowed the Respondent to find the Complainant and to determine its rights in the EASTMAN trademark. Respondent would have therefore known that the EASTMAN Marks belong to Complainant after conducting simple search engine searches.
Respondent must have had Complainant’s trademark in mind when it registered the and used the disputed domain name in connection with the promotion of chemical products under the EASTMAN Marks.
Third parties who may access the disputed domain name in an attempt to reach Complainant’s website may incorrectly believe that Complainant is affiliated or connected with Respondent, given the inherent similarity between the disputed domain name and Complainant’s domain names and .
Respondent’s use of images which depict chemical manufacturing and production sites, further illustrate that Respondent has engineered the look and feel of its website so as to suggest a direct connection to Complainant’s business. In addition, it has adopted the trade name “Eastman Chemicals (UK) Ltd” without Complainant’s permission.
The disputed domain name has been adopted with the purpose of improperly trading on Complainant’s goodwill in association with the EASTMAN Marks, when Respondent has not in fact been so authorised.
There is clear evidence of on-going bad faith use. Respondent has used the website resolved to the disputed domain name in connection with counterfeit activity by purporting to sell chemical products under Complainant’s EASTMAN Marks, in violation of Complainant’s Chinese trademark rights.
On April 2, 2013, the Shanghai Municipal Administration for Industry and Commerce seized a number of counterfeit chemical products from a storage warehouse in Shanghai, China. The labels and stickers applied to the counterfeit products made clear reference to the disputed domain name, thereby holding the disputed domain name out as a bona fide Eastman corporate website.
By using the disputed domain name Respondent has intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark (paragraph 4(b)(iv) of the Policy). B. Respondent
Respondent did not reply to 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 specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) It has been repeatedly held that paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules which require that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.
(b) A strict application of paragraph 11 of the Rules would result in undue delay and considerable and unnecessary expenses of translations which can be avoided without causing injustice to the parties.
(c) Conducting the administrative proceedings in English would not be disadvantageous to Respondent as it can be inferred from the content of the website at the disputed domain name that Respondent has demonstrated an ability to understand and communicate in English.
(d) The Panel should take into consideration the following factors in deciding the language of the proceedings:
(i) The disputed domain name incorporates English words and no Chinese words, i.e. “China” and “Eastman”;
(ii) The website at the disputed domain name does not operate using the Chinese language; and
(iii) Save for the discrete use of Chinese characters in the heading and contact information, the website resolved to the disputed domain name is written solely in English.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
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. (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 language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from the US, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “eastman” and English word “china” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in the English language, rather than Chinese script; (b) The content on the infringing website is in English. The product categories and many of the product descriptions are provided in English. Respondent is apparently doing business in English through this website; (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has not objected to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the EASTMAN Marks acquired through registration. The EASTMAN Marks have been registered worldwide including in China, the US and the European Union, and Complainant has a widespread reputation as a global chemical company which manufactures a variety of chemicals.
The disputed domain name comprises the EASTMAN Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by a prefix of “china” to the mark EASTMAN. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere addition of the descriptive term “china” as a prefix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit are likely to be confused and may falsely believe that is operated by Complainant for selling EASTMAN-branded products in China (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd.,WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768; see also Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho,WIPO Case No. D2011-1237).
Thus, the Panel finds that the addition of the geographical term “china” is not sufficient to negate the confusing similarity between the disputed domain name and the EASTMAN Marks.
The Panel therefore holds that the Complaint fulfils 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 Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has been known commonly by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the EASTMAN Marks globally, including the EASTMAN Mark registration in China since 1995 (see Annex 5 to the Complaint) which long precedes Respondent’s registrations of the disputed domain name (July 3, 2013).
According to the Complaint, Complainant is the world’s leading chemical company which manufactures a variety of chemicals. Complainant employs approximately 13,500 employees worldwide in 43 manufacturing locations and has 29 sales offices. In 2013, Complainant’s sales revenue in China and the Asia Pacific region was USD 1.9 billion for the first three quarters of 2013.
Moreover, Respondent is not an authorized dealer of EASTMAN branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “eastman” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the EASTMAN Marks or to apply for or use any domain name incorporating the EASTMAN Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on July 3, 2013, long after the EASTMAN Marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant’s EASTMAN Mark.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Eastman products at (see Annex 9 to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed 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 disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the EASTMAN Marks with regard to its products. Complainant has registered its EASTMAN Marks internationally, including registration in China (since 1995). Moreover, the infringing website advertises for sale various purported Eastman products. Respondent would not have advertised products purporting to be EASTMAN products on the infringing website if it was unaware of Eastman’s reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel also finds that the EASTMAN Marks not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s EASTMAN branded products. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s EASTMAN- branded products and services without authorization. Complainant claimed that Respondent and the companies referenced on the website resolved to the disputed domain name are seeking, and have sought, to exploit Complainant’s EASTMAN Marks for “commercial gain”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the EASTMAN Marks (as well as the content on Respondent’s website - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the EASTMAN Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website at is either Complainant’s website or the website of official authorized partners of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the infringing website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 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 name at be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: February 20, 2014
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