The Complainant is Homax Products, Inc. of Bellingham, Washington, United States of America (“US”), represented by Brownlie Evans Wolf & Lee, LLP, US.
The Respondent is Zhang Jiyao/Ningbo city Yinzhou Junhang trade Co. Ltd, Ningbo Cliff Tools Co., Ltd. of Ningbo, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2013. On December 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 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 January 6, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On January 9, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. On January 13, 2014, the Respondent submitted its request that Chinese be the language of the proceeding by email to the Center.
On January 6, 2014, the Center transmitted a Complaint Deficiency Notification by email to the Complainant. On January 9, 2014, the Complainant submitted an amended Complaint by email to the Center.
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 January 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2014. On December 31, 2013 and January 11, 2014, the Center received email communications and an informal response from the Respondent. There was also an email dated January 1, 2014 sent by the Respondent to the Complainant’s legal representatives. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent the proceeding of panel appointment on February 5, 2014.
On February 15, 2014, the Center received the supplemental filing from the Complainant by email, which the Center acknowledged receipt.
The Center appointed Susanna H.S. Leong, Bruce E. O’Connor and C. K. Kwong as panelists in this matter on March 3, 2014. The Panel finds that it was properly constituted. Each member of 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
The Complainant Homax has been in the business of manufacturing and selling household and do-it-yourself products throughout the US since 1982.
The Complainant is the owner of the following trade marks in the US:
a. HOMAX in relation to hand operated sprayers (Registration No. 1252169);
b. HOMAX in relation to cleaners, products for tile, cleaners for paint and mildew, test kits and spackling and drywall goods (Registration No. 2646529).
Furthermore, the Complainant’s use of the HOMAX mark has been extensive and continuous since 1982. HOMAX branded products are sold throughout the US, predominantly through do-it-yourself-type stores such as Home Depot, Lowe’s, Ace Hardware, Menards, Orgill Brothers, Sherwin-Williams, True Value Company and Wal-Mart. The Complainant also has an extensive Internet presence in the US.
The disputed domain name was registered on June 6, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark in which it has rights on the following grounds:
1. The Complainant asserts that it has protectable trade mark rights arising from its two US trademark registrations of the HOMAX mark. Furthermore, the Complainant asserts that it has trademark rights under common law through continuous and extensive use in the do-it-yourself/home repair industry.
2. The Complainant asserts that there is sufficient similarity between the disputed domain name and the relevant HOMAX mark. There are only three differences between the two as normally used: (a) a potential difference in the initial capital for Homax and lower case for the Respondent’s disputed domain name; (b) the addition of the “.com” on the Respondent’s disputed domain name; (c) the dash between “ho” and “max” on the Respondent’s disputed domain name.
3. The Complainant contends that the first two differences are irrelevant in the similarity analysis.
4. The Complainant further contends that the dash used in the disputed domain name is effectively of no significance. In this regard, it is important to note that the term “homax” has no dictionary meaning and is otherwise a fanciful made-up term.
5. There is evidence of actual confusion from consumers.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Complainant contends that to meet the requirements of the second element in the UDRP, the Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden shifts over to the Respondent to rebut the presumption.
2. The Complainant asserts that it is not associated or affiliated with the Respondent nor has it granted him any right or licence to use its protected HOMAX mark.
3. The Respondent’s use of the disputed domain name started only on June 6, 2012 whilst the Complainant’s use of the HOMAX mark commenced way back in 1982.
4. The Respondent has registered for trade mark protection identifiers associated with other marks but it has not done so with the term “ho-max”. In the Complainant’s view, this demonstrates an awareness of the Complainant’s HOMAX mark, its superior right and the lack of any independent right for the Respondent to use the mark.
5. The Respondent is using the disputed domain name as a means to directly compete with the Complainant and to divert its business in a manner which is clearly intended to confuse the consumer as to the affiliation between the companies and the products. The Complainant contends that this does not result in a right or legitimate interest in the disputed domain name.
The Complainant contends that the Respondent registered the disputed domain name and is using it in bad faith on the following grounds:
1. The Respondent is using the disputed domain name as a means to confuse consumers and to pass itself off as having an affiliation with the Complainant and its HOMAX mark and thus causes a disruption to the Complainant’s operation.
2. The Respondent uses the disputed domain name to promote products that directly compete with the Complainant.
3. The Respondent has chosen to use an identical fanciful mark to directly compete with the Complainant. There is no plausible explanation for the Respondent’s decision to use an identical fanciful mark to directly compete with the Complainant other than in an attempt to confuse consumers, disrupts the Complainant’s business and to profit from such confusion.
4. The Respondent has actual or constructive knowledge of the Complainant, its business and its HOMAX and this further substantiates the contention that the Respondent has registered the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, by an email dated January 1, 2014 (written in English) and a later email dated January 11, 2014 (written in Chinese), the Respondent made the following contentions:
1. Cliff Tools is a professional manufacturer of paint tools in China.
2. “Ho-max” is one of its brands for its different products lines of paint tools and was designed in 2007.
3. The design philosophy of “Ho-max” is the abbreviation of Home & Max and it was the idea of Cliff Tools’ founder.
4. The Respondent has registered HO-MAX as a trademark in China, Germany and Australia.
5. The Respondent was not aware of a company called Homax Products, Inc. in the US when it designed and registered its HO-MAX trademarks.
6. The Respondent does not use the “Ho-max” brand for any sales business in North America. The Respondent only provides original equipment manufacturer (“OEM”) service of paint tools in North American markets.
7. The Respondent recognizes and respects the efforts the Complainant Homax Products, Inc. have expended to build the HOMAX brand. Henceforth, the Respondent will not use its “Ho-max” brand in North America so as to avoid confusion. The Respondent will also delete its pages in Facebook, Twitter and YouTube.
8. However, the Respondent maintains that it has the right to use “Ho-max” in markets outside North America. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, 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 in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in the Roman alphabet and could be pronounced phonetically in English; (b) the website to which the disputed domain name was pointed was in English which suggests that the Respondent understands English; (c) by an email dated January 1, 2014, (written in English) and another email dated January 11, 2014 (written in Chinese) the Respondent made certain comments and contentions about the present proceeding. This clearly shows that the Respondent is conversant in the English language and will not be disadvantaged in responding to the Complaint in the present proceeding; (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English, as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to formally respond to the Complainant’s allegations. Considering these circumstances, 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.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard 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 Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the HOMAX trademark for hand operated sprayers, cleaners, products for tile, cleaners for paint and mildew, test kits and spackling and drywall goods through two US trademark registrations. Furthermore, the Complainant has adduced evidence to show that it has unregistered rights in the HOMAX mark through continuous and extensive use in the do-it-yourself market of the US.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The Panel finds that the disputed domain name is confusingly similar to the trademark, being distinguished only by the addition of the generic hyphen “-” and the generic Top-Level Domain (“gTLD”) “.com”, neither of which distinguishes the disputed domain name from the trademark.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. there is no evidence of a legitimate use by the Respondent of the disputed domain name or reasons to justify the choice of the term “ho-max” in its business operations;
2. there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name reproducing the HOMAX trademark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services. Bare assertions on the part of the Respondent without substantial evidence are not adequate. In the Panel’s view, the fact that the Respondent registered HO-MAX as a trademark during the period of 2011-2012 in China, Germany and Australia does not necessarily mean that the Respondent has rights or legitimate interests in the disputed domain name. In the Panel’s opinion, the overall circumstances demonstrate that such trademarks were obtained primarily to trade on the good will of the Complainant and as a justification for the registration of the disputed domain name. (See cases cited under paragraph 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP 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. See WIPO Overview 2.0, paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to provide a formal response to the Complaint filed against it. The emails dated January 1, 2014 and January 11, 2014 from the Respondent contained brief comments, which were not substantiated and in the opinion of the Panel, did not constitute a formal Response on the part of the Respondent. In particular, the Respondent has failed to convince the Panel that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. 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 a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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 of the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute evidence of registration and use of a domain name in bad faith by a respondent in appropriate cases.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark which is an invented word such as HOMAX in the present proceeding and where the Respondent does not have rights or legitimate interests in a disputed domain name which is confusingly similar to the Complainant’s mark and where the Complainant has adduced evidence to show bad faith use of the disputed domain name, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one.
There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. The Respondent is not commonly known by the disputed domain name but it is making a commercial use of the disputed domain name which is confusingly similar to the Complainant’s HOMAX mark in which the Complainant has rights. Notice of this present proceeding occurred at filing of the Complaint on December 27, 2013. The disputed domain name was registered on June 6, 2012 and the Respondent registered HO-MAX and Design as a trademark in the period of 2011-2012 in China, Germany, and Australia. However the Panel finds that these activities occurred long after the acquisition of rights in the trademark HOMAX by the Complainant, and the use by the Respondent is in conjunction with a subclass of the products identified by the Complainant’s trademark. The Panel gives no credence to the Respondent’s statement in its email dated January 1, 2014 that the disputed domain name came from the words “home” and “max” and that it was chosen independently by its founder. On the contrary, in the Panel’s view, the overall circumstances demonstrate that the trademarks relied upon by the Respondent were obtained primarily to trade on the good will of the Complainant and as a justification for the registration of the disputed domain name.
There is indeed evidence that the Respondent is using the disputed domain name to offer goods in competition with the Complainant. In fact, the Panel notes that the Respondent’s trademark HO-MAX, used at the web site employing the disputed domain name, and registered in three countries at about the same time as registration of the disputed domain name, closely simulates the design form of the trademark used by the Complainant. Both the Complainant’s trademark and the Respondent’s trademark include the word within a house with a peaked roof, and both have a lower extension of the left leg of the letter “x”. It is apparent to the Panel that the Respondent has used this form with the intention to trade on the goodwill of the Complainant and to divert the Complainant’s business to the Respondent. The Respondent has offered no explanation for this simulation of the trademark and the use of the simulation in conjunction with the same goods, even in its email dated January 1, 2014.
Based on the evidence adduced, the Panel finds that the disputed domain name was registered and used in bad faith.
As such, the Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Presiding Panelist
Bruce E. O'Connor
Panelist
C. K. Kwong
Panelist
Date: March 17, 2014
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