The Complainant is Miltenyi Biotec GmbH of Bergisch Gladbach, Germany, represented by Tigges Rechtsanwälte, Germany.
The Respondent is Yang Dajin of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corporation (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2014. On April 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2014 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 April 30, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On May 2, 2014, the Complainant 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 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 May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 10, 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 A. Complainant
The Complainant is a company incorporated in Germany and the owner of registrations for the trade mark MACS (the “Trade Mark”) in numerous jurisdictions worldwide, the earliest dating from 1994. B. Respondent
The Respondent is apparently an individual located in Shanghai. The Respondent is apparently the director of a company incorporated in Hong Kong, China called Miltenyi Bioscience Incorporation Limited. C. The Disputed Domain Name
The disputed domain name was registered on January 30, 2013. D. The Website at the Disputed Domain Name
The website at the disputed domain name (the “Website”) describes Miltenyi Bioscience Incorporation Limited as “a dynamic biotechnology company”, and offers and promotes in-vitro diagnostic services and clinical diagnostic products under the name “Miltenyi”. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a global biotechnology company headquartered in Germany and with operations and subsidiaries in numerous jurisdictions worldwide. The Complainant was the pioneer in 1990 of MACS magnetic cell separation technology.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive and descriptive letters “hk”, the abbreviation for “Hong Kong”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not using the disputed domain name in respect of a bona fide offering of goods or services.
The disputed domain name has been registered and used in bad faith. It has been used in order to intentionally attract Internet users for commercial gain to the Website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Website or of the products or services on the Website. Not only does the Website promote similar goods and services in the biotechnology sphere as those of the Complainant, but it also copies the corporate livery of the Complainant and uses prominently a blue triangle logo with the name “Miltenyi”, which is very similar to one of the device marks used by the Complainant. B. Respondent
The Respondent did not respond to the 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 unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances of the administrative proceeding. 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.
The Complainant has requested that English be the language of the proceeding, as:
1. The content of the Website is in English; and
2. Requiring the Complainant to translate the Complaint and annexures into Chinese would cause delay and would be expensive.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
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.
On the evidence filed by the Complainant, the Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is proficient in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Substantive Elements of the Policy
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 name by almost 20 years.
UDRP panels have consistently held that domain names are 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”.
It is also established that the addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark. The mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion.
The disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic abbreviation “hk”, meaning “Hong Kong”, the name of the jurisdiction in which the Respondent is apparently based, does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and 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 non-exhaustive circumstances any of which is sufficient to demonstrate that a 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 name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by almost 20 years. 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.
The Respondent has failed to show 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. To the contrary, the disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which promotes and offers for sale biotechnology products and services similar to those of the Complainant. In all the circumstances, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any 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 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 of a domain name in bad faith on the part of a 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 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 on the respondent’s website or location.
The Panel refers to and repeats the findings under the second limb of paragraph 4(a) of the Policy above. The Panel notes further that the Respondent has on the Website deliberately copied the corporate livery of the Complainant and is using a blue triangle logo similar to one of the Complainant’s logo. Furthermore, the name of the Respondent’s company Miltenyi Bioscience Incorporation Limited is clearly copied from the name of the Complainant. The evidence clearly demonstrates that the Respondent has registered and used the disputed domain name in order to pass itself off as a business of or in some way connected with the Complainant.
This is a clear case of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 24, 2014
Full & Egal Universal Law Academy