The Complainant is Noosa Amsterdam B.V. of Amsterdam, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.
The Respondent is Huang Haiyun of Hainan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 October 9, 2014, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceedings. On October 12, 2014, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not submit any comments within 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 in Chinese and English, and the proceedings commenced on October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 12, 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
The Complainant, Noosa Amsterdam B.V., is a Dutch Amsterdam-based company which business consists of the sell and marketing of various fashion accessories, including rings, bracelets, wallets, bags, belts, sandals and scarves.
Since its establishment in 2009, the Complainant has marketed fashion accessories under the trademarks NOOSA and NOOSA AMSTERDAM.
The Complainant is active mainly in the Benelux market and also sells its products in other countries such as Germany, Denmark, Austria, Spain, Switzerland and Australia.
The Complainant is the owner of numerous trademark registrations for the NOOSA and NOOSA AMSTERDAM marks around the world, for example: Benelux trademark registration no. 0836297 – NOOSA, with the registration date of April 7, 2008, OHIM trademark registration no. 008659641 – NOOSA, with the registration date of June 2, 2010, International trademark registration No. 1052333 – NOOSA, with the registration date of September 6, 2010, Benelux trademark registration no. 0900536 – NOOSA AMSTERDAM, with the registration date of August 10, 2010 and International trademark registration No. 1079791 – NOOSA AMSTERDAM, with the registration date of March 24, 2011.
The Complainant also developed a formidable presence on the Internet and is the owner of the domain name .
The disputed domain name was registered on July 11, 2014.
The disputed domain name resolves to a website offering fashion accessories for sale in German and displaying the NOOSA AMSTERDAM trademark and logo. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark and trade name NOOSA AMSTERDAM. The Complainant further contends that the addition of the geographic abbreviation “de” which refers to Germany does not avoid a finding of confusing similarity.
The Complainant further argues that the NOOSA AMSTERDAM trademark has generated good will through the Complainant’s use.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its NOOSA AMSTERDAM trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official NOOSA AMSTERDAM website aimed at German consumers.
The Complainant further contends that the Respondent has not only used the NOOSA AMSTERDAM mark under the disputed domain name, but also operates an online shop which utilises the NOOSA AMSTERDAM mark throughout, and offers for sale goods that are similar to those sold by NOOSA AMSTERDAM.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue–Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“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.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
“[…]Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceedings, the Panel takes the following into consideration:
a) The disputed domain name consists of Latin characters, rather than Chinese characters;
b) The website under the disputed domain name resolves to an online marketplace, which is operated in German and English;
c) The Respondent did not object to the Complainant’s request that English be the language of the proceedings.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of these administrative proceedings be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous trademark registrations for the NOOSA and NOOSA AMSTERDAM marks around the world, for example: Benelux trademark registration no. 0836297 – NOOSA, with the registration date of April 7, 2008, OHIM trademark registration no. 008659641 – NOOSA, with the registration date of June 2, 2010, International trademark registration No. 1052333 – NOOSA, with the registration date of September 6, 2010, Benelux trademark registration no. 0900536 – NOOSA AMSTERDAM, with the registration date of August 10, 2010 and International trademark registration No. 1079791 – NOOSA AMSTERDAM, with the registration date of March 24, 2011.
The disputed domain name differs from the registered NOOSA AMSTERDAM trademark by the additional abbreviation “de”, the hyphen and the additional generic Top-Level Domain (“gTLD”) “.com”.
The disputed domain name integrates the Complainant’s NOOSA AMSTERDAM trademark in its entirety, as a dominant element.
The additional letters “de” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as they are a common geographic abbreviation for Germany. Nor does the hyphen. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed domain name from the registered trademark.
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the NOOSA AMSTERDAM trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name a few years after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the NOOSA AMSTERDAM trademark since the year 2008. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Panel cites the following with approval: […] “is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage.” (Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the domain name resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the domain name resolved to.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site.” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent’s use of the distinctive trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent’s bad faith.
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products, and profit therefore.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc./T, Mr. Singh,WIPO Case No. D2009-0671).
The Complainant submitted evidence proving that the Respondent is using the disputed domain name to promote goods that are identical to the goods being offered by the Complainant.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Further, the Panel finds that the Respondent has incorporated the NOOSA AMSTERDAM marks on its website in order to attract consumers for commercial gain by purporting to sell NOOSA AMSTERDAM’s products.
The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: November 24, 2014
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