The Complainant is Water Pik, Inc. of Fort Collins, Colorado, United States of America (“US”), represented by Dorsey & Whitney, LLP, US.
The Respondent is Piao Ying of Shenzhen, Guangdong, 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 23, 2014. On December 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 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 January 1, 2015, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of the proceedings. On January 9, 2015, the Complainant confirmed its request included in the Complaint that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings 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 in both Chinese and English, and the proceedings commenced on January 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. The Response was filed with the Center on February 3, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 13, 2015. 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.
On February 15, 2015, the Center received an email communication from the Respondent, which was forwarded to the Panel on February 16, 20151 . 4. Factual Background A. Complainant
The Complainant is a company incorporated in the State of Delaware in the US and the owner of trade mark registrations for the trade mark WATERPIK (the “Trade Mark”) in numerous jurisdictions worldwide, the earliest (US) registration dating from 1971. B. Respondent
The Respondent is an individual based in China. C. The Disputed Domain Name
The disputed domain name was registered on November 4, 2014. D. The Website at the Disputed Domain Name
The website at the disputed domain name (the “Website”) previously promoted the business and products of Shenzhen Punghan Yuying Industry Co. Ltd, a direct competitor of the Complainant based in Shenzhen, China. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant has used the Trade Mark continuously since 1961 in respect of its innovative oral health care, sinus health products and showerhead products (the “Products”). The Complainant currently sells and markets the Products in over 80 countries, including the US, China, Japan, the Republic of Korea, France, the Netherlands, Italy, Spain and Portugal. The Complainant has been recognised as a leader in developing and manufacturing its Products. The Complainant’s Products have been sold in China since 2008 by the Complainant’s authorized distributor.
The disputed domain name is identical to the Trade Mark.
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 on the Website. The products offered for sale on the Website, including showerheads, oral irrigators and other oral health care products, are in direct competition with the products sold by the Complainant under the Trade Mark. B. Respondent
The Respondent made the following submissions in the Response.
The Respondent chose the disputed domain name in order to promote one of the main oral health care products sold on its Website, and having done Google searches to determine that the disputed domain name was available. Accordingly, the disputed domain name is not confusingly similar to a trade mark in which the Complainant has rights.
Before receiving the Complaint, the Respondent had already registered and commenced using the disputed domain name in respect of the promotion of its bathroom hardware and oral health care products. Even though the Respondent has not obtained any relevant trade mark rights, the Respondent has become widely known as a result of its use of the disputed domain name. The Respondent has also obtained rights in the disputed domain name by virtue of the registration certificate for the disputed domain name obtained from the Registrar.
The Respondent, in registering and using the disputed domain name, has not misled consumers, as the Respondent’s main products are bathroom hardware products, whereas the Complainant’s main products are oral health care products.
The Respondent’s registration and use of the disputed domain name was not intended to cause consumer confusion or disrupt the business of the Complainant. 6. Discussion and Findings 6.1. Language of the Proceedings
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 proceedings shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances of the administrative proceedings. 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 proceedings. 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 proceedings.
The Complainant has requested that English be the language of the proceedings, as:
The content of the Website is predominantly in English;
(2) The Complainant would incur substantial expenses and the proceedings would be significantly delayed if the Complainant were to be required to translate the Complaint into Chinese;
(3) The Respondent has registered several other English language domain names;
(4) The website apparently owned and operated by Shenzhen Punghan Yuying Industry Co. Ltd at “” is an English language website (the “Punghanmetal Website”); and
(5) The Respondent therefore has a clear grasp of English.
The Complainant’s alternative submission is that the parties be allowed to file their respective submissions in their native language, and that the Center appoint a panel fluent in both languages.
The Respondent did not make any submissions in relation to the language of the proceedings, but chose to file its Response in Chinese.
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.
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest that the Respondent is proficient in the English language. The Panel notes that both the Website and the Punghanmetal Website are sophisticated English language websites. The Panel also notes that pre Response English language correspondence was sent to the Center on behalf of the Respondent.
The Panel is also mindful of the need to ensure the proceedings are 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 proceedings.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in 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 predates the date of registration of the disputed domain name by over four decades.
The disputed domain name is identical to the Trade Mark.
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 over four decades. 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 oral health care and bathroom hardware products in direct competition with those manufactured by 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.
The Panel notes further that, contrary to the assertions made by the Respondent in its email communications with the Center, the Respondent has not made any allegation in the Response that it manufactures products under the Trade Mark, nor is there any evidence to show that the Respondent has ever manufactured or sold any products under or by reference to the Trade Mark, or similar mark (whether manufactured by the Respondent, the Complainant or any other party). This is consistent with the submissions of the Complainant that it has since 2008 appointed an authorized distributor of its Products in China.
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 notes that, at some stage following the filing of the Complaint, the Website has been taken down. In all the circumstances, the Panel considers this constitutes further evidence in support of the conclusion that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has failed to produce satisfactory 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 Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over forty years. 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 products in direct competition with those manufactured by the Complainant.
The Panel considers it is highly unlikely that the Respondent did not know of the Complainant and of its rights in the Trade Mark at the time the disputed domain name was registered. The evidence supports the conclusion that the Respondent has registered and used the disputed domain name for the purpose of attracting Internet users to the Website, for the purpose of marketing and selling the Respondent’s products in direct competition with the Products manufactured and sold by the Complainant under the Trade Mark for many years.
The Panel also considers the fact the Website has been taken down following the commencement of these proceedings does not sit at all well with the Respondent’s protestations of lack of bad faith.
The Panel is therefore convinced that 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: February 27, 2015
1 On January 28, 2015, the Center received an email communication in English from the Respondent indicating it had received the email communication from the Center, but it did not know what happened to its waterpik (domain name). On the same day, the Center replied to this email communication in Chinese and English. On January 31, 2015, a further email communication in Chinese was received from the Respondent indicating that the Respondent manufactures Waterpik products and requesting the Center to provide the Complainant’s contact details to the Respondent. On February 2, 2015, the Center replied to this email communication in Chinese and English.
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