Complainant is Wenger S.A. of Delemont, Switzerland, represented by Day Pitney LLP, United States of America.
Respondent is YAN XIANG, Genuine Swissgear Bags of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba (the "Registar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015. On March 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On March 4, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 6, 2015, Complainant confirmed its request that English be the language of the proceeding. On the same day, Complainant also submitted an amendment to the Complaint in relation to Respondent's information. Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on March 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 31, 2015.
The Center appointed Yijun Tian, Karen Fong and Dr. Hong Xue as panelists in this matter on April 22, 2015. 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
Complainant, Wenger S.A. (hereinafter referred to as "Wenger" and/or "Complainant"), is a company incorporated in Delemont, Switzerland. Complainant is a premier global provider of many goods including, but not limited to, knives and travel bags, offered under the SWISSGEAR Marks worldwide. It has exclusive rights in several well-known registered SWISSGEAR trademarks (hereafter "SWISSGEAR Marks") globally, including the United States (e.g., SWISSGEAR, United States Registration No. 3,291,272, registered on September 11, 2007 with a date of first use of at least 2003 (see Exhibit E of the Complaint).
Respondent is YAN XIANG, Genuine Swissgear Bags of Guangzhou, Guangdong, China. The disputed domain name was registered on February 28, 2013, long after the SWISSGEAR Marks became internationally famous. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The disputed domain name contains "swissgear" in its entirety and is thus confusingly similar to the SWISSGEAR Marks. The addition of the word "genuine" within the disputed domain name enhances the similarity of the disputed domain name with the SWISSGEAR Marks.
Complainant contends that Respondent has no legitimate interests or rights in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. 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) Complainant's English trademark (SWISSGEAR) is used on the Website "www." in connection with the Respondent's attempt to exploit confusion to its own pecuniary benefit, and fraudulently obtain customers seeking products sold under the SWISSGEAR Marks and associated with Complainant.
(b) The Website reads in English, and English language URLs are used by Respondent.
(c) These all suggest that Respondent is more than familiar with the English language. Respondent had to identify the prominent brand owner as a target to defraud and scam consumers out of, select an English trademark to infringe, and use an English word within the disputed domain name.
(d) Respondent's failure to provide an address on the WhoIs database and its falsification of a company name identified on the Website, which appears aimed at concealing its identity to avoid prosecution for the infringement, is evidence of its bad faith and supports proceeding in the English language.
(e) Complainant urges the Panel to decide the case in English so as not to frustrate the UDRP process, in fairness to Complainant, and to prevent potential confusion to Complainant's potential consumers.
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 its 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 Switzerland, 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 fact that the Website is in English and the disputed domain name includes Latin characters and the English words "genuine", "swiss" and "gear" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
From the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds 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 Website is an English-based website and Respondent is apparently doing business in English through this Website (Exhibits G-J to the Complaint); (c) the Website appears to have been directed to users around the world (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant's request that English be the language of the proceeding; and (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 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 Panel finds that Complainant has rights in the SWISSGEAR Marks acquired through registration. The SWISSGEAR Marks have been registered worldwide, and Complainant has a widespread reputation as a premier global provider of many goods including, but not limited to, knives and travel bags, offered under the SWISSGEAR Marks worldwide.
The disputed domain name comprises the SWISSGEAR Marks in their entirety. The disputed domain name only differs from Complainant's trademark by the additions of the term "genuine" and a hyphen "-" to the SWISSGEAR Marks. This does not eliminate the confusing similarity between Complainant's registered trademarks 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).
Mere additions of the descriptive term "genuine" and "-" as prefixes to Complainant's marks fails to distinguish. By contrast, it may increase the likelihood of confusion.
Thus, the Panel finds that the additional prefixes are not sufficient to negate the confusing similarity between the disputed domain name and the SWISSGEAR Marks.
The Panel therefore holds that the Complainant 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 commonly been known 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 SWISSGEAR Marks globally including in the United States (e.g., SWISSGEAR, United States Registration No. 3,291,272, registered on September 11, 2007 with a date of first use of at least 2003 (see Exhibit E of the Complaint), which long precedes Respondent's registration of the disputed domain name (February 28, 2013).
Respondent is not an authorized dealer of SWISSGEAR-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 of production to Respondent to produce evidence to rebut this case (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 "swissgear" in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SWISSGEAR Marks or to apply for or use any domain name incorporating the SWISSGEAR Marks and Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the SWISSGEAR Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the Website, potential partners and end users are led to believe that the Website "www." is either Complainant's site or a site of an official authorized partner of Complainant, which it is not.
(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 February 28, 2013. The disputed domain name is confusingly similar to Complainant's SWISSGEAR Marks.
(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 Swissgear products at the Website "www.".
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 Complainant 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 website 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 website or location or of a product or service on Respondent's website or location.
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 is using the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the SWISSGEAR Marks with regard to its products. Complainant has registered its SWISSGEAR Marks internationally, including registrations in the United States (since 2007).
Moreover, according to the information provided by Complainant, Respondent directly copies the registered
SWISSGEAR Marks in conjunction with the following logo design: The SWISSGEAR Marks and this logo design are placed prominently at the top of the Website resolved by the disputed domain name, in the same all-capital, bold lettering employed by Complainant, and even identifies SWISSGEAR with the phrase "BY WENGER". The Website also uses SWISSGEAR in text advertising of its goods. (See Exhibit H of the Complaint).
Respondent would not have advertised products purporting to be Swissgear products on the Website if it was unaware of Complainant's reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the SWISSGEAR Marks are not ones those 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 respond to Complainant's allegations. According to the UDRP 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 Swissgear branded products. b) Use 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 website" offering Complainant's Swissgear branded products and services without authorization.
Complainant claimed that the disputed domain name has not been registered in connection with a bona fide offering of goods or services, nor is Respondent making legitimate fair use of the disputed domain name without intent for "commercial gain" to misleadingly divert consumers or to tarnish the SWISSGEAR Marks and Complainant's rights.
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).
Given the widespread reputation of the SWISSGEAR Marks (as well as the affiliation statement on the 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 fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the SWISSGEAR Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the Website, potential partners and end users are led to believe that the Website "www." is either Complainant's site or a site of an official authorized partner of Complainant, which it is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name is being 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 free 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 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 Complainant 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 be transferred to Complainant.
Yijun Tian
Presiding Panelist
Karen Fong
Panelist
Dr. Hong Xue
Panelist
Date: May 4, 2015
Full & Egal Universal Law Academy