The Complainant is Thule Sweden AB of Hillerstorp, Sweden, represented by Lars Wallentin, Sweden.
The Respondent is He Sheng Li of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2015, 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.
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 March 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2015.
The Center appointed Haig Oghigian as the sole panelist in this matter on April 23, 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. 4. Factual Background
The Complainant is a company incorporated in Sweden called Thule Sweden AB which owns and uses the mark THULE for various types of goods including carriers, racks, boxes and cases for transportation.
The Complainant is the owner of the 113 trademarks worldwide including the following (individually or collectively, the “THULE Mark”) (Annexes 5-12 of the Complaint):
- China Reg. no. 914965 THULE (Word) in Class 12
- China Reg. no. 914964 THULE Chinese (trad.) (Word) in Class 12
- China Reg. no. 7892018 THULE simplified Chinese version (Word) in Class 12
- China Reg. no. 7892278 THULE simplified Chinese version (Logo) in Class 18
- China Reg. no. 7892277 THULE simplified Chinese version (Logo) in Class 22
- China Reg. no. 7892276 THULE simplified Chinese version (Logo) in Class 28
- Japan Reg. no. 1616270 THULE (Word) in Class 12
- Japan Reg. no. 4105305 THULE (Word) in Class 28
- International Trademark-Madrid Reg. no. 725393 (Word) in Class 12
- International Trademark-Japan designation Reg. no. 725393 (Word) in Class 12
- International Trademark-Madrid Reg. no. 800296 (Word) in Class 18
- International Trademark-Madrid Reg. no. 1025532 (Logo) in Class 12
- International Trademark-Madrid Reg. no. 1232043 (Word) in Class 9
- International Trademark-Madrid Reg. no. 1227082 (Logo) in Class 9
The Complainant is also the owner of many “Thule” domain names (Annex 13 of the Complaint).
The Domain Name was registered in 2015, postdating the registration of the THULE Mark, and has been used to advertise goods bearing the THULE Mark. 5. Parties’ Contentions A. Complainant
The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.
The Complainant argues that the Domain Name is confusingly similar to the THULE Mark. The Domain Name incorporates the Complainant’s THULE Mark and only adds a common and descriptive word “japan”. The Complainant asserts that if a domain name incorporates a distinctive trademark, such as the Complainant’s THULE Mark, in its entirety, it is confusingly similar to that mark despite the addition of other words. The Complainant further argues that the addition of generic words to a trademark was found to increase the likelihood of confusion on the part of consumers.
The Complainant also asserts that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without the intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue. Further, there is no evidence that the Respondent is making a bona fide offering of goods or services through the Domain Name. Instead, the Complainant argues that the local representative of Thule in Japan had been contacted by several customers who tried to purchase THULE products through the Respondent’s website but have never received the ordered goods after payment, and refers to a specific incident where a Japanese customer complained about the undelivered goods ordered through the Respondent’s website.
The Complainant further argues that the Domain Name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). The Complainant asserts that the use of the Domain Name by the Respondent is clearly aimed at disrupting the Complainant’s business by diverting Internet users away from the Complainant’s genuine websites, and that this is use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark.
Previous UDRP panels have found that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Research In Motion Limited v. One Star Global LLC,WIPO Case No. D2008-1752). Non-distinctive term additions will not be a defense against a finding of confusion (Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759; Research In Motion Limited v. J,WIPO Case No. D2008-0758; Research Quitxtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253).
It is clear from the evidence on the available record that the Domain Name is a combination of the THULE Mark and the non-distinctive and generic word “japan”. Furthermore, given the business operated by the Complainant and its global reputation as a famous, well-known and popular brand which sells a variety of carriers, racks, boxes and cases for transportation through its various boutiques and domain names, confusion is enhanced by the addition of the term “japan”, and the Domain Name falsely suggests that it resolves to a website operated by, or otherwise affiliated with, the Complainant.
In accordance with UDRP precedent and for the above reasons, the Panel finds that the Domain Name is confusingly similar to the THULE Mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by a respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i) of the Policy);
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii) of the Policy); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii) of the Policy).
In this case, the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear from the record that the Domain Name was registered long after the Complainant started to use the THULE Mark. Thus, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name (PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174). However, there has been no evidence produced by the Respondent in this regard.
There is no evidence that suggests that the Respondent has been or is commonly known by “thule” or the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Further, there is evidence that the Respondent was diverting customers by advertising goods bearing the THULE Mark through the website at the Domain Name and using images that were identical to the images that appear in the Complainant’s website, along with Complainant’s THULE Mark, which clearly suggested that the use of the Domain Name containing the THULE Marks was misleading and not a legitimate noncommercial or fair use of the Domain Name.
Such misleading use would not qualify as a bona fide resale of the Complainant’s goods under the test laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must prove that the Domain Name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by a complainant in order to demonstrate bad faith use and registration of a domain name. Such circumstances include, among others:
- circumstances indicating that you have registered domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark (paragraph 4(b)(i) of the Policy); and
- registration of the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy); and
- by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. (paragraph 4(b)(iv) of the Policy).
The Respondent must have had knowledge of the Complainant’s rights in the THULE Mark when it registered the Domain Name, since the Complainant’s THULE Mark is unique and well-known. The Respondent’s awareness of the Complainant’s trademark rights in the THULE Mark at the time of registration suggests opportunistic bad faith registration. (BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). Also, the fact that the Domain Name is linked to a website which is not associated with the Complainant yet was selling products bearing the THULE mark, would amount to bad faith. (See Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019).
The evidence also establishes that the Respondent is linking the Domain Name to a website which offered THULE products without being authorized or approved by the Complainant, despite having known of the Complainant’s trademark rights in the THULE Mark. Further, there is evidence that the products ordered on the website have not been delivered to customers. Finally, it is likely that the Respondent was intentionally profiting off the goodwill associated with the THULE Mark by selling THULE products to Internet users who are likely confused as to the source, affiliation, or endorsement of such products.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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 Domain Name be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: May 14, 2015
Full & Egal Universal Law Academy