The Complainant is BRITA GmbH of Taunusstein, Buchhaltung, Germany, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is zhaofaping of Shenzhen, Guangdong, 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 April 16, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 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.
On April 22, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 23, 2015, the Complainant requested 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 in both Chinese and English, and the proceeding commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015.
On April 28, 2015, the Respondent sent an email communication to the Complainant stating that the disputed domain name did in part incorporate the Complainant’s registered trademark rights, indicating its willingness to transfer the disputed domain name to the Complainant and asking how this could be done. The Complainant forwarded this email communication to the Center on the same day. Upon receipt of the Complainant’s request, the proceeding was suspended on April 29, 2015. Upon receipt of the Complainant’s further request the proceeding was re-instituted on May 13, 2015 with a new Response due date of June 1, 2015. The Respondent did not submit a formal Response.
On June 2, 2015, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on June 8, 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 German company that sells water filtration equipment worldwide. The Complainant is the registered proprietor of the trademark BRITA in various countries in numerous classes, for example, the Chinese Trademark Registration No. 632491 for BRITA was granted on March 10, 1993.
The disputed domain name was registered on April 25, 2014. 5. Parties’ Contentions A. Complainant Identical or confusingly similar
The Complainant argues that the disputed domain name is made entirely up of the registered trademark BRITA and the geographical description “China” to which generic Top-Level Domain (“gTLD”) “.net” has been added. It is therefore confusingly similar to the Complainant’s registered trademark BRITA. No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for BRITA. Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the BRITA trademark and registered the disputed domain name to attract business to its website. The Complainant alleged and provided print outs to show that the website to which the disputed domain name resolved to was at the time the Complaint was filed was used to sell water filtration and air filtration products under the brand name “Provitec”. As such, the Complainant alleged registration and use of the disputed domain name was in bad faith. B. Respondent
As set out above the Respondent sent an email to the Complainant acknowledging the disputed domain name did, in part, incorporate the Complainant’s registered trademark indicating its willingness to transfer the disputed domain name to the Complainant and asking how this could be done. The Respondent also stated that it had not used the disputed domain name for any commercial purpose. The proceeding was suspended for the parties to seek a resolution. This was not achieved and the proceeding was reinstituted. When informed that the Center would proceed with panel appointment the Respondent replied on June 3, 2015, in roman letters “ok”. 6. Discussion and Findings 6.1. Was there a consent to transfer?
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") sets out the current views of UDRP panels when a respondent consents to transfer or cancel the domain name. This provides:
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent’s consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
The Panel considering this paragraph in its decision in Rockwool International A/S v. Lin Chengxiong, WIPO Case No. D2012-0472 and concluded that where there was an unambiguous consent to transfer a panel could do so without considering the merits of the case.
The Respondent in its email to the Complainant said it was willing to transfer the disputed domain name to the Complainant. No request was made for payment nor however was there a statement it would be transferred for free. Following the suspension of the proceeding to allow the parties to resolve the matter, the Complainant asked that the proceeding be reinstituted. The Respondent also acknowledged that the Center would proceed to appoint a panel. From this, the Panel cannot conclude there was an unambiguous consent to transfer. The Panel will therefore consider the merits of the case. 6.2. Language of the Proceeding
The language of the Registration Agreement is in Chinese. 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 Complainant requested the language of the proceeding to be English on grounds that included that the Complainant did not speak English and that the website under the disputed domain name made use of several English words in or in connection with the use of the disputed domain name.
The Respondent did not respond to this request but did state in its email to the Complainant that it did not understand English very well.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. The fact that the website under the disputed domain name is written primarily in English is a relevant factor. The Respondent is seeking to attract business in English.
The Respondent did not respond to the Center’s preliminary determination but has indicated that it understands the nature of the proceeding and that the Complainant is asserting its trademark rights in relation to the disputed domain name.
This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.3. Substantive Issues A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark BRITA, the geographical term “China” and the gTLD “.net”. The disputed domain name is confusingly similar to the registered trademark BRITA.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. On the contrary, it has acknowledged in its email to the Complainant the Complainant’s trademark rights. Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
For similar reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The evidence filed by the Complainant shows that the website under the disputed domain name was clearly being used to sell products similar to the Complainant’s (albeit under another brand). The Respondent stated that it had not made commercial use of the disputed domain name, however, did not specifically challenge the Complainant’s evidence or seek to explain it. The Panel, therefore, accepts this evidence.
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: June 22, 2015
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