The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Xie Ling of China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2015. On April 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details.
On April 29, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the appropriate language of the proceeding. On April 30, 2015, the Complainant confirmed its request 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on May 5, 2015. In accordance with paragraph 5(a) of the Rules, the due date for filing a Response was May 25, 2015. The Respondent did not submit any such response. Accordingly, the Center notified the Respondent’s default on May 26, 2015.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on June 4, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is the managing director of a German company ic! berlin brillen GmbH, a company that specializes in designer spectacles and sunglasses which are marketed and sold under the brand IC! BERLIN. The Complainant has produced registration information of several trademarks, inter alia: IC! BERLIN, International Trademark Registration No. 818325, registered on January 9, 2004 and IC!, Community Trademark Registration No. 001245174, registered on September 18, 2000.
According to the WhoIs data and the Registrar’s verification response, the Respondent is Xie Ling. The Disputed Domain Name was registered on January 27, 2015 and it is valid until January 27, 2016.
The Registrar confirmed, in its email of April 28, 2015, that the Registration Agreement for the Disputed Domain Name is in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) 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 IC, IC!, IC! BERLIN and IC!-BERLIN trademarks, which are well-known worldwide. The Disputed Domain Name is confusingly similar and nearly identical to the Complainant’s IC! BERLIN trademark since it reproduces the IC! BERLIN trademark in its entirety, with the only exception of the exclamation mark, and the addition of the English term “vip”, which does not cause the Disputed Domain Name to be distinguishable from the Complainant’s registered trademarks. Moreover, the Respondent also uses ic! berlin brillen GmbH’s logo on the website to which the Disputed Domain Name resolves, which increases the likelihood of confusion between the two.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant has never given authorization or permission to the Respondent to register or to use its IC! BERLIN trademarks. The Respondent is not in any way related to the Complainant’s business, and is not one of its distributors. The absence of legitimate interest is evidenced by the fact that Respondent uses the Disputed Domain Name to resolve to a website that sells counterfeit IC! BERLIN spectacles. As such, the Respondent does not use the Disputed Domain Name in connection with a bona fide offer of goods or services.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Disputed Domain Name was clearly registered with the only purpose of misleading possible consumers. It was registered in bad faith with the purpose to disrupt the business of the Complainant’s company and to mislead possible consumers for the Respondent’s commercial gain from selling counterfeit spectacles to consumers. Also, the Disputed Domain Name resolves to a website that reproduces images from the Complainant’s website under the domain name . The Disputed Domain Name is therefore registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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 Rules allow 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 applicance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be 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). The 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 the 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” (see paragraph 4.3 of WIPO Overview 2.0).
The Registration Agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English:
(1) The website to which the Disputed Domain Name resolves contains English, which suggests that the website is designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee,WIPO Case No. D2013-1103).
(2) The Panel finds that the Complainant is not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(3) The Center’s communications to the Respondent have used both English and Chinese, and ample opportunity has been given to the Respondent to object to the Complainant’s request. The Respondent did not reply to the Center. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the owner of the IC! BERLIN trademark as well as the IC! trademark.
The Disputed Domain Name, , incorporates most of the IC! BERLIN trademark, with the exception of the exclamation mark, and the addition of the English term “vip” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the English term “vip” and the gTLD “.com” does not distinguish the Disputed Domain Name from the Complainant’s IC! BERLIN trademark. The only distinctive part of the Disputed Domain Name is the “icberlin” element, which contains the Complainant’s trademark in its entirety, with the exception of the exclamation mark. However, the omission of the exclamation mark would not sufficiently differentiate the Complainant’s IC! BERLIN trademark and the Disputed Domain Name (Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702). Furthermore, the addition of the English term “vip” could, in fact, increase the likelihood of confusion among Internet users with the Complainant’s business under the brand IC! BERLIN.
Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s IC! BERLIN trademark and that the condition of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a) (ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: “[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the IC! BERLIN trademark as well as the IC! trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant’s trademark in the Disputed Domain Name or otherwise.
Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. As such, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any allegation or evidence indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. The Respondent does not accurately and prominently disclose its relationship with the Complainant. Therefore, the Respondent cannot claim that it, as a reseller of the Complainant’s products, has rights or legitimate interests in the Disputed Domain Name.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent’s name or the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name is used to sell the Complainant’s counterfeit products, which is a commercial use.
Based on the above, the Panel concludes that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) “by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s IC! BERLIN trademark and IC! trademark have been registered in many countries in the world, including China. The Respondent chose the “icberlin” element as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected this for any reason other than the reputation of the Complainant’s trademark. The screenshots of the website to which the Disputed Domain Name resolves show that the Respondent knows of the Complainant’s trademark. Such intentional registration shows the bad faith of the Respondent. Therefore, the Panel finds that the Disputed Domain Name was registered in bad faith.
The Respondent uses the IC! BERLIN trademarks and images from the Complainant’s company’s website on the website to which the Disputed Domain Name resolves. The screenshots of the website show that the website sells spectacles as well as sunglasses which are also displayed in the Complainant’s website under the domain name . These features make the website under the Disputed Domain Name appear to be an official website of the Complainant or sponsored or endorsed by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Panel therefore concludes that the Disputed Domain Name is being used in bad faith.
Thus, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: June 16, 2015
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