The Complainant is Catlike Sport Components. S.L.U. of Yecla, Spain, of Spain, represented by Herrero & Asociados, Spain.
The Respondent is Private Registration / WhoisGuardS of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Nanjing Imperiosus Technology Co. Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2015. On July 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
On July 14, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 15, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on July 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 12, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on August 26, 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 Spanish company founded in 1996. It produces and distributes cycling equipment and accessories worldwide. It produces sunglasses, shoes, socks and other goods but is especially known for its helmets. The Complainant states that CATLIKE is its well-known trade mark and a trusted brand of cycling enthusiasts and professional cycling teams. CATLIKE products are worn by professional cyclists and are sold not only in Spain and Europe but also around the world including in China.
The Complainant's CATLIKE trade mark has been registered in many jurisdictions including the United States of America, Australia, Switzerland, China, the European Union, Japan, Republic of Korea, Singapore, New Zealand, Taiwan Province of China, Mexico and Canada.
The Complainant is the registered owner of many domain names which incorporate the word "catlike", e.g. , , and .
The disputed domain name was registered on April 14, 2003 and updated on June 19, 2014. The disputed domain name does not appear to be in use.
The Complainant's representative sent a cease and desist by email to the Respondent but no response was received. 5. Parties' Contentions A. Complainant
The Complainant asserts, firstly, that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant's mark has been incorporated in the disputed domain name. The only difference lies in the generic Top-Level Domain ("gTLD"), ".com".
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the reason that it is identical to the Complainant's CATLIKE trade mark and its company name. The Complainant's use of the CATLIKE trade mark commenced earlier than the registration date of the disputed domain name. The Respondent is not associated with the Complainant and has not been licensed or authorized by the Respondent to use the Complainant's CATLIKE trade mark or to register a domain name incorporating the trade mark. There is no evidence that the Respondent has rights or legitimate interests in the disputed domain name.
There are no other companies or trade marks of third parties that have the name "Catlike". The term "Catlike" is associated exclusively with the Complainant and its products. The Respondent does not appear to have used the disputed domain name in connection with any bona fide offering of goods or services.
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Since the disputed domain name is not linked to any other individual or legal entity and the Complainant's mark is well-known even in China, it can only have been registered in bad faith by the Respondent, with the aim of attracting or misleading the public. Further, bad faith is demonstrated by the Respondent's failure to respond to the Complainant's cease and desist communication and the Respondent's non-use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complainant filed the Complaint in English. However, the Registration Agreement regarding the disputed domain name is in Chinese. The Complainant requested that the language of the proceeding be English. The basis for its request was that it would be unduly burdensome for the Complainant if they had to translate the Complaint into Chinese. Since the Respondent did not respond to the email communication from the Complainant, there is no knowing if the Respondent would respond even if the Complaint were translated into Chinese. Moreover, the disputed domain name comprises two English words, "cat" and "like" which makes it reasonable to expect that the Respondent understands English. Even if the Respondent does not understand English, it had the option of responding to say that it only communicates in Chinese.
Paragraph 11(a) of the Rules stipulates 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".
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case" and
"The Panel shall ensure that the administrative proceeding takes place with due expedition. …"
The Panel determines that English should be the language of the proceeding in this case. Opportunities have been afforded the Respondent to participate in the proceeding and for it to respond on the issue of the language. If the fact that the Complaint was filed in English proved to be an insurmountable problem for the Respondent short of the Complainant providing a Chinese translation, the Respondent could have raised an objection in that regard.
Having regard to the need for due expedition in the proceeding, it would indeed delay matters to require the Complainant to provide an English translation. Noting also that all of the Center's communications to the parties have been transmitted in both English and Chinese, the Panel finds that the Respondent has been given a fair opportunity to present its case. B. Identical or Confusingly Similar
The Complainant provided evidence of its registered rights in the CATLIKE trade mark.
The United States and Community Trade Mark applications for the CATLIKE trade mark were filed on September 13, 2001 and August 25, 2001, respectively. The disputed domain name was registered after these trade marks were registered, on April 14, 2003.
The Complainant's CATLIKE mark has been incorporated in its entirety in the disputed domain name with no distinguishing element. It is a well-established principle that the gTLD such as ".com" and ".net" may be disregarded when considering the issue of identity or confusing similarity since these elements are an intrinsic feature of domain name registrations.
In the circumstances, the Panel finds that the first element of paragraph 4(a) of the Policy has been established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out specific circumstances (non-exhaustive) whereby a respondent can demonstrate it has rights or legitimate interests in a domain name in dispute. They are:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has provided prima facie evidence of the non-existence of the above circumstances. The disputed domain name does not appear to be in use and the name CATLIKE does not appear to be associated with any third party other than the Complainant. The Complainant has not granted any licence or authorization to the Respondent to use or register the CATLIKE mark in any manner, nor is there any affiliation between them. The Respondent thus has the burden of producing evidence to counter the Complainant's assertions. However, it has not rebutted the Complainant's arguments.
The Panel accordingly finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The record shows that the CATLIKE trade mark is well-known in relation to cycling equipment and related accessories. In this case, the disputed domain name is identical to the Complainant's mark but not used in relation to any website or offering of goods or services. The question whether such a passive holding of a domain name can constitute bad faith use has been dealt with in the landmark decision of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that the circumstances of this case justify a finding of bad faith registration and use. The Respondent has at no stage objected to the Complainant's assertions especially that the sole aim of the Respondent was probably to attract or mislead Internet users by registering the disputed domain name and that it has no rights or legitimate interests in the disputed domain name.
The Panel therefore concludes that the third element of paragraph 4(a) of the Policy has been satisfied by the Complainant. 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.
Francine Tan
Sole Panelist
Date: September 1, 2015
Full & Egal Universal Law Academy