Complainant is Royal Unibrew A/S of Faxe, Denmark, represented internally.
Respondent is FANG LIN of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology 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 13, 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 July 16, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 20, 2015, Complainant submitted a request that English be the language of the proceeding. 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on July 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2015.
The Center appointed Yijun Tian as the sole panelist in this matter on August 25, 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
Complainant, Royal Unibrew A/S, is a company incorporated in Faxe, Denmark. It is a producer and distributer of beverages such as beer, malt drinks and soft drinks, including soda water, mineral water and fruit juices as well as cider and long drinks. And it is a leading regional player in a number of countries in Western and Eastern Europe in the international malt drink market.
Complainant has exclusive rights in the ROYAL UNIBREW marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally, including in Denmark (since February 25, 2005) and in the European Union (“EU”) (since June 7, 2005) (Annexes 4-5 to the Complaint). Complainant also operates its official website promoting its products at domain name (registered in 2004) (Annex 8 to the Complaint).
Respondent is FANG LIN, located in Shanghai, China. The disputed domain name was registered on April 10, 2015. At the time of this decision, the disputed domain name does not resolve to any active webpage. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its trademark ROYAL UNIBREW, the registration and use of which by Complainant precedes the registration of the disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in respect of 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(a), 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 its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is operating its business in various jurisdictions, including China. However, Complainant is not using Chinese in the conduct of its business, which is done in English.
(b) Complainant has legal presence with group companies in Europe, including the United Kingdom of Great Britain and Northern Ireland, but no legal presence in China. Hence, Complainant has no familiarity with Chinese but is indeed familiar with English.
(c) Registrar of the disputed domain name is HiChina Zhicheng Technology Ltd., who is an international wholesale supplier in International Online Shopping offering Electronics, Apparels, Home & Garden, Gift etc. to customers outside of China. So, it should be familiar with the English language.
(d) Since the Complaint was filed in English and no response has been provided by Respondent, Respondent should be seen as having been offered a fair chance to object to English being the language of the proceeding and has not done so.
(e) Given Complainant being unfamiliar with Chinese and the fact that Complainant has initiated the case to avoid hostile use of the disputed domain name a translation of the Complaint into Chinese would imply an unjustified delay of the case, and Complainant would be unfairly disadvantaged by being forced to translate.
(f) The Center as a provider have in its prior UDRP cases accepted the complaint as filed, even if it is filed in different language from the language of the registration agreement, and has in certain cases deemed it appropriate, to allow a response to be given in a language different from that applied by Complainant.
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 his or her 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 that Complainant is a company from Denmark, and Complainant would be unduly burdened if required to proceed in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters “unibrew” as well as the English word “royal” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On 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 may have 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 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; (c) the Center informed Respondent that it would accept a Response in either English or Chinese. (See Barclays Bank PLC v. Zhongshan Banks Electric Marketing Co. Ltd (中山市比克斯电器营销有限公司),WIPO Case No. D2011-2014)
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. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the ROYAL UNIBREW marks acquired through registration. The ROYAL UNIBREW mark has been registered worldwide including in the EU and Denmark, and Complainant has had a widespread reputation as a leading regional player in a number of countries in Western and Eastern Europe in the international malt drink market.
The disputed domain name comprises the ROYAL UNIBREW mark in its entirety. The only difference from the ROYAL UNIBREW mark is the addition of the generic Top-Level Domain (gTLD) “.net”. UDRP panels have consistently held that the applicable top-level suffix in the domain name (e.g., “.net” or “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see paragraph 1.2 of WIPO Overview 2.0 and cases cited therein). Thus, the Panel finds that the gTLD “.net” does not eliminate the confusing similarity between Complainant’s registered ROYAL UNIBREW mark and the disputed domain name .
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, 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).
The Panel therefore holds that 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) having been commonly 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 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 complainant’s contentions. If 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 ROYAL UNIBREW mark globally, including registration in Denmark (since February 25, 2005) and registration in the EU (since June 7, 2005), which long precedes Respondent’s registration of the disputed domain name (April 10, 2015).
Moreover, Respondent is not an authorized dealer of ROYAL UNIBREW-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby has shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; 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 words “royal unibrew” in the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ROYAL UNIBREW mark or to apply for or use any domain name incorporating the ROYAL UNIBREW mark.
(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 April 10, 2015, long after Complainant’s registrations of the ROYAL UNIBREW marks (e.g., in Denmark and the EU since 2005). The disputed domain name is identical or confusingly similar to Complainant’s ROYAL UNIBREW Mark.
(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 evidence submitted by Complainant, the disputed domain name is not currently associated with active website.
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 Complaint 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 registration 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 websites or location or of a product or service on Respondent’s website or location.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the ROYAL UNIBREW marks with regard to its products and services. Complainant has registered its ROYAL UNIBREW marks in many countries, including registration in the EU (since 2005). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel also finds that the ROYAL UNIBREW mark is not one that trader 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 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 ROYAL UNIBREW-branded products and/or services.
b) Used in Bad Faith
At the time this decision is rendered, the disputed domain name is currently inactive. In terms of inactive domain name, the WIPO Overview 2.0 provides: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith” (WIPO Overview 2.0, paragraph 3.2). The WIPO Overview 2.0 further states: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, Complainant has been a leading regional player in a number of markets in Western and Eastern Europe in international malt drinks for many years. Complainant has rights in the ROYAL UNIBREW marks in many countries, including registrations in the EU and Denmark (since 2005). As such, Complainant’s ROYAL UNIBREW marks, arguably, are widely known. Further, given the lack of response, the Panel cannot envision any plausible use of the disputed domain name that would not be in bad faith under the present circumstances. Taking into account all the circumstances of this case, the Panel concludes that the passively held disputed domain name is used by Respondent in bad faith.
The Panel therefore holds that the Complaint 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
Sole Panelist
Dated: September 23, 2015
Full & Egal Universal Law Academy