The Complainant is Qing Wu, Jiangyin Dexin Auto Parts (Chair) Co., Ltd., of Jiangyin, China, represented by Viering, Jentschura & Partner mbB, Germany.
The Respondent is DXRacer Sp. z o.o., Anna Wolak, of Nowy Sacz, Poland, represented by JWP Patent & Trademarks Attorneys Dorota Rzazewska sp.j., Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with NetArt Sp. z o.o. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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. In response to an invitation to amend the Complaint by the Center, the Complainant filed an amended Complaint on January 8, 2016.
On January 11, 2016, the Center sent an email communication to the parties in both Polish and English regarding the language of the proceeding. On January 11, 2016, the Respondent requested that Polish be the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2016. The Response was filed with the Center on February 12, 2016.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 23, 2016. 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.
On March 4, 2016, the Complainant submitted a Supplemental Submission to the Center. The Respondent objected to this proposed Supplemental Submission by email on March 4, 2016. 4. Factual Background
The Complainant is a Chinese citizen who is the legal representative of a Chinese company which produces and sells high-end office chairs, primarily used for computer gaming.
The Complainant owns the trademark DXRACER (“the Mark”).
The Mark was first registered in China on October 7, 2009 under number 5728544. It was registered as an international trademark on June 14, 2010 under number 1045668 and was granted protection in several countries, including in Poland, where the Respondent is located (Publication number: 2011/11; date: April 7, 2011). A Community Trademark (“CTM”) application was also filed on December 14, 2012 under number 011426996 (Registration No. 1202522) by an agent paid for by the Respondent but on behalf of and in the name of the Complainant.
The Complainant is also the registrant of a domain name containing the Mark, , which serves as its official website.
The Respondent was an authorized representative of the DXRACER brand from December 1, 2010 till at least April 1, 2015, and the business relationship was terminated by the Complainant.
The disputed domain name was created on March 8, 2012. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, , contains the distinctive element “dxracer” in its entirety. The Complainant also asserts that the addition of the generic Top-Level Domain (“gTLD”) “.net” does not serve to distinguish the disputed domain name from the Mark and only adds to the confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never permitted the Respondent to use the Mark in any manner, and that the relationship between them is terminated.
(iii) The Complainant submits that the Respondent has registered the disputed domain name without its knowledge and is using it in bad faith.
(iv) The Complainant submits that the Respondent is using the disputed domain name to trade off the goodwill and reputation of the Mark and did not reply to a cease and desist demand.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
(i) The Respondent responded to the Complainant’s contentions by asserting that it has rights or legitimate interests in respect of the disputed domain name, insofar as it marketed the Complainant's products, as its distributor in Europe.
(ii) The Complainant gave the Respondent a written assurance of an ongoing business relationship.
(iii) The Respondent registered the disputed domain name with the Complainant knowing about it, and the Complainant did not object to it.
(iv) On the website associated with the disputed domain name, only genuine products bought from the Complainant were offered for sale.
(v) The Respondent is not guilty of cybersquatting, and fulfills the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
(vi) The Respondent denies that it registered the disputed domain name in bad faith and further denies that its use of the disputed domain name prevents the Complainant from accessing the market.
(vii) The Respondent counterclaims that the Complainant acted in bad faith in not delivering purchase requests from the Respondent and by letting the Respondent incur expenses in registering the disputed domain name and in promoting it.
(viii) The request to have the disputed domain name transferred to the Complainant should be denied. 6. Discussion and Findings 6.1. Procedural Aspects A. Language of the Proceeding
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 Registrar confirmed that the language of the Registration Agreement of the disputed domain name is Polish.
The Complainant requested that the language of the proceeding be English, to which the Respondent objected in Polish, arguing that it should be Polish.
The Panel notes that the Respondent corresponded in English with the Complainant prior to the commencement of this proceeding, thus showing an understanding of that language.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion in the spirit of fairness to both parties, which pursuant to Paragraph 10(b) of the Rules have to be treated with equality, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and Polish, determines pursuant to paragraph 11(a) of the Rules to accept the Complaint in English, the Response in Polish and proceed to the decision in English. B. Complainant's Supplemental Submission
Before reaching the merits, the Panel must decide whether to consider the Complainant’s March 4, 2016 Supplemental Submission, and what weight to accord it. Paragraph 12 of the Rules unambiguously provides that only the Panel may request further submissions: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. The Rules make no provision for a party to file an additional submission without leave of the Panel.
In general, such submissions are appropriate only if they raise new facts or law, not reasonably available (or foreseeable) at the time of the party’s initial submission. They are not to be used to simply reply to the Respondent’s arguments. See Magnum Piering Inc., v. Mudjackers, WIPO Case No. D2000-1525 andOki Data Americas, Inc. v. ASD, Inc., supra.
In this case, the Panel has reviewed the submission and rejects the Complainant’s Supplemental Submission. Much of the Supplemental Submission is simply an effort to reargue the points made in the Complaint. The only new fact alleged – that the Respondent has applied for a CTM “DXSEAT”, which is opposed by the Complainant, does not affect the Panel’s decision. Accordingly, the Panel does not take into account the Complainant’s Supplemental Submission. 6.2. Requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain name , it is evident that the latter consists solely of the Mark, followed by the gTLD “.net”.
It is well established that the gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel notes that the Respondent failed in its Response to deny, or to address at all, the assertions of the Complainant regarding the confusing similarity of the disputed domain name with the Mark.
The Panel finds that the disputed domain name is confusingly similar to the Mark, which is incorporated in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
To counter any notion that the Respondent has rights or legitimate interests, the Complainant has argued that (i) the Respondent sought no permission from the Complainant to register the disputed domain name in the Respondent’s name, (ii) the Respondent failed to cease using it when the Complainant so demanded and (iii) the Respondent and the Complainant have terminated their relationship.
In the Response, the Respondent produced no contract or agreement granting it the right to register the disputed domain name in its own name. Further, the Respondent produced no contract or agreement granting it the territory of Europe to sell the Complainant’s products, either on an exclusive basis or on a non-exclusive basis.
The website associated with the disputed domain name was commercially active. No information is provided on whether the website prominently (or at all) disclosed to visitors the Respondent’s relationship with the Complainant. Moreover, the Respondent failed to reply to the cease and desist demand sent on behalf of the Complainant, which mentioned that the Respondent not only registered the disputed domain name but also registered the following domain names: , , and .
The Panel thus finds that at least two of the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., supra, are not met in this proceeding: The accurate relationship between the domain name registrant and the trademark holder apparently was not prominently displayed on the website to which the disputed domain name resolved, even though the Respondent was only one of many sales agents, and the Respondent did try to corner the market in domain names that reflect the Mark, in effect depriving the Complainant of reflecting the Mark in a domain name. See Houghton Mifflin Co. v. Weatherman Inc.,WIPO Case No. D2001-0211 and Magnum Piering, Inc. v. Mudjackers, supra.
Furthermore, some UDRP panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise incorporates the relevant trademark. See paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Accordingly, the Respondent’s activities do not constitute a bona fide offering of goods under the Policy.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent has failed to provide any exculpatory information or persuasive reasoning that might lead the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration. See Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775.
In this case, where the Respondent paid a trademark agent to apply for a CTM in the name of the Complainant, the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The fact that the Respondent registered, in addition to the disputed domain name, four domain names (, , and ) confirms the implausibility of a random registration of the disputed domain name and by contrast reveals a behavioral pattern.
As discussed above, the Respondent registered the disputed domain name identical to the Complainant’s Mark without authorization and is using the disputed domain name for its own commercial gain without properly disclosing its relationship to the Complainant. The Respondent benefits by attracting visitors looking for the Complainant by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website under paragraph 4(b)(iv) of the Policy.
In addition, the Panel notes that some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel finds the Respondent’s claim that the Complainant acted in bad faith, by not delivering purchase requests, outside the limited scope of this Policy.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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.
Louis-Bernard Buchman
Sole Panelist
Date: March 8, 2016
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