The Complainant is EDP - Energias de Portugal, S.A. of Lisbon, Portugal, represented by João Leitão Figueiredo Lawyers, Portugal.
The Respondent is Huhan, Yuming Zhong of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2016. On July 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2016, 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 August 2, 2016, the Center transmitted by email in English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on August 3, 2016. 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on September 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 14, 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. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Portugal, and a leading company in the energy sector in Europe. The Complainant is the owner of several European and national registrations for the trade mark EDP, which is the acronym for the name of the Complainant, "Energias de Portugal", (the "Trade Mark"), including Portuguese registration No. 399660, dating from April 24, 2007. B. Respondent
The Respondent is apparently an individual resident in China. C. Disputed Domain Name
The disputed domain name was registered on November 1, 1994. D. Website at the Disputed Domain Name
The disputed domain name has not been used by the Respondent. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the 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, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding, as the disputed domain name, having been purchased by the Complainant, was then stolen from the Complainant by the Respondent.
The Respondent, having received the Center's communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Furthermore, having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, 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.
The Panel considers that, although there is no evidence that the Respondent is conversant in English, in all the circumstances of this proceeding, including the apparent fraudulent transfer of the disputed domain name by the Respondent, and, further, in light of the Respondent's decision to take no part in this proceeding, it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint into Chinese, and would delay the resolution of this proceeding.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety.
The disputed domain name was first registered on November 1, 1994. It was purchased by the Complainant on September 30, 2013 and was transferred to the Complainant shortly afterwards. On September 10, 2014, the disputed domain name was transferred, apparently fraudulently, to the Respondent.
Although it would appear the Complainant may not have possessed trade mark rights in respect of the Trade Mark at the time of the first registration of the disputed domain name in 1994, the Complainant did possess relevant rights in the Trade Mark at the time of transfer of the disputed domain name to the Respondent, in 2014. It is trite, under the UDRP, that a transfer of a domain name amounts to a new registration for the purposes of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.7).
Further and in any event, the date upon which the Complainant first acquired relevant trade mark rights is irrelevant for the purposes of the first limb under paragraph 4(a) of the Policy (see WIPO Overview 2.0, paragraph 1.4).
The Panel therefore finds that the disputed domain name is identical to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has made no use of the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant asserts that, on September 10, 2014, it was informed by the then registrar of the disputed domain name that the disputed domain name was being transferred. The Complainant immediately engaged technical consultants in order to try to prevent the transfer, but was unsuccessful in preventing the transfer. The Complainant subsequently filed a complaint with ICANN contractual compliance, but was informed by ICANN, on September 22, 2014, that, as the described facts concerned a private dispute with a third party, ICANN had reviewed and closed the Complainant's complaint.
The Complainant does not know how the Respondent was able to effect the transfer, and how the then registrar's security measures were breached.
It is however clear that, on the undisputed facts and assertions in this proceeding, the Respondent was somehow able to circumvent the then registrar's security measures in order to unlawfully effect the transfer of the disputed domain name from the Complainant to the Respondent.
Although the Respondent has not made any use of the disputed domain name, the circumstances of this proceeding, including the fraudulent transfer of the disputed domain name, demonstrate that the Respondent must have known of the Complainant and of its rights in the Trade Mark at the time of the Respondent's transfer of the disputed domain name. Furthermore, under the circumstances, the Respondent's passive holding of the disputed domain name constitutes bad faith use for purposes of the Policy (see WIPO Overview 2.0, paragraph 3.2).
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and used in bad faith. 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 28, 2016
Full & Egal Universal Law Academy