The Complainant is Fitt S.P.A. of Vicenza, Italy, represented by Eureka IP Consulting, Italy.
The Respondent is Dai Kang Kang of Taizhou, Zhejiang, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 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 September 21, 2016, the Center transmitted by email in both 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 September 22, 2016. The Respondent submitted a request for Chinese to be the language of the proceeding on September 27, 2016.
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 both English and Chinese, and the proceedings commenced on September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Respondent submitted an email consulting how to proceed with this case on September 26, 2016, and submitted another email requesting the Complainant to provide its registered trade mark in China on September 27, 2016. However, the Respondent did not submit any substantive response. Accordingly, the Center informed the Parties the commencement of panel appointment process on October 20, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on October 25, 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
The Complainant, an Italian company, is a manufacturer of flexible hoses for the consumer and professional markets. The products include hoses and fittings for gardening as well as for building swimming pools and conveying gas or food liquids. The Complainant currently uses the mark YOYO in connection with garden hoses and flexible hoses. The mark YOYO is registered as a trade mark in many jurisdictions of the world including China. The earliest trade mark registration submitted in evidence was registered on July 13, 2015 (international registration no. 1261153).
The Complainant is also the owner of a number of domain names which include the word "yoyo". These include:
The Domain Name was registered on January 13, 2016. It is not connected to an active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the trade mark YOYO, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent submitted two emails consulting how to proceed with this case and requesting the Complainant to provide its registered trade mark in China. However, the Respondent did not reply to the Complainant's contentions substantively. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submitted in an email to the Center on September 22, 2016 that the language of the proceeding should be English.
The reasons being that the Complainant is a company registered and located in Italy where Chinese is not the mother language and the Complainant would therefore be unfairly disadvantaged by being forced to translate all documents of the present proceeding. The Domain Name includes the English word "hose", therefore it is highly likely that the Respondent understands English. The Respondent requested by email on September 27, 2016 that the proceeding should be in Chinese but did not provide any reasons. The Respondent did not respond substantively to the Complaint.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond substantively to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the YOYO trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant's trade mark YOYO in its entirety and the word "hose" which is descriptive of the goods in question. The addition of the word "hose" as a suffix does nothing to dispel any confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD").
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Respondent is not affiliated to the Complainant in any way nor has it been authorised by the Complainant to register and use its trade mark in any manner including in domain names. The Respondent is not commonly known by the Domain Name. The Respondent is not making legitimate noncommercial fair use of the Domain Name as it is seeking to redirect Internet users to a website that resolves to a blank page and lacks content. It has failed to demonstrate any legitimate use of the Domain Name suggesting a lack of rights and legitimate interests in the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded substantively to the Complainant's contentions and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The YOYO trade mark was registered before the Domain Name was registered. The Domain Name includes a combination of two words – "yoyo", the ordinary meaning of which is a type of toy and "hose", which is descriptive of the goods which are sold under the trade mark YOYO. The word "yoyo" in the Domain Name is therefore clearly not in reference to its ordinary meaning but its mark significance. It is clear that the combination of the two words making up the second level Domain Name was a reference to the Complainant's trade mark. The Complainant's products under the YOYO trade mark are very much present on the Internet. It would be inconceivable that the Respondent had no knowledge and actual notice of the YOYO trade mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
The Domain Name resolves to an inactive website. The Consensus View in paragraph 3.2 of WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
The following facts indicate that the Domain Name is being used in bad faith –the Domain Name is made up of two words – the Complainant's trade mark and a word descriptive of the goods and the Respondent failed to file a substantive response.
Considering the circumstances, the Panel considers that the Domain Name was also used in bad faith.
Accordingly, the Complaint has satisfied the third element of paragraph 4(a) of the Policy. 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 Domain name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: November 9, 2016
Full & Egal Universal Law Academy