The Complainant is Missler Software of Evry, France, represented by Nameshield, France.
The Respondent is Liu Jian, Cheng Du Xin Zhi Tong Da Ke Ji Fa Zhan You Xian Gong Si of Chengdu, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 11, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on October 13, 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 October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 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
The Complainant is Missler Software, a France based corporation. The Complainant is a publisher of CAD/CAM software, which operates for more than 30 years.
The Complainant has expanded on the international stage in the last decade and has offices in Paris, Lyon, Toulouse, Nantes, Nancy, Chicago, Shanghai, Bogota, Delémont and Modena. The Complainant’s products are shipped all over the world and more than 70% of its software is exported.
The Complainant has partners in Europe, Asia, Oceania, Africa, North and South America. More than 500 employees develop and sell its products.
The Complainant is the owner of several registered trademarks. For example: International registration number 1201197 for the TOPSOLID mark, registered on December 31, 2013; International registration number 1201198 – TOPSOLID, registered on December 31, 2013. The Complainant has registered the TOPSOLID trademark with TMCH on September 30, 2013.
The Complainant also owns and communicates on the Internet through several domain names, of
which the domain name was registered on January 18, 1999.
The disputed domain name was registered on August 4, 2016.
Currently, the disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark TOPSOLID and that the addition of the generic Top-Level Domain (“gTLD”) “.vip” is not sufficient to escape the finding that the disputed domain name is identical to the Complainant’s trademark TOPSOLID.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further contends that the Respondent is not affiliated with it nor authorized by it in any way to use the trademark TOPSOLID, and that the Complainant does not carry out any activity for, nor has any business with the Respondent.
The Complainant further contends that the disputed domain name has been registered with the sole aim to deprive the Complainant of reflecting its intellectual property rights on the term “topsolid”.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further contends that given the distinctiveness of the Complainant’s trademark and reputation, the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark.
The Complainant further argues that in accordance with the evidence it submitted, the Respondent was using the Complainant’s trademark under the website linked to the disputed domain name, giving the impression that it is the owner of the trademark TOPSOLID.
The Complainant further argues that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of October 8, 2016.
The Complainant requested that the language of the proceeding be English.
The Complainant, located in France, claims that it does not communicate in Chinese and submitting all documents in Chinese would entail substantial translation expenses on it.
The Respondent did not respond to the Complainant’s language request.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese letters;
(ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;
(iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Matters A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of different TOPSOLID trademarks.
The disputed domain name reproduces entirely the Complainant’s TOPSOLID trademark with the addition of the gTLD “.vip”.
The addition of the gTLD suffix “.vip” does not have the capacity to distinguish the disputed domain name from the Complainant’s registered trademark and is disregarded when comparing the disputed domain name with the Complainant’s trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the TOPSOLID trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the TOPSOLID trademark since at least the year 2013. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is identical to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. (See E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095.) To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith.
Having regard to the evidence submitted by the Complainant, in particular the website the Respondent operated under the disputed domain name, the Panel finds that the disputed domain name was registered and used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant. The website the Respondent operated showed the trademark of the Complainant and stated that the operator of the website is the authorized agent of the Complainant in China. The Respondent’s actions especially those misleading Internet users to associate the Respondent with the Complainant therefore constitute bad faith registration and use of the disputed domain name. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the respondent’s bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.) The present case falls into such appropriate circumstances where the disputed domain name initially resolved to an active webpage where the Respondent misrepresented itself as an agent of the Complainant and used the Complainant’s registered trademark without authorization.
Based on the evidence that was presented to the Panel, including the Complainant’s registered trademark, the use of the Complainant’s trademark in a website under the disputed domain name, the misleading of Internet users to believe the Respondent’s website is affiliated with the Complainant, the later passive use of the disputed domain name and the Respondent’s failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: November 28, 2016
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