The Complainant is Tyco International Services GmbH of Schaffhausen, Switzerland, represented by Accent Law Group, Inc., United States of America (“United States”).
The Respondent is Zhou Chuanlin of Shanghai, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2017. On January 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2017, 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 January 16, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. 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 proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. The informal Response was filed with the Center on February 12, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on February 17, 2017. 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 a joint venture formed by Tyco and TE Connectivity. Tyco designs and manufactures fluid valves and fire suppression systems. TE Connectivity sells electronic connectors, components and systems. The Complainant owns multiple registrations of trademarks in multiple jurisdictions, including Chinese trademark registration number 1729948 for TYCO, registered from March 14, 2002 and specifying goods in class 7 including “pumps (machine) actuators; valves (parts of machines); air delivering valves; air switching valves; check valves (non-metallic)”, and Chinese trademark registration number 1983613 for TYCO, registered from August 7, 2002 and specifying goods in class 9 including “automatic valves used in connection with fire extinguishing equipment”. Both registrations remain in effect. Tyco also operates official websites at the domain names and where it provides information about itself and its products and services.
The Respondent appears to be an individual located in Shanghai, China. The Respondent is the registrant of the disputed domain name, which was created on August 13, 2016. The disputed domain name resolves to a website of a company named 上海泰科阀门有限公司 / Shanghai Taike Valve Co. Ltd. The website describes that company as a Sino-foreign joint venture that produces and sells many different kinds of metal valve products. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s TYCO trademark. The disputed domain name merely adds the term “valve” and an extra letter “v” along with the “.com” generic Top-Level Domain (g“TLD”) to the Complainant’s TYCO mark, thereby making visitors to its websites think that they are being linked to one of the Complainant’s legitimate sites. The fact that the Complainant offers valve products and services to its customers makes this association all the more likely.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The website to which the disputed domain name resolves offers products that do not originate from, but that are identical to, those offered by the Complainant, namely valves. These offerings divert visitors - likely the Complainant’s customers and potential customers - to the Respondent’s website which is not, in any way, associated with, licensed, or approved by the Complainant. Upon information and belief, the Respondent is not commonly known by the disputed domain name nor the name “Tyco”. The term “taike” looks and is pronounced differently from the TYCO mark. The Respondent is using the disputed domain name to confuse and misleadingly divert consumers, or to tarnish the TYCO marks as part of an ongoing commercial enterprise based upon trademark infringement.
The disputed domain name was registered and is being used in bad faith. The Respondent intentionally used the TYCO mark without consent from the Complainant. The Respondent was on actual notice of the Complainant’s rights in the TYCO marks through the Complainant’s extensive, global use of those marks which long predate the creation of the disputed domain name. TYCO is a coined term and the disputed domain name makes no sense on its own other than as a cybersquatted name. It could only have been copied from the Complainant’s TYCO mark and, based upon its familiarity with the industrial valve industry, it is clear that the Respondent is attempting to capitalize on the use of the term “valve” in relation to the Complainant’s products and services. B. Respondent
The Respondent states in his informal Response that the disputed domain name was purchased on August 13, 2016, that it is currently in use and that he refuses any form of transfer or change. 6. Discussion and Findings 6.1 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 Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is composed of words that appear only in the English language, that the website to which the disputed domain name displays phrases in English, that the Respondent exports to English-speaking countries and that the Complainant communicates in English and would be prejudiced if it were required to translate the Complaint into Chinese. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and the informal Response in Chinese. Having received notice of the Complaint in Chinese and English, the Respondent has expressed no interest in participating in this proceeding beyond submitting the informal Response. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel considers that accepting the informal Response in Chinese causes no prejudice to the Complainant.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. However, the Panel will accept the informal Response submitted in Chinese. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the TYCO trademark. The disputed domain name wholly incorporates the Complainant’s TYCO trademark as its dominant element.
The additional elements in the disputed domain name include the dictionary word “valve” and the letter “v”. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. If anything, the inclusion of the word “valve” increases association with the Complainant’s trademark because it describes a product in connection with which the Complainant uses its TYCO trademark. The single letter “v” after the word “valve” is too minor to dispel the confusing similarity of the disputed domain name with the Complainant’s trademark.
The only other additional element is the gTLD “.com”. A gTLD suffix is generally disregarded in assessing the confusing similarity of a domain name to a trademark. See 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.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark 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 trademark or service mark at issue.
As regards the first circumstance above, the disputed domain name is being used with a website that sells valves. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s TYCO trademark. The Complainant informs the Panel that the Respondent’s website is not in any way associated with, licensed or approved by the Complainant. The Respondent observes that he acquired the disputed domain name on August 13, 2016. However, the mere registration of a domain name does not establish rights or legitimate interests for the purposes of the Policy. Otherwise every registrant would have a valid defence and no complaint of abusive registration could ever succeed. See Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. The Panel notes that “Tyco” is a coined term. Nothing on the website indicates a legitimate reason why the Respondent would choose to register a domain name including the name “Tyco”. All these facts indicate that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services covered by the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance above, the disputed domain name resolves to the website of a company named 上海泰科阀门有限公司 / Shanghai Taike Valve Co. Ltd. “Taike” is not visually or aurally the same as “Tyco”. If the Respondent had intended to register his company’s name as a domain name, he would have chosen a domain name that included the term “Taike”. Even though the Complainant translates its TYCO trademark as 泰科 (Pinyin: Taike), the evidence shows that the Respondent’s company name is not “Tyco”. Rather, it all the more seems that the Respondent is intending to confuse users into believing that a connection to the Complainant exists. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance above, the disputed domain name resolves to a commercial website. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not demonstrate that he had any rights or legitimate interests in the disputed domain name for the purposes of the Policy.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) 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.”
The Respondent registered the disputed domain name in 2016, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The Complainant’s parent company has made extensive use of the TYCO trademark. The top search result for the term “tyco” in the Baidu Internet search engine is the Complainant’s official website. The disputed domain name incorporates the Complainant’s TYCO trademark in its entirety as its dominant element. “Tyco” is a coined term. Nothing on the website to which the disputed domain name resolves indicates a reason why the Respondent would choose to register the term “Tyco” other than to target the reputation of the Complainant’s trademark. Rather, the content of the website indicates that the Respondent operates in the same industry as the Complainant and could therefore be expected to be aware of the TYCO trademark. This all indicates to the Panel that the Respondent was aware of the Complainant and its TYCO trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s TYCO trademark, in connection with a commercial website that sells valves. These valves compete with those of the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. This use is intentional and for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 disputed domain name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: March 1, 2017
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