Complainant is Cartier International A.G. of Bellevue, Switzerland, internal-represented through its affiliate.
Respondent is Zheng Jing of Fuzhou, Fujian, China, self-represented. 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 February 16, 2017. On February 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 20, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on February 22, 2017. Respondent requested that Chinese be the language of the proceeding on the same day.
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 in English and Chinese Respondent of the Complaint, and the proceedings commenced on February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. The Response was filed with the Center on March 18, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on March 22, 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 A. Complainant
Complainant, Cartier International A.G., is a company incorporated in Bellevue, Switzerland. Found in 1847, Cartier is a world famous luxury jeweler and watch manufacturer. It operates close to 300 boutiques in 125 countries across six continents worldwide. Cartier is ranked number 58 among the Inter-brand’s Top 100 Best Global Brands for 2014 and is one of the top five best luxury brands.
Complainant has exclusive rights in the CARTIER marks. Complainant is the exclusive owner of numinous CARTIER trademarks worldwide, including an international trademark registered since January 4, 1966 (international trademark registration number 307293), and the Chinese trademark registered since December 15, 1983 (the Chinese trademark registration number 202386) (Annex 4 to the Complaint). Complainant also owns and operates the domain name , which contains CARTIER mark in entirety (Annex 3 to the Complaint). B. Respondent
Respondent is Zheng Jing, apparently an individual residing in Fuzhou, Fujian, China. The disputed domain name was registered on September 12, 2016. Complainant has provided evidence that the disputed domain name previously resolved to a website indicating that the disputed domain name is under construction, with a sale price of USD 58,888, and pictures of a watch and a necklace. The pictures of a watch and a necklace have since been removed as well as the sale price and currently feature a picture of an automobile, among others. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s CARTIER trademarks. It fully incorporates the key component of the CARTIER marks, namely, the term “cartier”, without alteration.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent contends, although the term “cartier” in the disputed domain name is identical to Complainant’s CARTIER trademark, Internet visitors will not necessarily confuse the disputed domain name with Complainant’s CARTIER trademarks since the term “cartier” has multiple meanings (Annexes 1 and 2 to the Response).
Respondent contends that the use of the disputed domain name by Respondent is a legitimate noncommercial use and is not intended to be misleading for commercial gain.
Respondent contends that the disputed domain name was not registered or is being used in bad faith.
Respondent contends that Complainant’s conduct constitutes reverse domain name hijacking. 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 specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The content of the website resolved by the disputed domain name clearly features knowledgeable use of the English language.
(b) The wording in the content featured in the website resolved by the disputed domain name targets English-speakers.
(c) Based on this evidence, using English as the language of the Complaint/proceedings would not place an undue burden on Respondent.
(d) Complainant is not acquainted with the Chinese language, and being forced to translate the materials of the proceedings into Chinese would disadvantage Complainant.
Respondent objected to the use of English as the language of the proceeding. Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(a) Respondent is a Chinese legal citizen, and Respondent’s native language is Chinese.
(b) Respondent does not understand any other languages.
(c) Respondent cannot read or understand anything which has been written in English either in emails or attachments.
Paragraph 11(a) 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters and is registered in the new generic Top-Level Domain (“gTLD”) space comprise of the English word “shop” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant; (a) the disputed domain name is registered in Latin characters and an English word, rather than Chinese script; (b) The gTLD of the disputed domain name is “.shop”. It is an English term; (c) The disputed domain name resolves to a website that includes both English and Chinese language content. It targets both Chinese- and English-speakers; (d) Although Respondent submitted the Response in Chinese, Respondent has shown his/her capability to understand and use English. In the Response, Respondent referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions as well as a few of previous UDPR decisions, which were written in English; (e) The three Annexes to the Response are all in English language; (f) the Center has notified Respondent of the proceeding in both Chinese and English; (g) the Center informed Respondent that it would accept a response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantive Issues
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the CARTIER marks acquired through registration. The CARTIER international marks have been registered since January 4, 1966, and the Chinese trademark has been registered since December 15, 1983 (Annex 4 to the Complaint).
The disputed domain name comprises the CARTIER mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the gTLD suffix “.shop” to the CARTIER marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (WIPO Overview 2.0, paragraph 1.2).
Thus, the Panel finds that disregarding the gTLD suffix “.shop”, the disputed domain name is identical to the CARTIER marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
According to the Complaint, Complainant, found in 1847, is a world famous luxury jeweller and watch manufacturer. It operates close to 300 boutiques in 125 countries across six continents worldwide. Complainant has rights in the international CARTIER marks since 1966 and the Chinese CARTIER marks since 1983, which precede Respondent’s registration of the disputed domain name (2016).
Moreover, Respondent is not an authorized dealer of Cartier-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “Cartier” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CARTIER marks or to apply for or use any domain name incorporating the CARTIER mark and Respondent has, through the use of an identical domain name and similar webpage contents, created a likelihood of confusion with the CARTIER marks. By contrast, Respondent previously used the website resolved by the disputed domain name to offer to sell the disputed domain name for USD 58,888 (Annex 5 to the Complaint);
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on September 12, 2016, long after the CARTIER marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s CARTIER marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality offering to sell the disputed domain name with “Domain Price: USD 58,888” (as introduced above).
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the CARTIER marks with regard to its products and services. Complainant, founded in 1847, is a world famous luxury jeweler and watch manufacturer. It operates close to 300 boutiques in 125 countries across six continents worldwide. Cartier is ranked number 58 among the Inter-brand’s Top 100 Best Global Brands for 2014 and is one of the top five best luxury brands. It is not conceivable that Respondent would not have had actual notice, of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2016) particularly noting that Respondent has included pictures of products in the area Complainant’s operates.
Moreover, Respondent offered to sell the disputed domain name via the website resolved by the disputed domain name for USD 58,888, which likely exceeds documented out of pocket costs associated with the dispute domain name.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
Complainant also has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location” (in this case the website is “Under Construction”).
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the CARTIER marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website especially since the disputed domain name is identical to Complainant’s marks. Respondent contended that the website stated that “It is a general term, non-commercial and private & personal domain, the domain itself and its owner is not connected or affiliated with any company, organization or trademark…”, and therefore, the disputed domain name was not registered or is being used in bad faith. However, the website design and the background colour of the website resolved by the disputed domain name were very similar with the website content of Complainant’s official website “www.” (Annexes 3 and 5 to the Complaint). In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the CARTIER marks. Moreover, as mentioned above, Respondent offered to sell the disputed domain name for USD 58,888 via the website resolved by the disputed domain name.
The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is identical to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of sufficient evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: March 30, 2017
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