Complainant is SUUNTO OY of Vantaa, Finland, represented by Nameshield, France.
Respondent is duan xiaosong, duan xiao song of Shenzhen, Guangdong, China / Nexperian Holding Limited of Hangzhou, Zhejiang, China, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 7, 2017.
On April 6, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On April 6 and April 7, 2017, emails in Chinese were received from Respondent. Respondent requested the Center to verify the information of Complainant, but did not comment on the language of the proceeding. On April 6, 2017, Complainant confirmed its request that English be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Respondent in both Chinese and English of the Complaint, and the proceedings commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Response was filed with the Center on May 2, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on May 8, 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, SUUNTO OY, is a company incorporated in Vantaa, Finland. Founded in 1936, Complainant is the leader in sports watches and watches, for running, trail and other sports. Complainant is selling watches and official straps for sport all over the world through its website (Annex 3 to the Complaint).
Complainant has exclusive rights in the SUUNTO marks. Complainant is the exclusive owner of numerous SUUNTO trademarks worldwide, including the United States of America (“US”) trademark registered since March 30, 1976 (the US Trademark registration number 1036637), the European Union (“EU”) trademark registered since March 4, 2008 (the EU registration number 005858527), and International trademark registered since October 1, 2004 (the International trademark registration number 870072) (Annex 5 to the Complaint). Complainant also owns and operates domain names, which contain SUUNTO mark in its entirety, such as which is also accessible in Chinese language (Annex 4 to the Complaint). B. Respondent
Respondent is duan xiaosong, duan xiao song, apparently an individual residing in Shenzhen, Guangdong, China / Nexperian Holding Limited, apparently a Chinese company incorporated in Hangzhou, Zhejiang, China. The disputed domain name was registered on April 16, 2015, currently resolving to a website selling products under Complainant’s trademark and indicating that the website is the official website of Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s SUUNTO trademarks. The disputed domain name includes SUUNTO mark in its entirety. The addition of the generic term “strap” at the end of the disputed domain name as well as the generic Top-Level Domain (“gTLD”) “.com” are not sufficient to eliminate the confusion of similarity.
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 replied in brief to Complainant’s contentions. Respondent only replied via three emails and contended:
Respondent has registered the disputed domain name and sells the SUUNTO branded and other branded replacement straps. Respondent has not counterfeited the SUUNTO branded products.
Respondent sells the products, which it obtains from official channels of procurement. The products are not fake or shoddy.
The registration of the disputed domain name by Respondent is not in bad faith.
Respondent appeared to claim 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 English language is the language most widely used in international relations and is one of the working languages of the Center;
(b) The disputed domain name is formed by words in Roman characters (ASCII) and not in Chinese script;
(c) Respondent can write and understand the English language, indeed, in the responses of the Cease and Desist letter (Annex 9 of the Complaint), English was used by him with good understanding;
(d) In order to proceed in Chinese, Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on Complainant which must be deemed significant in view of the low cost of these proceedings;
(e) Complainant contends that its international business is operated primarily in English and is not able to communicate in Chinese;
(f) The Complaint is written in English but the Center informed Respondent in Chinese and afforded Respondent the opportunity to do all of the above in Chinese.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
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 Finland, 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 (“suunto”) and English word (“strap”) and is registered in the gTLD space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual/company incorporated in China 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 “suunto”and English word “strap”, rather than Chinese script; (b) the gTLD of the disputed domain name is “.com” is in Latin characters; (c) the disputed domain name resolves to a website with English language content; (d) Respondent’s responses to the Cease and Desist letter sent by Complainant were written in English; (e) the Center has notified Respondent of the proceeding in both Chinese and English; (f) 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. Substantial 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 SUUNTO marks acquired through registration. The SUUNTO marks have been registered in the US since 1976 and internationally since 2004. The disputed domain name comprises the SUUNTO mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the suffix “strap” and the gTLD suffix “.com” to the SUUNTO marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. By contrast, it may increase the confusion because watch “strap” is one of major products of Complainant. In relation to the gTLD suffix, 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 “strap” suffix and the gTLD suffix “.com”, disputed domain name is identical to the SUUNTO 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 panel 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, founded in 1936, is the leader in sports watches and watches, for running, trail and other sports. Complainant is selling watches and official straps for sport all over the world through its website. Complainant has rights in the SUUNTO marks since 1976 in the US and 2004 internationally, which precede Respondent’s registration of the disputed domain name (2015).
Moreover, Respondent is not an authorized dealer of SUUNTO-branded products or services and moreover offering competing products for sale on its website. 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 “suunto” 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 SUUNTO marks or to apply for or use any domain name incorporating the SUUNTO mark and Respondent has, through the use of a confusingly similar domain name and its webpage contents, created a likelihood of confusion with the SUUNTO marks. Noting also that apparently the website implies that it is the official website of Complainant, potential partners and end users are led to believe that the website at the disputed domain name “www.” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not;
(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 April 16, 2015, long after the SUUNTO marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s SUUNTO 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 advertising, offering and selling purported SUUNTO and other products at the website “www.”.
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 online 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)(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 SUUNTO marks with regard to its products and services. Complainant, founded in 1936, is the leader in sports watches and watches, for running, trail and other sports. Complainant is selling watches and official straps for sport all over the world through its website. The website is also accessible in Chinese language. Complainant has rights in the SUUNTO marks since 1976 in the US and 2004 internationally. It is not conceivable that Respondent would not have been aware of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2015) particularly given that Respondent has used Complainant’s marks on its website.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
Complainant also has adduced evidence to show 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 online location”. 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 SUUNTO marks, the confusingly smiliar domain name, as well as the affiliation statement on the website mentioned above, 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 Respondent’s website. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the SUUNTO marks. Noting also the implication on the website that it is the official website of Complainant, potential partners and end users are led to believe that the website at the disputed domain name “www.” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not. 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 confusingly similar 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 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.
In the present circumstances, the Panel finds that a finding of reverse domain name hijacking is not warranted. 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: May 22, 2017
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