The Complainant is Tecsis GmbH of Offenbach, Germany, represented by rwzh Rechtsanwälte Wachinger Zoebisch Partnerschaft mbB, Germany.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Vicent Zuo, Suzhou Sindy Automation Equipment Co., Ltd. of Suzhou, Jiangsu, China. 2. The Domain Name and Registrar
The disputed 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 July 26, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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 the Complainant on August 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint in English and requested that English be the language of the proceeding on August 2, 2017. The Respondent requested that Chinese be the language of the proceeding on August 6, 2017.
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 the Respondent in English and Chinese of the Complaint, and the proceeding commenced on August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Response was filed in Chinese with the Center on August 28, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 15, 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.
On September 22, 2017, the Panel issued a Panel Order requesting the Complainant to provide copies of the registration certificates for two of its relevant trade mark registrations. On September 25, 2017 and September 29, 2017, the Complainant provided copies of the requested trade mark registration certificates to the Center, in compliance with the Panel Order. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Germany and the owner of several registrations for the trade mark TECSIS (the “Trade Mark”), used and registered in respect of sensors and measuring apparatus, including international registration No. 870980 registered on October 4, 2005 and designating China. The Complainant is in the business of sensors and measuring apparatus. B. Respondent
The Respondent is a company incorporated in China. C. The Disputed Domain Name
The disputed domain name was registered on April 16, 2009. D. The Website at the Disputed Domain Name
The disputed domain name is resolved to the Respondent’s website (the “Website”) which promotes and offers for sale measurement and control solutions under the trade mark SINDY. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent contends that the disputed domain name has been legally registered and used by the Respondent for eight years; the Respondent was authorised by the Complainant’s representative office in China to be a distributor and sales partner in China of the Complainant’s products under the Trade Mark; the Respondent has obtained strong publicity for the Trade Mark and has improved the Complainant’s brand in China by selling a large number of the Complainant’s products in China for nine years; and, accordingly, the Respondent has not registered and used the disputed domain name in bad faith.
The Respondent further contends that the Complainant suddenly stopped supplying the Respondent with the Complainant’s products in June 2017 and asked the Respondent to unconditionally transfer the disputed domain name to the Complainant.
The Respondent has also exhibited to the Response nine English language letters written by the Respondent for the Consulates General of China in Germany and in Singapore in 2010, 2011 and 2012 requesting the issuance of business visas to enable the representative and product manager of the Complainant to travel to China (the “Letters”). 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 unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules 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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for the following reasons:
(1) The Registration Agreement is published in both English and Chinese;
(2) Given the fact that the agreement is published in English, the circumstances warrant that the proceeding be conducted in English;
(3) The disputed domain name is in the English language and the contents of the Website are mainly in English;
(4) These circumstances present strong evidence that the Respondent is conversant and proficient in the English language.
The Respondent has requested that the language of the proceeding be Chinese, for the following reasons:
(1) The Respondent’s English is not good and the Respondent cannot communicate in English;
(2) The Registrar is located in China and the language of the Registration Agreement is Chinese; and
(3) The Website is a Chinese language website.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel notes that, according to the screenshot filed with the Complaint, the Website is predominantly a Chinese language website and not predominantly an English language website, as claimed by the Complainant (although it does contain the English language wording “Your Partner for Measurement and Control Solutions”). The Respondent has however exhibited to the Response the Letters which were written by the Respondent in flawless English. Such evidence demonstrates that the Respondent is proficient in English.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should this Decision be rendered in English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English. 6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
Although not ultimately determinative given the evidence put before the Panel by both parties, the Panel considers it somewhat curious that the Complainant chose not to inform the Panel of the history of the relationship between the parties, including the fact the Respondent was previously a distributor of the Complainant’s products under the Trade Mark in China. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety, together with the non-distinctive word “china”, which does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website which, without the Complainant’s authorisation, promotes and offers for sale the Respondent’s measurement and control services under the trade mark SINDY and in direct competition with the Complainant’s similar products offered under the Trade Mark.
The Respondent has not submitted any evidence to support its contention that the Website has been used to offer for sale the Complainant’s products under the Trade Mark. In any event, even if at some stage the Website might have been used to offered for sale the Complainant’s products under the Trade Mark (whether under authorisation from the Complainant’s representative office in China, or otherwise), there is no evidence before the Panel to show that:
(1) The Respondent was actually offering the Complainant’s goods or services at issue;
(2) The Respondent was using the Website to sell only the Complainant’s trademarked goods or services;
(3) The Website was accurately and prominently disclosing the Respondent’s relationship with the Complainant; and
(4) The Respondent was not trying to “corner the market” in domain names that reflect the Trade Mark,
(see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s clearly commercial and unauthorised use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 10, 2017
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