The Complainant is British Approvals Service for Cables of Crownhill, Milton Keynes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by EMW Law LLP, United Kingdom.
The Respondent is Randycheng, Shanghai Zexi Information Technology Co., Ltd. of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 November 23, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 27, 2017, the Complainant confirmed its request that English be the language of the proceeding. On November 28, 2017, the Respondent replied to the Complainant’s email regarding the language of the proceeding but did not expressly object to the Complainant’s language request.
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 both Chinese and English, and the proceeding commenced on December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. The Respondent did not submit any response save for its email communication on November 28, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on December 22, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 10, 2018. 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
The Complainant is a private company limited by guarantee without share capital and incorporated in the United Kingdom, and a provider of certification services for manufactured cabling products under the trade mark BASEC (the “Trade Mark”) since 1974.
The Complainant is the owner of registration No. 00002528271 in the United Kingdom for a word and stylized logo version of the Trade Mark, registered since May 7, 2010. B. Respondent
The Respondent is apparently a company incorporated in China. C. The Disputed Domain Name
The disputed domain name was registered on April 8, 2016. D. Use of the Disputed Domain Name
Prior to the commencement of this proceeding, the disputed domain name was resolved to an English language website promoting, under the Trade Mark, the cabling products of a company incorporated in the United Kingdom and with no affiliation with the Complainant, Basec (UK) Co Ltd (the “Website”).
As at the date of this Decision, the disputed domain name is no longer being used. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not file a response. In its Chinese language email sent to the Center regarding the language of the proceeding, the Respondent stated as follows:
“Hello. This domain was registered by my company on behalf of a client. Is there a problem?” 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.
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 several reasons, including the fact the Website is an English language website.
The Respondent, having received notice of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding and did not file a response.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judiciously 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 considers that the English language Website indicates that the Respondent is conversant 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 English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be 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. 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 incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the non-distinctive and commonly-used acronym for the United Kingdom, “uk”.
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 authorized, 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 it 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 previously been used in respect of the Website, which promoted the cabling products of “Basec (UK) Co Ltd”, and made unauthorized use of the Trade Mark.
The Complainant’s solicitors sent a cease-and-desist letter to Basec (UK) Co Ltd on September 14, 2017, requesting, amongst other things, the transfer of the disputed domain name to the Complainant. The Complainant’s solicitors did not receive any response prior to the filing of the Complaint herein.
According to the company search for Basec (UK) Co Ltd filed with the Complaint, this company was incorporated on January 19, 2015, and, as at October 11, 2017, it was dormant.
There has been no evidence adduced to show that the Respondent is 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.
In all the circumstances, 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 manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
In all the circumstances, the Panel considers that the failure of “Basec (UK) Co Ltd” to respond to the Complainant’s cease-and-desist letter amounts to further evidence in support of a finding of bad faith.
At some stage following the commencement and notification of this proceeding, the Respondent has caused the Website to be taken down. The Panel finds that such conduct amounts to further grounds in support of a finding of bad faith.
For the foregoing reasons, the Panel finds 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: January 22, 2018
Full & Egal Universal Law Academy