The Complainant is Harboes Bryggeri A/S of Skaelskoer, Denmark, represented by PATRADE A/S, Denmark.
The Respondent is BEARBEER and Xu Fei (Frank), both of Laizhou, Shandong, 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 November 22, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 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 November 28, 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 Complainant filed an amended Complaint.
The Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding on November 28, 2017. On the same day, the Complainant requested in the amended Complaint that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on November 30, 2017. On the same day, the Complainant submitted further comments in support of its language request. On December 1, 2017, the Respondent submitted further comments in support of its language request.
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 of the Complaint in both English and Chinese, and the proceedings commenced on December 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017. The Respondent sent email communications to the Center on November 24, 29, and 30, 2017 regarding the proceeding. The Response was filed in Chinese with the Center on December 25, 2017. On January 10, 2018, the Complainant submitted a supplemental filing in English.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 24, 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
The Complainant is a Danish brewer. Its beer is sold in many jurisdictions around the world in retail stores and online. Sales of the Complainant's BEAR BEER in China reached 17,493 hectoliters in 2016. The Complainant is the registrant of multiple trademark registrations including international trademark registration number 981904 for BEAR BEER registered from September 29, 2008, designating various jurisdictions. The Complainant is the registrant of international trademark registration number 1040527 for BEAR BEER and device, registered from April 23, 2010, designating various jurisdictions. Protection of this mark was refused in China in 2011 due to similarity with the prior trademark 白熊啤酒 (translation: "White Bear Beer"). The Complainant is also the registrant of Chinese trademark registration numbers 11588510 and 11588511 for 哈尔博绿熊啤酒 and 哈尔博棕熊啤酒respectively, (translations: "Harboe Green Bear Beer" and "Harboe Brown Bear Beer", respectively), both registered from April 14, 2014. All these trademarks registrations specify beer in class 32.
The Respondent BEARBEER is the current registrant of the disputed domain name, according to the Registrar's confirmation email. The Respondent Xu Fei, also known as Frank Xu, was previously named as the registrant of the disputed domain name in the Registrar's WhoIs database. In this decision, "the Respondent" refers to either one or both of the Respondents, except as otherwise indicated.
According to evidence provided by the Complainant, the disputed domain name was registered on February 21, 2010 and acquired by "xu fei" on March 26, 2017. On March 31, April 5 and April 24, 2017, the Respondent Xu Fei sent emails to the Complainant advising it to contact him if it intended to purchase the disputed domain name. The registrant name was changed to "FRANK" on October 20, 2017 and again to "BEARBEER" on or before November 24, 2017. The disputed domain name does not resolve to any active website and is passively held.
A third party filed Chinese trademark applications numbers 27695264 and 27694021, both for BEARBEER, on November 24, 2017. The trademark applications were filed pursuant to an agency contract signed on behalf of the applicant by Xu Fei. The trademark applications specify goods in class 31 including unprocessed materials and feed, and services in class 35 including exhibition of goods and advertising, respectively. These trademark applications are currently pending. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complainant's BEAR BEER trademark. The Complainant first also registered a trademark that contained the elements "BEAR BEER" in Estonia in 1996 when it registered a device containing the words "BEAR BEER, HARBOE, BREWED SINCE 1883", but that registration has since expired.
The Respondents have no rights or legitimate interests in respect of the disputed domain name. Neither of the Respondents has been authorized to use the Complainant's registered trademarks. There is no evidence that the Respondents or their affiliates are known as BEAR BEER or have products or services by this name. The disputed domain name resolves to a landing page with no substantial material that mainly show the Respondents' interest in reselling the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Within days of becoming the registrant of the disputed domain name, the Respondent Xu Fei began contacting the Complainant offering to sell it. Until at least July 22, 2017, the disputed domain name was offered for a price of USD 4000, which exceeds out-of-pocket expenses directly related to the disputed domain name. The email address formerly associated with the disputed domain name was also associated with other domain names including four that incorporated well-known trademarks. B. Respondent
The disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. The main elements of the disputed domain name are the words "bear" and "beer" whereas the main element of the Complainant's Estonian trademark was a drawing of a white bear, making them clearly distinguishable. The Complainant's BEAR BEER wordmark was only registered in 2008, almost three years after the disputed domain name was originally registered. The Complainant's other trademarks are all irrelevant as they either have nothing to do with BEAR BEER or they postdate the registration of the disputed domain name.
The Respondent has rights or legitimate interests in respect of the disputed domain name. The Respondent only received notice of the Complaint from the Center on November 24, 2017, by which time it had already instructed its agent on November 2, 2017 to apply to the Chinese trademark office for the trademark BEARBEER in class 31 (unprocessed materials, feed, etc.) and class 35 (exhibition of goods, advertising, etc.). This evidences that, before any notice to the Respondent of the dispute, the Respondent made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. According to the WIPO Overview 3.0, section 2.2, "If the Respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant's rights in that word, then it has a legitimate interest." In the present case, "bear" and "beer" are both generic words and the Respondent has not taken advantage of the Complainant's trademark. The Respondent is making a legitimate noncommercial use of the disputed domain name. Up to the date of the Response, the Respondent has not created a website for a business identical or similar to the Complainant's business for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.
The disputed domain name has not been registered and is not being used in bad faith. The disputed domain name was originally registered in 2005, long before the Complainant's BEAR BEER trademark. The disputed domain name is composed of two similarly pronounced words that make a slightly playful combination in way that is quite common. Many Chinese microblogger usernames incorporate these two words when the users have no connection with the Complainant and have never heard of the Complainant's trademark and neither wish to publicize or harm the Complainant's business. Many other domain names are also composed of two similarly pronounced words. In these circumstances, the Respondent has every reason and possibility to register and use the disputed domain name without needing to understand that it is the Complainant's trademark.
The disputed domain name was lawfully transferred to the Respondent, who paid the appropriate price to the previous registrant. The Respondent has not sold, rented, or otherwise transferred the disputed domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. The Complainant and the Respondent are not competitors and the Respondent has no intention to harm the Complainant's business. The Respondent's use of the disputed domain name is not an intentional attempt to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
Attempts to sell the disputed domain name do not necessarily mean that the Respondent registered or is using the disputed domain name in bad faith. According to paragraph 4(b)(i) of the Policy, only circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration demonstrate the existence of bad faith. In this case, the Respondent's principal purpose is not to sell the disputed domain name to the Complainant or its competitor; hence there is no bad faith. Passive holding does not necessarily demonstrate bad faith registration or use either. The time needed to establish a website from the time of registration of a domain name can be days or years. Even if the Complainant has long promoted its BEAR BEER brand and has quite a strong reputation, as it claims, it failed to register the disputed domain name itself and, accordingly, the Respondent was entitled to believe that registration of the disputed domain name would not infringe the Complainant's rights. The Complainant's 2011 Chinese trademark application for哈尔博 was unsuccessful and that is not a registered trademark in China so the reputation of this brand in China is questionable. 6. Discussion and Findings 6.1 Supplemental Filing
The Complainant made an unsolicited supplemental filing on January 10, 2018. Paragraph 10(d) of the Rules provides that "[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
The Complainant made its supplemental filing in order to express its disagreement with certain contentions and arguments presented in the Response. The Panel sees no exceptional circumstances in that explanation that would justify permission to make a supplemental filing. Although the Panel observes that certain arguments in the supplemental filing concern Chinese trademark applications that were only filed after the original Complaint, the Panel considers that the evidence regarding those trademark applications annexed to the Response is already clear on its face.
In these circumstances, the Panel considers it unnecessary to rule on the admissibility of the supplemental filing and will disregard it. 6.2 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 it believes that the Respondent has communicated in English with the Complainant, that the disputed domain name used to resolve to a website partly in English, that the Respondent's job title is in English and that the Respondent works for a company with a website in English, that the Complainant has no knowledge of Chinese and that translation of the Complaint would create an unnecessary burden for the Complainant.
The Respondent requests that the language of the proceeding be Chinese. His main arguments are that the registration agreement is in Chinese, that previous correspondence written in English does not demonstrate familiarity with that language, that he has only limited English language knowledge and it would be unfair to him if he had to read the Complaint and all annexes in English.
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 in this proceeding the Complaint was filed in English and the Response was filed in Chinese. However, the Respondent's emails to the Complainant prior to this proceeding were written in English only, while the Respondent's first two emails to the Center were written in English and Chinese and indicated his name, job title and company name in English only together with the address of a company website that is entirely in English. The contents of the Response itself demonstrate that the Respondent has clearly understood the Complaint. From this evidence it is reasonable to conclude that the Respondent understands English. Further, the Respondent's arguments address each element of the Policy in detail. The Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas allowing the Respondent to file the Response in Chinese does not create unfairness to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept the Response filed in Chinese without a translation. 6.3 Substantive Issues
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
On the basis of the evidence submitted, the Panel finds that the Complainant has rights in the BEAR BEER trademark. The Complainant's rights by virtue of international trademark registration number 981904 for BEAR BEER arose in 2008, prior to the registration of the disputed domain name in 2010 and prior to the acquisition of the disputed domain name by the Respondent from an unrelated party in 2017.
The Respondent notes that a domain name identical to the disputed domain name was registered in 2005. However, the Panel notes that that domain name registration, by a further unrelated party, expired in 2009. The disputed domain name in this proceeding was a new registration and the status of the Complainant's rights in its trademark as at the date of the earlier registration is irrelevant (especially under the first element).
The disputed domain name wholly incorporates the Complainant's BEAR BEER trademark, except that the space between the words is omitted for technical reasons. The only additional element is the Top-Level Domain ("TLD") suffix ".com" but a TLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of assessing confusing similarity. 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 and third circumstances above, the Complainant has demonstrated that the disputed domain name does not resolve to any active website. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
As regards the second circumstance above, the amended Complaint names two Respondents, one of which is "BEARBEER". This is the current registrant name but there is no evidence that it is a separate entity from the previous named registrants, that is, Xu Fei (also known as Frank Xu) and later FRANK. Rather, the contact address and telephone number for Xu Fei (from October 3, 2017), FRANK, and BEARBEER are the same. The Panel considers that the most likely explanation of the evidence is that so-called "BEARBEER" is Xu Fei. Yet, apart from the contact name in the disputed domain name registration, there is no evidence on the record that the Respondent has been known by the disputed domain name and no evidence at all that the Respondent has been commonly known by that name.
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 submits two Chinese trademark applications for BEARBEER. However, the eventual outcome of pending trademark applications is unknown and they therefore confer no rights to a domain name for the purposes of the Policy. In any case, the trademark applications are not filed in the name of the Respondent.
The Respondent argues that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. However, the evidence provided in support of this submission merely consists of two trademark applications for BEARBEER filed in the name of a third party. The only evidence of the nature of the goods or services in connection with which any trademark might be used is the specifications in the trademark applications themselves but even that meagre evidence is contradicted by the Respondent's argument that he is using the disputed domain name in its generic sense. The nature of the proposed business for which the Respondent claims to have begun making preparations is unclear, as are the types of goods or services that it will supposedly offer. In these circumstances, it is unnecessary for the Panel to consider the relationship between the trademark applicant and the Respondent, or whether instructions to file the trademark applications were given prior to the date on which the Respondent received notice of this dispute. The Panel finds the evidence on the record of this proceeding inadequate to demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent also argues that he is using the disputed domain name in a generic sense without intending to take advantage of the Complainant's rights. However, while "bear" and "beer" are both dictionary words, there is no evidence that the Respondent is using either of them in connection with any dictionary meaning.
For these reasons, the Panel finds that the Respondent has failed to rebut the Complainant's prima facie case.
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 shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the issue is whether the Respondent registered the disputed domain name in bad faith. The relevant date for this assessment is March 26, 2017, when Xu Fei acquired the registration. Although the registrant name was later changed, twice, the Panel finds that the registrant remains Xu Fei for the reasons given in Section 6.3.B above. The disputed domain name was acquired by the Respondent several years after the Complainant registered its trademark. The disputed domain name wholly incorporates the Complainant's BEAR BEER trademark but for the space between the words, and it adds no other element besides a TLD suffix, which is a technical requirement of registration. Although the Complainant's Chinese trademark application for BEAR BEER was refused in 2011, due to similarity with a prior registered trademark, the evidence shows that the Respondent actually knew of the Complainant's trademark at the time that he acquired the disputed domain name because he contacted the Complainant within days of its acquisition regarding the Complainant's possible purchase of it.
The Respondent has provided evidence of various microblogger user names in China that incorporate the words "beer" and "bear" and other domain names incorporating pairs of similar words, but the Panel does not consider it plausible that the Respondent's decision to acquire a domain name wholly incorporating the Complainant's trademark was coincidental given the speed with which he contacted the Complainant afterwards. Moreover, the Panel notes that the Respondent Xu Fei's original contact email address for the disputed domain name in the Registrar's WhoIs database is associated with at least four other domain names that incorporate third party trademarks. In these circumstances, the Panel finds that the Respondent knew of the existence of the Complainant and its trademark at the time that he acquired the disputed domain name. The Respondent argues that he was entitled to believe that the registration of the disputed domain name would not infringe the Complainant's rights. However, the Panel notes that the Complainant never waived its rights in its trademark and, besides, its trademark was unavailable in the ".com" domain for long periods. In these circumstances, the Panel finds that the disputed domain name was registered in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the disputed domain name wholly incorporates the Complainant's BEAR BEER trademark, but for the space between the words, with no additional elements besides the TLD suffix. The Complainant has made considerable sales of its BEAR BEER brand beer in recent years in China, where the Respondent is located, which demonstrates that its trademark has a considerable reputation with respect to beer in that country, even though the Complainant does not own a Chinese trademark registration for BEAR BEER. The Respondent provides no evidence regarding his proposed use of the disputed domain name besides two very recent trademark applications by a third party, no clear evidence of his proposed business or its goods and services, and no explanation as to why the applicant applied for a trademark that refers to beer.
The Panel does not find that the Respondent offered to sell the disputed domain name for USD 4000 as the evidence on record only shows that the disputed domain name resolved to a landing page that offered it for sale at that price prior to its acquisition by the Respondent. However, while not conclusive, the Panel notes that the Respondent repeatedly offered to sell the disputed domain name to the Complainant as soon as he acquired it, suggesting that the Respondent's underlying intention was to profit from the sale of the disputed domain name to the Complainant. The Respondent argues that selling the disputed domain name was not his primary purpose within the meaning of paragraph 4(b)(i) of the Policy. However, the Panel notes that the circumstances in paragraph 4(b) are not exhaustive examples of bad faith registration and use and, in any case, the timing of the Respondent's email communications with the Complainant, and the lack of subsequent active use of the disputed domain name, indicate that selling the disputed domain name was indeed his primary purpose in acquiring it. The Panel finds that the disputed domain name is being used in bad faith.
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: February 7, 2018
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