The Complainant is 13 Rattles, Inc. of New York, New York, United States of America (“USA” or “United States”), represented by Tucker & Latifi, LLP, USA.
The Respondent is Li Wei Wei of Weinan, Shanxi, China. 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 January 10, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2018, 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 January 16, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on January 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on March 5, 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 designer and manufacturer of clothing, footwear and accessories, sold under its trademark R13. The Complainant is the registered proprietor of United States Trademark, R13, Registration No. 3771061, registered on April 6, 2010; European Union Trademark, R13, Registration No. 015410814, registered on August 30, 2016; Turkish Trademark, R13, Registration No. 201346187, registered on May 22, 2013; and Canadian Trademark, R13, Registration No. TMA978024, registered on August 9, 2017.
The disputed domain name was registered on September 27, 2017. The disputed domain name resolves to a website which offers for sale clothing items under the R13 trademark at discounted prices and which may be counterfeit. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark R13 with the addition of the generic word “denim” and the generic Top-Level Domain (“gTLD”) “.top”.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its trademark and the latter is not commonly known by the disputed domain name. The Respondent cannot have a legitimate business reason for using the disputed domain name. The disputed domain name resolves to an online store which purports to sell the products of the Complainant at a discounted price but it which it appears are, in fact, counterfeit.
The disputed domain name has been registered and is being used in bad faith. The Respondent is attempting to create an impression of an affiliation with the Complainant to attract consumers to its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issue: Language of Proceedings
The language of the Registration Agreement is Chinese. 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 Complainant requested the language of the proceeding be English on the grounds that it did not understand Chinese, the website under the disputed domain name was solely in English and if it were to translate documents in Chinese, the Complainant would incur unnecessary expense and the proceedings may be delayed.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint as it will unnecessarily delay the proceeding. From the content of the website under the disputed domain name which is in English it does appear the Respondent can communicate in English.
Further, the Respondent did not respond to the Center’s preliminary determination regarding the language of the proceeding. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel will render its decision in English. 6.2 Substantive Issues A. Identical or confusingly similar
The disputed domain name is confusingly similar to the Complainant’s trademark R13. It incorporates the Complainant’s R13 trademark in full with the addition of a descriptive term.
The Panel notes that the Complainant has not submitted evidence it holds trademarks in China, where the Respondent is located. However, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first part of paragraph 4(a) of the Policy is therefore satisfied. B. No rights or legitimate interests
Section 2.1 of the WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith. The Respondent clearly knew of the Complainant when it registered the disputed domain name – it uses the disputed domain name to sell apparently counterfeit products of the Complainant. At minimum, the Panel finds the website at the disputed domain name deceptive as it fails to disclose the (lack of) relationship to the Complainant.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The third part of paragraph 4(a) of the Policy is, therefore, satisfied. 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.
Douglas Clark
Sole Panelist
Date: March 26, 2018
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