The Complainant is Daimler AG of Stuttgart, Germany, represented by Heumann Intellectual Property Law, Germany.
The Respondent is Yingxiao Yi of Hangzhou, Zhejiang, China, represented by Yong Wu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2018. On March 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 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 March 13, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent requested that Chinese be the language of the proceeding on March 17, 2018.
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 proceeding commenced on March 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2018. The Response was filed in Chinese with the Center on April 8, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 12, 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 company incorporated in Germany and a manufacturer of cars under the trade mark MERCEDES (the “Trade Mark”) for over 100 years.
The Complainant is the owner of numerous registrations for the Trade Mark worldwide, including international registration No. 447764, with a registration date of September 29, 1979; and Chinese registration No. 676580, with a registration date of February 7, 1994.
The Complainant’s wholly-owned subsidiary, Mercedes pay S.A., a company incorporated in 2012, is also a provider of electronic payment services, under the trade mark MERCEDES PAY (the “MERCEDES PAY Mark”). The Complainant is the owner of registrations for the MERCEDES PAY Mark including European Union trade mark registration No. 16981862, registered on November 2, 2017. B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Name
The disputed domain name was registered on April 1, 2016. D. Passive Use of the Disputed Domain Name
The disputed domain name has not been used. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark and to the MERCEDES PAY 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 contends that:
(i) The disputed domain name was registered before the Complainant filed its pending applications for registration of the MERCEDES PAY Mark;
(ii) Although the Trade Mark is well-known in China, there are obvious differences between the Trade Mark and the disputed domain name;
(iii) The disputed domain name was registered lawfully and the Respondent is the legal owner of the disputed domain name;
(iv) The Respondent registered the disputed domain name for an (unidentified) project that is still in preparation;
(v) The disputed domain name has not been registered and used in bad faith; and
(vi) The Complainant has deliberately created false evidence in order to frame the Respondent and, falsely, submit evidence of the Respondent’s offer to sell the disputed domain name for a high price in bad faith.
The Respondent also requests a finding of reverse domain name hijacking in light of its contentions in paragraph (vi) above. 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 several reasons, including the fact the Respondent has communicated with the Complainant’s representatives in English in pre-Complaint email correspondence (see Section 6.2.C below).
The Respondent has requested that the language of the proceeding be Chinese, on the grounds that the Respondent only understands simple English; and there will be a large number of domain name industry terms and legal terms used in this proceeding.
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 emails sent by the Respondent to the Complainant’s representatives in English demonstrate 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 the language of the proceeding be English.
Having considered all the matters above, the Panel therefore determines, under paragraph 11(a) of the Rules, that it will:
(i) Accept the filing of the Complaint in English;
(ii) Accept the filing of the Response in Chinese; and
(iii) 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark and the MERCEDES PAY 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 word “pay”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
The addition of the word “pay” to the Trade Mark renders the disputed domain name identical to the Complainant’s MERCEDES PAY Mark. The Panel therefore finds that (disregarding the generic Top-Level Domain (“gTLD”), in accordance with standard UDRP procedure) the disputed domain name is identical to the MERCEDES PAY 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 or the MERCEDES PAY 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 not been used.
The Respondent has failed to adduce any evidence to support the Respondent’s bare assertion that the Respondent registered the disputed domain name for an (unidentified) project, nor has the Respondent provided any evidence to support the Respondent’s bare assertion that “the project is still in preparation”.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and 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 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, and that the Respondent’s contentions regarding the Respondent’s intended use of the disputed domain name are unconvincing.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel notes in this regard the Respondent’s own submission in the Response that the Trade Mark is a well-known mark in China. There can therefore be no question that the Respondent was aware of the Complainant’s Trade Mark at the time of registration of the disputed domain name. The fact the Respondent has made no use of the disputed domain name to date, and has provided no evidence to support the Respondent’s bare assertions that the Respondent registered the disputed domain name for a project (and also that the Respondent has commenced preparations for the project), provides further support for the Panel’s finding of bad faith registration and use under the Panel’s general discretion.
The Complainant also relies upon pre-Complaint email communications between the Complainant’s representatives and the Respondent to assert bad faith under paragraph 4(b)(i) of the Policy, specifically:
(i) The email dated October 12, 2017 from the Complainant’s representatives to the Respondent’s WhoIs-listed email address with the following request “we are interested in purchasing your domain and wondering if this domain name is for sell. If so, it would be great if you can come back to us with a price you have in your mind”;
(ii) The response dated October 13, 2017 from another email address stating “I have read your mail carefully. Recently, I have received several mails about asking this domain name. I do not know who you are searching this domain name for. Frankly speaking, I have no plan to sell this, domain name since it has special meaning for my family. Thanks. But I am also curious about your budget”;
(iii) The reply dated October 20, 2017 from the Complainant’s representatives stating “We are wondering why a brand name has such an (sic) deep meaning for your family. I can’t see a relation between your, name and the domain name, either this domain is currently not in use for web services or mail services. However, I would like to offer you 2.000 USD for the name.”; and
(iv) The response dated October 20, 2017 from the alternative email address mentioned at (ii) stating “I am an SW engineer. I am coding hard for a better life. My girlfriend named ‘Mercedes’, I promised her that I will pay for a house to her, so that we need not rent an small apartment anymore. I need a token to reminds me about this promise, so I choose the domain name and choose the key words ‘her name’ + ‘pay’. I plan to set up a blog to write down our daily life after I achieved the promise. But it seems will take several years for me. In my mind, this domain name’s value should more than 100,000 USD. Thanks.”
The Panel considers the above email correspondence provides sufficient evidence to support a conclusion of bad faith under the additional specific grounds in paragraph 4(b)(i) of the Policy.
The Respondent makes the serious and unsubstantiated allegation of falsification of evidence against the Complainant. The basis for the Respondent’s allegation is that the Respondent does not own the alternative email address used in correspondence detailed above.
The Respondent has not filed any evidence to support the Respondent’s assertion in this regard. In any event, plain reading of the email chain suggests that the response dated October 13, 2017, although not sent from the Respondent’s email address recorded in the WhoIs records for the disputed domain name, was clearly sent by or on behalf of the Respondent, and in response to the email dated October 12, 2017 sent to the Respondent (using the Respondent’s WhoIs-listed email address) by the Complainant’s representatives.
The Panel accordingly rejects the Respondent’s unsubstantiated and serious assertion that the Complainant has deliberately created false evidence.
On the basis of the evidence on the record, even if the relevant email correspondence was not sent by or on behalf of the Respondent, in any event, the additional finding of bad faith under paragraph 4(b)(i) is not ultimately determinative of this proceeding, the Panel having concluded (and in part on the basis of the Respondent’s own case that the Trade Mark is well-known in China), that registration and bad faith has been made out in any event and in all the circumstances, under the Panel’s general discretion.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and used in bad faith. D. Reverse Domain Name Hijacking
The Respondent’s request for a finding of reverse domain name hijacking is based on the sole ground that the Complainant has fabricated evidence. In light of the Panel’s determination in this regard in Section 6.2.C above, the Respondent’s request is dismissed. 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: April 26, 2018
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