The Complainant is Finn-Korkki Oy of Hämeenlinna, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Nexperian Holding Limited ("Nexperian") of Hangzhou, Zhejiang, China / li zai hui of Fuzhou, Fujian, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name ) the (the "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 March 16, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 21, 2018. The Respondent also submitted a communication on March 22, 2018, in response to the Center's Notice of Change in Registrant Information.
On March 20, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 21, 2018, the Complainant submitted a request that English be the language of the proceeding. On March 22, 2018, the Respondent submitted a request that Chinese be the language of the proceeding.
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, and the proceedings commenced on March 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2018. The Respondent submitted a communication on April 13, 2018. The Center notified the Parties of Commencement of Panel Appointment Process on April 20, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on May 3, 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, a company based in Finland designs and manufactures metal bottle caps for the global beverage industry as well as ring pull cap sealing machines and has been doing so for over 30 years. Its main products are ring pull bottle caps, ring pull sealing machines, luxury aluminum closures and crown cork bottle caps. It also manufactures aluminum tea light cups and outdoor candle covers. The Complainant has a registered trade mark for RING CROWN under European Union Trade Mark Registration No 001826254 in respect of "metallic bottle shutter" in class 6 filed on August 25, 2000, and registered of November 20, 2001 ("the Trade Mark"). The Trade Mark is used in connection of a particular type of metallic shutter or cap. The Trade Mark has been used for over 30 years. The Complainant has another trade mark for RIP CAP for a different type of metallic shutter or cap.
The Respondent registered the Domain Name on October 12, 2017. According to the website connected to the Domain Name (the "Website"), the Respondent manufactures top ring pull bottle caps, ring pull cap sealing machines, luxury aluminum closures and crown cork bottle caps. It trades under the name HUNZ CROWN. In the "About Us" section of the Website, it says as follows:
"Hunz crown is a privately owned flexible company. The company is customer oriented. Service is quick and reliable due to the benefit of our in-house prepress and offset printing facilities, abundant experience of designing & manufacturing ring pull closures and ring pull cap sealing machines gives Hunz crown a unique depth of knowledge.
This is reflected in the level of service and support given to customers. Research & development of bottle caps and ring pull sealing machines is being continuously undertaken. Hunz crown is approved under ISO 9001 quality, health & safety at work."
The copyright notice on the Website indicates that the company is called China Hunz Crown Cap Limited.
On January 31, 2018, the Complainant wrote to the Respondent asking it to transfer the Domain Name. In the correspondence that followed, the Respondent maintained its rights to the Domain Name for its business. The Complainant offered to purchase the Domain Name initially for EUR 1,000 and then raised it to EUR 1,500 after the Respondent countered the original offer with a sum of more than EUR 20,000. The negotiations ended on March 5, 2018 when the Respondent confirmed that the Domain Name was not for resale. The Panel notes that the Domain Name now resolves to a website at "". The domain name was registered on March 5, 2018. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent contends as follows:
- It was not the intention of the Respondent to offend. The Domain Name was selected because it describes the products which the Respondent trades in. The name "Ring Crown" was translated by "Google Translate" from the Chinese descriptive words, "the circular crown cover".
- The Domain Name describes the Respondent's products, which is why it picked the Domain Name.
- The products of the Complainant are made of different materials from the Respondent.
- The Respondent's product is a new development of China's patented product and is one of the most advanced products of this kind in the Chinese market.
- The Domain Name was registered to promote Chinese patented products.
- The Complainant's failure to register the Domain Name for 107 years after registering the Trade Mark is tantamount to abandoning its rights to it.
- If the Complainant is not using it, then it should allow a third party to do so.
- The Respondent's use does not damage the Complainant's reputation or business activities.
- Once on the Website, an Internet user will be able to see that the products are made by Hunz Crown and not the Complainant. 6. Discussion and Findings 6.1 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Names was registered and being used in bad faith. 6.2 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English as the Respondent in its pre-action correspondence communicated in English demonstrating its understanding of the English language.
The Respondent submits that Chinese should be language of the proceeding. It says that it is a start-up and its understanding of the English language is limited and the level of understanding is equivalent to someone of primary school level in an English speaking country.
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 Website is in the English language. Further the Respondent has responded to the Complainant in the English language in the pre-action correspondence which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. 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 that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English. 6.3. Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprise the Trade Mark its entirety and the addition of the descriptive term "cap". The addition of this term does nothing to minimise the risk of confusion.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise permitted the Respondent to use the Trade Mark or register the Domain Name. The Respondent is not commonly known by the Domain Name. It is known by the name HUNZ CROWN. As far as the Complainant is aware, the Respondent did not register a trade mark, service mark or company name anywhere in the world at the time of registering the Domain Name. The Website contained a link to the Complainant's website when clicked on the text "Finn-Korkki Oy" indicating that the Complainant was known to the Respondent.
The Respondent's defence appears to be that the Domain Name consists of words which are descriptive of the products it produces and hence it has rights to the Domain Name.
"Ring Crown" and "ring crown cap" does not appear to be the commonly used term describing bottle caps of this type. Whilst there are descriptive elements to the combination of words, from searches on Google, it appears that only the Complainant and the Respondent make use of the term "Ring Crown". The term does not appear to be an ordinary dictionary word or common phrases. Instead it has been used by the Complainant in connection with its products for more than 30 years. Further the fact that the Complainant's website was linked to the Website means that it was aware of the Complainant. It is inconceivable that the Respondent was not familiar with a well-known purveyor of these products. The Respondent calls itself HUNZ CROWN.
The Panel finds that the Respondent has failed to provide the necessary evidence to establish that it has the relevant rights to or legitimate interests in respect of the Domain Name, hence the Complainant has succeeded in the second element. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names has been both registered and used in bad faith. It is a double requirement.
The Trade Mark was registered some 17 years prior to the Domain Name being registered and the Trade Mark was used for over 30 years. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since it is a competitor of the Complainant. A search on Google for the term "Ring Crown" brings up only the Complainant and the Respondent.
In WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The fact that the sector is very specialised and requires investment in manufacturing equipment, the Trade Mark has been used for a long time and there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name are also significant factors to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The Panel notes that upon learning of the Complainant's objection to the Domain Name, the Respondent registered another domain name, with the Trade Mark in its entirety and the ".cn" top level country code. The Domain Name now resolves to the website connected to .
The Respondent indicated that it was prepared to sell the Domain Name for a sum exceeding EUR 20,000. The registration of the Domain Name and the second domain name together with the attempt to sell the Domain Name for a sum far in excess of its out-of pocket costs relating to the Domain Name is bad faith under paragraph 4(b)(i). Further, to register a competitor's trade mark as a domain name is clear evidence that the Domain Name was registered to intentionally attempt to attract for commercial gain and Internet users to the Website by creating a likelihood of confusion with the Complainant's mark. This is also bad faith use under paragraph 4(b)(iv). Further much of the Website content is copied from the Complainant's website. There is also a link at the bottom of the page of the Website with the Complainant's company name. This also adds to the confusion on the part of Internet users that the Complainant is somehow linked to the Respondent.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element as well. 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 Domain Name, be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 29, 2018
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