The Complainant is NPI Ventures, LLC of Mechanicsburg, Pennsylvania, United States of America ("USA"), represented by Kohn, Swift & Graf, P.C., USA.
The Respondent is Whois Privacy Protection Service by of Tokyo, Japan / Masatoshi Yamamoto, Gran Net Co., Ltd of Hyogo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, 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 April 17, 2018 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 Center sent a Complaint Deficiency Notification to the Complainant regarding the Mutual Jurisdiction. The Complainant filed an amended Complaint on April 19, 2018.
On April 17, 2018, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 18, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Japanese of the Complaint, and the proceedings commenced on April 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2018.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on May 18, 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 Complaint is NPI Ventures, LLC which was founded in 2003 and does business as a small, artisan sweets and snacks manufacturer nationally recognized by "Brittle Bark". The Complainant obtained assignment of a registered oval logo trademark consisting the words "Brittle Bliss", and a domain name on January 5, 2018 from Brittle Bliss, LLC which was the original owner of the said trademark and domain name. The trademark was first put in commercial use on August 1, 2012 and was filed for registration under the United States Patent and Trademark Office on November 20, 2013. The registration date of the trademark is August 5, 2014.
The disputed domain was registered on January 18, 2018 by the Respondent and the resolved website is not active. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant advocates that it has not authorized, licensed or otherwise consented to the Respondent's use of its mark. The Respondent has neither acquired trademark or service mark rights nor been commonly known by the disputed domain name. And there is no evidence demonstrating that the Respondent used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services prior to notice of the dispute.
The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Complainant holds that the Respondent's absence of rights and legitimate interests coupled with no credible explanation for registering the disputed domain constitutes registration in bad faith. And by using the disputed domain name, the Respondent is creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and services. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 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". The Registrar confirmed that the Registration Agreement for the disputed domain name is in Japanese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that (1) translation into Japanese would incur additional costs and would also cause unwarranted delay of the proceeding; and (2) the Respondent is familiar with English as the disputed domain name is in English, same as the Complainant's mark, and the Registrar's website is also in English coupled with its English translation of the registration agreement. The Respondent did not reply to the Complainant's contentions.
Paragraph 10 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 Orlane S.A. v. Yu Zhou He / He Yu Zhou,WIPO Case No. D2016-1763.
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Japanese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Complainant has successfully established rights in the registered oval trademark consisting the words "Brittle Bliss", by means of assignment of the trademark from Brittle Bliss, LLC on January 5, 2018. The disputed domain name fully incorporates the words "Brittle Bliss". The UDRP jurisprudence has established that incorporation of a complainant's distinctive trademark in its entirety into a domain name is sufficient to establish that the domain name is confusingly similar to the complainant's trademark.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant's trademark rights predate the registration date of the disputed name and the Complainant holds that it has never authorized the Respondent to use the mark. The Panel is thus satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name, and the burden of production is hence shifted to the Respondent to rebut the Complainant's contentions. In this case, the Respondent's failure to submit a response to rebut the Complainant's prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") paragraph 2.1.
The Panel notes that, upon receiving the notice of the present proceedings in both Japanese and in English, the Respondent did not submit any substantial arguments in response to the Complainant's contentions. The Panel also notes that the disputed domain name used to resolve to a website advertising factoring but now is not active. The Panel does not find any evidence showing that the Respondent has rights or legitimate interests in the disputed domain name.
Given the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant acquired the trademark BRITTLE BLISS on January 5, 2018 at which time the mark had been used for approximately six years and obtained some reputation. The Complainant also provided evidence proving that "Brittle Bliss" was popular among Japanese people. As resident in Japan, the Respondent should have known the Complainant's mark at the time of registration. The Panel finds it unlikely that the Respondent registered the disputed domain name, which wholly incorporates the Complainant's mark, without any knowledge of the mark. Hence, the Panel finds that the Respondent registered the disputed domain name in bad faith.
According to the evidence submitted by the Complainant, the disputed domain name resolved to a website filled with Japanese words and links regarding factoring. The website content is entirely irrelevant to the Complainant's business, which would not lead to likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the product or service to website. However, the Panel cannot rule out the possibility that the Respondent intentionally attempts to create confusion between its online location and the Complainant's mark by using the disputed domain name which fully incorporates the Complainant's mark, so as to attract Internet users for commercial gain. The Panel finds that it is more likely than not that the Respondent registered and used the disputed domain name in bad faith, also given that the Respondent has not submitted any response to the UDRP proceeding filed by the Complainant even through given the opportunity. See B BV v. Chen Guo Long,WIPO Case No. D2017-0311.
For the reasons above, the Panel concludes that the Respondent has registered and is using the disputed domain name 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.
Jacob (Changjie) Chen
Sole Panelist
Date: May 29, 2018
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