The Complainant is Dyson Technology Limited of Malmesbury, the United Kingdom, internally represented.
The Respondent is Tan YiHui of Nanning, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2018. On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 22, 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 October 31, 2018, the Center transmitted 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 November 2, 2018. The Respondent did not comment on the language of the proceeding.
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 November 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 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 part of a group of companies engaged in the design, development and sale of vacuum cleaners, as well as hand dryers, fans and heaters, humidifiers, purifiers, hair dryers, hair stylers and lighting products. The Complainant owns the group’s intellectual property rights. The Complainant owns multiple trademark registrations for DYSON, including European Union trademark number 6305262, registered on August 17, 2010 and specifying goods and services in classes 3, 5, 7, 9, 11, 21, 28 and 37, including vacuum cleaners and hair dryers. That trademark registration remains current. The Complainant has registered various domain names, including , that it uses in connection with an official website where it provides information about itself and its products.
The Respondent is an individual resident in China.
The disputed domain names were registered on different dates during the period from September 19, 2018 to October 13, 2018. Shortly prior to the filing of the Complaint, 17 of the disputed domain names1 resolved to a website in English that offered for sale what appeared to be the Complainant’s hair dryers and vacuum cleaners. The website prominently displayed the word DYSON in the same font as it appears on the Complainant’s official website. It also displayed a product photograph that appears on the Complainant’s official website. Prices were displayed in United States dollars and discounted “up to 69% off”. There is no evidence on the record that the other disputed domain names ever resolved to any active website; rather, they have been passively held only. At the time of this decision, all the disputed domain names are passively held. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s DYSON trademark. The disputed domain names all incorporate, or misspell, that trademark. They also include certain additional elements that do not prevent findings of confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register any domain name incorporating the DYSON trademarks. The Respondent has no relationship with the Complainant. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods, nor for a legitimate noncommercial or fair use without intent for commercial gain. The Respondent has not been commonly known by the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The disputed domain names are very similar to the DYSON trademark, which makes them inherently deceptive. Many of the disputed domain names resolve to a website headed with the Complainant’s DYSON logo and devoted to the Complainant’s products, which make extensive use of the Complainant’s copyright imagery. The fact that the Respondent has registered 44 disputed domain names incorporating the Complainant’s trademark, in the circumstances, suggests opportunistic bad faith. 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, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for each disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main argument is that the Respondent is familiar with English because the disputed domain names include common English words and the website to which many of the disputed domain names resolved was 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 the present proceeding the Complaint was filed in English. The website to which many of the disputed domain names resolved was in English, from which it is reasonable to infer that the Respondent understands that language. Moreover, despite having received notice of the Complaint and commencement of the administrative proceeding in Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice 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. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a 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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the DYSON trademark.
All but three of the disputed domain names2 wholly incorporate the Complainant’s DYSON trademark as their initial element. These disputed domain names include additional elements, variously dictionary words such as “bay”, “buy”, “deal”, “it”, “line”, “my”, “on”, “promotion”, “sale”, “shop”, “store” and “stores” and misspellings of “shopper”; geographical terms such as “au”, “es”, “eu”, “sg”, “ue”, “uk” and “us”; other letters; a hyphen; or some combination of the above. The Panel recalls that a dictionary word is not sufficient to dispel the confusing similarity of the disputed domain names to a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. Further, a geographical term is not sufficient to dispel the confusing similarity of the disputed domain names to a trademark either. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768. The other additional elements are all minor. In each case, the Complainant’s DYSON trademark remains clearly recognizable within these disputed domain names.
The other three disputed domain names (, and ) include an obvious misspelling of the Complainant’s DYSON as their initial element, i.e. either “dayson” or “dson”. These three disputed domain names also include additional elements, variously some combination of the geographical term “uk”; the dictionary words “buy” and “to”; the letter “t”; and a hyphen. Even in combination with a misspelling of the Complainant’s DYSON trademark, the Panel does not consider that any of these additional elements is sufficient to dispel the confusing similarity between each of these disputed domain names and the Complainant’s DYSON trademark.
All disputed domain names also include the generic Top-Level Domain (“gTLD”) suffix “.com” but a gTLD suffix does not prevent a finding of confusing similarity between a domain name and a trademark for the purposes of the first element of the Policy. 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 all the disputed domain names are 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.
The evidence shows that the Respondent has used 17 of the disputed domain names3 in connection with a website offering for sale what appeared be the Complainant’s products. The Complainant states that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register any domain name incorporating the DYSON trademarks and, further, that the Respondent has no relationship with it. Regardless of whether the products offered for sale on the Respondent’s website were original or copies, nothing on the website disclosed the Respondent’s lack of affiliation with the Complainant. On the contrary, the presentation of the website created the misleading impression that there was such an affiliation. These facts show that the Respondent’s use of these 17 disputed domain names was not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. As for the other disputed domain names, the evidence does not show that they have ever been used in connection with an offering for goods or services, or that there have been any demonstrable preparations to do so. At the time of this decision, all of the disputed domain names are passively held. Accordingly, the Panel does not find that the Respondent’s use of the disputed domain names falls within the terms of the first circumstance of paragraph 4(c) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is Tan YiHui. There is no evidence on the record that the Respondent has been commonly known by any of the disputed domain names within the terms of the second circumstance of paragraph 4(c) of the Policy.
The evidence shows that 17 of the disputed domain names formerly resolved to a commercial website and that, at the time of this decision, all of the disputed domain names are passively held. Neither use is a legitimate noncommercial or fair use within the terms of the third circumstance of paragraph 4(c) of the Policy.
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 names. The Respondent failed to rebut the Complainant’s prima facie case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names. 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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Those circumstances are not exhaustive. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
As regards registration, the Respondent registered the disputed domain names in 2018, several years after the Complainant obtained its trademark registration. All but three of the disputed domain names wholly incorporate the Complainant’s DYSON trademark, while the other three incorporated an obvious misspelling of that trademark. The website to which many of the disputed domain names resolved prominently displayed the DYSON trademark in the same font as it appears on the Complainant’s official website. The website offered for sale what appeared to be the Complainant’s products. In these circumstances, it is reasonable to infer that the Respondent was aware of the Complainant at the time that it registered all the disputed domain names. Accordingly, the Panel finds that the Respondent intentionally chose to register the Complainant’s trademark in all the disputed domain names in bad faith.
As regards use, the Respondent has used 17 of the disputed domain names4 with a website in English that used the Complainant’s DYSON trademark to offer for sale what appeared to be the Complainant’s products. The Respondent is not affiliated in any way with the Complainant but this was not disclosed on the website to which these disputed domain names resolved. On the contrary, the presentation of the website gave the impression that it was approved by, or affiliated with, the Complainant. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website. The Panel notes that the use of these disputed domain names subsequently changed and that, at the time of this decision, they no longer resolve to any active website. This change, to the extent made by the Respondent in response to the Complaint, may be further evidence of bad faith but, in any case, it does not alter the Panel’s conclusion regarding the use of these disputed domain names.
The Respondent has made only passive use of the other 27 disputed domain names5 but this does not preclude a finding of use in bad faith with respect to them. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000‑0003. In the present dispute, these 27 disputed domain names form a sub-set of the 44 disputed domain names registered by the Respondent around the same time that are all confusingly similar to the Complainant’s DYSON trademark. The Respondent has already used the rest of the disputed domain names in connection with an active website in bad faith. The obvious inference is that the Respondent is passively holding these 27 disputed domain names for the same purpose. The Respondent has not indicated any other proposed use for these disputed domain names. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that these 27 disputed domain names are also being used in bad faith.
Therefore, the Panel finds that all the disputed domain names have been registered and are 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 names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: January 7, 2019
1 These 17 disputed domain names are , , , , , , , , , , , , , , , , and .
2 The three exceptions are considered separately under the first element.
3 Listed in footnote 1 above.
4 Listed in footnote 1 above.
5 These 27 disputed domain names are , , , , , , , , , , , , , , , , , , , , , , , , , , and .
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