The Complainant is DEOLEO, S.A., of Madrid, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Wang Yun Li of Taizhou, Zhejiang, China, self-represented. 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 December 4, 2018. On December 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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. On the same day, the Center sent an email communication to the Complainant 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 December 11, 2018.
On December 6, 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 December 11, 2018. The Respondent requested that Chinese be the language of the proceeding on December 10, 2018 and again on December 12, 2018.
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 Chinese of the Complaint, and the proceedings commenced on December 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2019. The Respondent did not submit any substantive Response. On January 4, 2019, the Center notified the Parties that it would proceed with panel appointment.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 15, 2019. 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 major producer of olive oil, seed oils, vinegar, dressings and table olives. It holds multiple trademark registrations, including United States of America trademark registration number 1041402 for CARBONELL in a stylized script, registered on June 15, 1976, and specifying goods in class 29; and international trademark registration number 712467 for a device including the denomination “carbonell”, registered on April 30, 1999, designating multiple jurisdictions, including China, and specifying olive oil in class 29. Those trademark registrations remain current. The Complainant has also registered multiple domain names including , that it uses in connection with its official website where it provides information about itself and its olive oils.
The Respondent is an individual resident in China. The disputed domain name was registered on December 9, 2013. At the time of filing the Complaint, the disputed domain name resolved to a website in English and Chinese that merely offered it for sale. The website featured the disputed domain name above a message stating that “This premium domain name is for sale!” The website offered to transact a sale of the disputed domain name via global domain name trading platforms, bank transaction or face-to-face. At the time of this decision, the disputed domain name resolves to a virtual directory that does not allow the content of the website to be displayed. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s CARBONELL trademark. That trademark has been fully included in the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not own any registered trademark or company name. The website to which the disputed domain name resolves has no content.
The disputed domain name was registered and is being used in bad faith. The CARBONELL trademark is well-known and included in full in the disputed domain name. The Respondent has also incorporated the words “olive oil” in the disputed domain name. B. Respondent
The Respondent did not submit any substantive Response 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 the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is formed by two English words and the Complainant’s trademark, from which it can be assumed that the Respondent knows English as well as Chinese; the Complainant and its well-known trademark are Spanish; the Complainant does not necessarily know Chinese; and it would be unduly burdensome for the Complainant to translate the Complaint into Chinese.
The Respondent requests that the language of the proceeding be Chinese. Its main arguments are that the Registration Agreement for the disputed domain name is in Chinese, that the Respondent is a Chinese citizen and, later, he added that his English was too poor to file a response 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 this proceeding the Complaint was filed in English. The Panel notes that the website to which the disputed domain name resolves is in English and Chinese and that it invites Internet users in both languages to contact the Respondent, which indicates that the Respondent is indeed able to understand both languages. Although the Respondent sent two emails to the Center in Chinese regarding the language of the proceeding, he did not avail himself of the opportunity to respond to the Complaint in Chinese or English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese 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. However, the Panel will accept all communications as filed in their original language, whether Chinese or English, without a translation. 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 CARBONELL trademark.
The disputed domain name wholly incorporates the Complainant’s CARBONELL trademark as its initial element.
The disputed domain name also includes the dictionary words “olive” and “oil”. Dictionary words are generally incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under 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 the disputed domain name is 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 disputed domain name is confusingly similar to the Complainant’s CARBONELL mark. The Complainant informs the Panel that the Respondent registered the disputed domain name without the Complainant’s authorization or consent. The disputed domain name resolved to a website that merely offered it for sale. The Panel does not consider that this use in and of itself confers a right or legitimate interest arising from a bona fide offering of goods or services for the purposes of the second element of the Policy. The disputed domain name is not a dictionary word, nor is the denomination “carbonell”, although “olive” and “oil” are (in fact, these words describe the Complainant’s product). Accordingly, the Panel does not find that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is “Wang Yun Li”, not “carbonelloliveoil”. There is no evidence on the record that the Respondent has been commonly known by the disputed domain name as within the terms of paragraph 4(c)(ii) of the Policy.
The disputed domain name resolved to a website that offered it for sale. That is not a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, 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 name. The Respondent failed to rebut that case because he did not assert any rights or legitimate interests.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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. 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.”
The Respondent registered the disputed domain name in December 2013, many years after the Complainant obtained its trademark registration, including in China. The disputed domain name wholly incorporates the non-figurative element of the Complainant’s CARBONELL trademark, which is not a dictionary word and has no other meaning. The disputed domain name combines the CARBONELL trademark with the words “olive” and “oil”, which describe the Complainant’s product. The disputed domain name is virtually identical to the Complainant’s domain name that it uses with its official website, omitting only the hyphen in the middle. This all indicates to the Panel that the Respondent was aware of the Complainant and its trademark at the time that he registered the disputed domain name and that he deliberately registered the disputed domain name in bad faith.
The Respondent used the disputed domain name, which combines the Complainant’s CARBONELL trademark and two words that describe the Complainant’s product, with a website that merely offered the disputed domain name for sale. The website to which the disputed domain name resolved described it as a “premium domain name” when its only apparent value lies in its confusing similarity to the Complainant’s trademark. 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 his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel notes that use of the disputed domain name changed after the commencement of this proceeding and that it no longer resolves to a webpage that displays content. The Panel does not consider that this fact alters its conclusion; rather, this recent change of use may constitute further evidence of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: January 18, 2019
Full & Egal Universal Law Academy