The Complainants are Widex A/S of Lynge, Denmark and Sivantos Pte. Ltd. of Singapore, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is Domain Whois Privacy Protection Service of Shanghai, China / Chen DongBing of JiaXing, ZheJiang, China, self-represented. 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 January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2019, 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 February 12, 2019 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 February 13, 2019.
On February 12, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On February 13, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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, in both English and Chinese, and the proceedings commenced on February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. The Center received the Respondent’s communication on February 28, 2019, requesting an extension of the response due date, and indicating its willingness to settle. On the same day, the Center sent an email communication to the Parties regarding possible settlement, and extending the response due date to March 14, 2019 in accordance with paragraph 5(b) of the Rules. The Center received two communications from the Complainants on March 1, 2019 and March 15, 2019. On March 15, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 27, 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 Complainants’ company names are Widex A/S (“Widex”) and Sivantos Pte. Ltd. (“Sivantos”). Widex is a hearing aid manufacturer founded in 1956 headquartered in Lynge, Denmark. Sivantos is a hearing aid manufacturer headquartered in Singapore. Widex was founded in 1956 and currently sells hearing aids in almost 100 countries. Sivantos was spun off into an independent entity in 1015 and serves over 120 countries. Widex and Sivantos announced a merger on May 16, 2018, and as of March 1, 2019 the two formally completed the merger.
The Complainants are the owners of multiple trademark registrations for the WIDEX brand and the SIVANTOS brand.
Trademark
Jurisdiction
Reg. No.
Reg. Date
Classes
WIDEX
International Registration
1305013
May 3, 2016
9, 10
WIDEX
China
9740227
September 14, 2012
10
SIVANTOS
International Registration
1295905
July 22, 2015
5, 9, 10, 35, 37, 42, 44
SIVANTOS (word mark)
China
16421896
April 21, 2016
10
The disputed domain names and were both registered on May 16, 2018. The disputed domain names do not resolve to websites as of the date of this decision. 5. Parties’ Contentions A. Complainant
The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants’ WIDEX and SIVANTOS marks. The Complainants have rights in the WIDEX and SIVANTOS marks by virtue of their trademark registrations. When comparing the disputed domain names to the Complainants’ trademarks, the comparison should be made to the second-level portion of the disputed domain names only. The first disputed domain name consists of the WIDEX mark, a hyphen, and the SIVANTOS mark. The second disputed domain name consists of the WIDEX mark plus the SIVANTOS mark.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not and has never been one of the Complainants’ representatives, employees or one of its licensees or is otherwise authorized to use the WIDEX or SIVANTOS marks. The Complainants have no connection with the Respondent. The Respondent passively holds the disputed domains which are currently not active. The Complainants contend that passively holding a domain name does not constitute a bona fide offering of goods or services. The Complainants further argue that as the disputed domain names incorporate two trademarks which are not in any manner connected to the Respondent, it is evident that the Respondent does not make any legitimate noncommercial or fair use of the disputed domain names. The Complainants contend that the disputed domain names were selected by the Respondent with intent to attract the Internet users for illegitimate purposes and to cause damage to the Complainants.
Finally, the Complainants contend that the disputed domain names are registered in bad faith as the Respondent knew or should have known about the Complainants’ earlier rights on the WIDEX and SIVANTOS marks, especially as their intended merger has been widely reported in business media as early as May 16, 2018. Further, the Complainants contend that the disputed domain names were registered in order to prevent the Complainants from adopting a domain name including the WIDEX and SIVANTOS marks and thus reflecting the merger once approved by the European Commission. The selection of the disputed domain names and at exactly the day (May 16, 2018) on which the intended merger between the Complainants has been announced, is beyond coincidence. The Complainants allege that it is obvious that the Respondent must have been aware of the Complainants’ trademarks and their businesses when the Respondent registered the disputed domain names on May 16, 2018.
The Complainants note that the fact that the disputed domain names are not actively used does not hinder a finding of bad faith use under the Policy. Passive holding may equate with active use of a domain name.
The Complainants jointly request that the disputed domain names be transferred to the first Complainant, Widex. B. Respondent
The Respondent did not submit a response to the Complainants’ contentions.
However, on February 28, 2019, the Respondent sent an email to the Center requesting an extension of response due date and stating a willingness to settle. The Center granted an extension of time to March 14, 2019, but the Respondent did not send a response within the extended window of time and the Complainants indicated that settlement talks have failed. 6. Discussion and Findings 6.1 Consolidation of the Complainants
The Complaint was filed in the name of two related entities. Furthermore, as indicated under section 4 of this decision, the two companies Widex and Sivantos have merged on March 1, 2019. In accordance with section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel believes the Complainants have a common grievance against the Respondent and that the Respondent’s conduct has affected them in a similar fashion. Therefore, it would be equitable and procedurally efficient to permit the consolidation. 6.2 Substantive Issues
The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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
The Complainants have rights to the WIDEX and SIVANTOS marks. The Complainants have established that they are the registered owners of international trademark registrations of the WIDEX and SIVANTOS marks.
The first disputed domain name consists of the WIDEX mark, a hyphen, the SIVANTOS mark, and the generic Top-Level-Domain (“TLD”) “.com”. As a technical part of a domain name, the “.com” gTLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther,WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer,WIPO Case No. D2002-0329. The first disputed domain name consists entirely of the WIDEX and SIVANTOS marks, except for the hyphen, which serves as a non-distinctive element linking the two marks.
The second disputed domain name consists of the WIDEX mark, the SIVANTOS mark, and the gTLD “.com”. As a technical part of the domain name, the “.com” gTLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther, supra; Belo Corp. v. George Latimer, supra. The second disputed domain name consists entirely of the WIDEX and SIVANTOS marks.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ trademarks. B. Rights or Legitimate Interests
As noted above, the Complainants have provided evidence of their prior rights in the WIDEX and SIVANTOS marks. These rights precede the creation of the disputed domain names.
The disputed domain names and incorporate the Complainants’ trademarks in their entireties. There is no evidence indicating that the Respondent is licensed to use the Complainants’ WIDEX or SIVANTOS marks, that the Respondent is associated or affiliated with the Complainants, or that the Respondent has any other rights or legitimate interests in the string “widexsivantos” or variants thereupon. As such, the Complainants have made out their prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name(s) in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
>(iii) The respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(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 such website or location or of a product or service on such website or location.
The present case falls squarely within that contemplated by paragraph 4(b)(i) of the Policy.
The Respondent must have been aware of the Complainants’ trademarks and their businesses when the Respondent registered the disputed domain names. The timing of the registration of the disputed domain names almost immediately after the Complainants announced the intended merger between the Widex and Sivantos companies points to bad faith.
The fact that the disputed domain names are not actively used does not hinder a finding of bad faith use under the Policy. Passive holding may equate with active use of a domain name. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainants’ trademarks are well known, the Respondent has provided no evidence of any good faith use, and the Panel cannot conceive of any good faith use of the disputed domain names. Moreover, the registration took place almost immediately after news of the intended merger was published, and the Respondent has not provided any substantive response to the Complaint.
It is noted that the Respondent offered, in an email communication dated February 28, 2019, to settle the present case with the Complainants outside these proceedings. However, the Complainants indicated, in an email communication dated March 1, 2019, that the Respondent made an open-ended request for financial compensation, which suggests that the Respondent was hoping to receive significantly more in compensation than any documented out-of-pocket costs for registration of the disputed domain names.
For these reasons, the Panel finds that the Respondent’s registration and use of the disputed domain names is 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 names and be transferred to the Complainants.
Kimberley Chen Nobles
Sole Panelist
Date: April 8, 2019
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