The Complainant is The Mentholatum Company of Orchard Park, New York, United States of America (“United States”), represented by Pearne & Gordon, LLP, United States.
The Respondent is Hu Jia Jun of Suzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 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 25, 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 26, 2019.
On February 25, 2019, 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 February 26, 2019. 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, and the proceedings commenced on March 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2019.
The Center appointed Sok Ling MOI as the sole panelist in this matter on April 8, 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 maker of non-prescription health care products. It has used the trade mark MENTHOLATUM on salves as early as 1894.
The Complainant has registered numerous trade marks in several jurisdictions around the world for MENTHOLATUM for skin care, lip care and related products, including the following registrations:
Jurisdiction
Mark
Registration Number
Registration Date
United States
MENTHOLATUM
47783
November 21, 1905
United States
MENTHOLATUM
1787807
August 17, 1993
United States
MENTHOLATUM & device
3735375
January 5, 2010
United States
MENTHOLATUM & device
3735376
January 5, 2010
The Complainant also owns, and operates a website through, the domain name .
The disputed domain name was registered on April 19, 2018. According to the evidence provided by the Complainant, the disputed domain name resolved to a website referring to values of other marks and domain names (e.g., stating is worth $1.3 billion) and listing several domain brokers for the visitor of the site to contact. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical with its trade mark MENTHOLATUM and confusingly similar to its trade marks incorporating MENTHOLATUM, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 Procedural Issue: Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
Although the Respondent appears to be a Chinese individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name comprises Latin characters; and
(b) the holding page to which the disputed domain name redirects has contents in English (namely, “buy domain name please contact DN.com, click contact broker”).
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English; and
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
6.2. Substantive Issues
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in MENTHOLATUM by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s trade mark MENTHOLATUM in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case. Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MENTHOLATUM trade mark or to seek registration of any domain name incorporating the MENTHOLATUM trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “mentholatum”.
Based on the record, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. According to the evidence submitted in the Complaint, the use of the disputed domain name can neither be considered fair nor legitimate. Moreover, the Panel finds that the disputed domain name (identical to the Complainant’s trademark) caries a huge risk of implied affiliation with the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to offer any explanation for its registration of the disputed domain name, the prima facie case has not been rebutted. Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the 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 trade mark 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel notes, according to the evidence submitted by the Complainant, the disputed domain name resolved to a website referring to values of other marks and domain names (e.g., stating is worth $1.3 billion) and listing several domain brokers for the visitor of the site to contact.
The MENTHOLATUM trade mark has been used and registered by the Complainant for more than a hundred years. Although the Complainant did not provide specific information regarding its use of the MENTHOLATUM trade mark or evidence of sales revenue pertaining to products under the MENTHOLATUM trade mark, the Panel accepts that the Complainant and its distinctive trade mark MENTHOLATUM enjoy a strong reputation worldwide and in China, where the Respondent presumably resides. A strong presumption therefore arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark by someone with no connection with the trade mark suggests opportunistic bad faith. Furthermore, as previously noted, the disputed domain name carries a huge risk of implied affiliation.
Given that the disputed domain name does not resolve to a website in connection with a bona fide offering of goods or services, the Panel accepts that the Respondent may have registered the disputed domain name for the purpose of preventing the Complainant from reflecting its trade mark in a corresponding domain name. Based on the evidence, the Respondent may also have registered the disputed domain name for the purpose of selling or otherwise transferring the same to the Complainant or one of its competitors for valuable consideration. Moreover, the Panel finds the Respondent is also disrupting the business of the Complainant.
The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances of this case, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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.
Sok Ling MOI
Sole Panelist
Date: May 1, 2019
Full & Egal Universal Law Academy