The Complainant is Incase Designs Corp., United States of America (“United States”), represented by Fenxun Partners, China.
The Respondent is Zhou Bing Cun, Shen Zhen Shi A Rui Si Jing Mao You Xian Gong Si, China. 2. The Domain Name(s) and Registrar(s)
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 March 28, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 6, 2019.
On April 3, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On April 6, 2019, the Complainant requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Respondent sent an email communication in Chinese to the Center and the Complainant on April 25, 2019, indicating that it agreed to transfer the disputed domain name. At the request of the Complainant, the proceeding was suspended on May 3, 2019 for the purpose of settlement discussions. The parties exchanged emails in English and Chinese on May 11, 2019. At the request of the Complainant, the proceeding was reinstituted as of May 16, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 28, 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 United States company engaged in designing and producing backpacks, bags, suitcases and accessories for consumer electronics that it markets under the brand INCASE. It was founded in 1997. The Complainant owns multiple trademark registrations including: international trademark registration number 941249 for INCASE, registered on October 3, 2007, designating China, and specifying certain cases and bags in class 9; Chinese trademark registration number 6388188 for INCASE in a particular script, registered on March 28, 2010, specifying certain bags in class 9; Chinese trademark registrations numbers 6388182 and 6388184, both for the Incase and leaf device (the “Incase logo”), registered on March 28, 2010 and July 7, 2010, respectively, and specifying certain bags and cases in class 9, and business management and other services in class 35, respectively. All those trademark registrations remain current.
The Respondent individual, Zhou Bin Cun, also known as Edison Zhou, works for the Respondent organization, a Chinese company named 深圳市阿瑞斯经贸有限公司 or “Shanghai Ares Economic and Trade Co. Ltd.” Mr. Zhou and the company are together and separately referred to in this decision as the “Respondent”.
The disputed domain name was created on July 30, 2015. The Parties later entered into a Non-Exclusive Distribution Agreement and Store License agreement, both dated November 15, 2016. The Distribution Agreement prohibited the Respondent from filing a trademark application that included, was identical or confusingly similar to, the INCASE marks, and from registering a domain name or social media handle or identifier that included, or was identical or confusingly similar to, any of the INCASE marks. The Store License Agreement authorized the Respondent to use the INCASE marks in an authorized retail store at its place of business in Shenzhen only.
On August 23, 2018, the disputed domain name resolved to a website that prominently displayed the Incase logo and offered for sale the Complainant’s cases and bags. The Complainant terminated both its agreements with the Respondent by a notice dated October 2, 2018, effective 30 days later. In the notice of termination, the Complainant demanded that the Respondent shut down the website and transfer the disputed domain name to the Complainant without any payment or charge. Since at least December 12, 2018, the disputed domain name has resolved to a webpage displaying a message in Chinese inviting Internet users to visit the original website at another online location. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s INCASE trademark. The distinctive part of the disputed domain name is identical to that trademark. The element “china” is a mere geographic description.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent agreed in the Distribution Agreement not to register domain names incorporating the Complainant’s trademark. The Respondent’s use does not amount to a bona fide offering of goods nor a fair use.
The disputed domain name was registered and is being used in bad faith. The Respondent deliberately copied the Complainant’s mark and pre-emptively registered the disputed domain name without the Complainant’s authorization. The Respondent is using the disputed domain name in bad faith to confuse the public. B. Respondent
The Respondent indicated that it agreed to transfer the disputed domain name. It did not otherwise reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues A. 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 Respondent is fully capable of conducting the proceeding in English given that prior correspondence between the Parties was in English, or bilingual English/Chinese, and the parties executed agreements in English; and the disputed domain name includes an English word (i.e. China).
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 notes that in the present proceeding the Complaint was filed in English and that certain evidence is in Chinese. The Panel observes that the written agreements and prior correspondence between the parties shows that the Respondent is able to understand English in addition to Chinese. Further, despite having received notice of the Complaint and of the Complainant’s language request in Chinese and English, the Respondent has not expressed any interest in responding to the contentions in the Complaint. In these circumstances, the Panel considers that requiring the Complainant to translate the whole Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding, and accepting all documents filed in their original language without translation, 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 but the Panel will accept all documents as filed in their original language without translation. B. Informal Consent to Transfer
In an informal email communication dated April 25, 2019, the Respondent indicated that it agreed to transfer the disputed domain name. However, in two email communications to the Complainant’s authorized representative, both dated May 11, 2019, the Respondent stipulated certain conditions for the transfer that the Complainant did not accept. Therefore, the Panel finds it appropriate to proceed to a substantive decision on the merits. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the 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 INCASE mark.
The disputed domain name wholly incorporates the INCASE mark as its initial and only distinctive element.
The disputed domain name also includes the element “china”, which is a country name. As a mere geographic term, this element does not serve to reduce the confusing similarity between the disputed domain name and the trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768. The hyphen between “incase” and “china” does not reduce the confusing similarity either; on the contrary, it ensures that the trademark is even more clearly recognizable within the disputed domain name.
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.
As regards the first circumstance above, the disputed domain name is being used in connection with a webpage that invites Internet users to visit a website at another online location that offers the Complainant’s cases and bags for sale. The Distribution Agreement between the Parties expressly prohibited the Respondent from registering a domain name that included the INCASE mark but that agreement has been terminated and, at the time of this proceeding, the Respondent is not authorized by the Complainant to use the Complainant’s INCASE mark at all. The website is the same website that was operated by the Respondent without authorization prior to the termination of its distributorship and it is misleadingly presented in such a way that it appears to be operated by, or affiliated with, the Complainant. There is no disclaimer on the webpage to which the disputed domain name resolves, or on the website at the other online location, that notes the lack of relationship to the Complainant. These facts show that the Respondent’s use of the disputed domain name is 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 regards the second circumstance above, the name of the Respondent individual is Zhou Bincun, also known as Edison Zhou, while the name of the Respondent organization is 深圳市阿瑞斯经贸有限公司 or Shanghai Ares Economic and Trade Co. Ltd, neither of which is “Incase-China”. Although the Respondent was a distributor of the Complainant in China, there is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance above, the disputed domain name resolves to a webpage that invites Internet users to visit a website at another online location that offers goods for sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by 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 name. The Respondent failed to rebut that case because it did not respond to the Complainant’s contentions.
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] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain name was registered in 2015, several years after the Complainant obtained its trademark registrations for INCASE, including in China, where the Respondent is located. The disputed domain name wholly incorporates the Complainant’s INCASE trademark as its only distinctive element and combines that mark with the word “China”, which gives the false impression that it is operated by the Complainant or a Chinese affiliate of the Complainant. In the year following registration of the disputed domain name, the Respondent became an authorized distributor of the Complainant for China. This gives the Panel reason to believe that the Respondent was aware of the Complainant and its INCASE trademark at the time that it registered or acquired the disputed domain name. However, the Respondent was not authorized to register a domain name that incorporated the INCASE trademark. Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
The Respondent is a terminated distributor of the Complainant. It uses the disputed domain name in connection with a webpage that invites Internet users to visit its original, unauthorized website at another online location . Given these circumstances, the Panel finds that the disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or the products offered for sale on it. This use of the disputed domain name is intentional and for commercial gain as contemplated by paragraph 4(b)(iv) of the Policy.
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: June 3, 2019
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