The Complainant is Faurecia, France, represented by Nameshield, France.
The Respondent is shenchaoyong, China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 6, 2019, 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 August 6, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceedings. On August 6, 2019, the Complainant requested that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings. On August 12, 2019, the Complainant informed the Center of its receipt of the Respondent’s communication on August 7, 2019, in English, in which the Respondent stated “we want to use Chinese to answer” and offered to sell all disputed domain names at a price of USD 1,000. In the same email, the Complainant also confirmed it wished to proceed with the proceedings.
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 August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. On August 12, 2019, the Complainant requested suspension of the proceedings upon receipt of the Respondent’s email of August 12, 2019 indicating that he was willing to transfer the disputed domain names for free, and the proceedings were suspended. On September 10, 2019, the Complainant requested resumption of the proceedings, and the Center confirmed resumption of the proceedings on the same day and the Response due date was September 30, 2019. No substantive Response was received by the Center. On October 4, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Joseph Simone as the sole panelist in this matter on October 17, 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 BackgroundThe Complainant, Faurecia, is a global automotive technology company headquartered in France. It operates through four business groups: Faurecia Seating, Faurecia Interiors, Faurecia Clarion Electronics and Faurecia Clean Mobility. The group operates over 300 production sites and 35 Research and Development centers in 37 countries and employs 122,000 employees.
The Complainant is the owner of several trademarks for FAURECIA, including:
- International trademark registration No. 717463, registered on April 27, 1999;
- European trademark registration No. 011414125, registered on June 18, 2013;
- International trademark registration No. 1366023, registered on June 23, 2017.
The Complainant is also the owner of several domain names containing the trademark FAURECIA, such as
The disputed domain name
On August 7, 2019, following the Center’s email regarding the language of the proceedings, the Respondent wrote the following email to the Complainant:
“Hello, we will respond positively. Of course we want to use Chinese to answer. However, we have a suggestion that all domain names $1,000 are transferred to you. Very fast and friendly way. I think that even if your arbitration is successful, we will file a lawsuit in the Chinese court. This will only waste our time and money. If you agree to withdraw the arbitration. We will transfer all domain names to you. The cost of $1,000. Of course we reserve the right to appeal. I look forward to hearing from you. Thank you (Kay, please understand this matter)”.
On August 12, 2019, the Complainant informed the Center and confirmed that it would proceed with the proceedings, after which the proceedings were commenced. On the same day, the Respondent offered to transfer the disputed domain names for free and asked the Complainant to revoke the proceedings. The Complainant requested suspension of the proceedings.
As the Respondent failed to respond after this or sign the settlement form within the 30-day settlement period, the Complainant resumed the proceedings.
5. Parties’ Contentions A. ComplainantIn accordance with paragraph 4(a) of the Policy, the Complainant contends that the conditions for transfer of the disputed domain names have been satisfied in this case.
The Complainant contends that the disputed domain names are all confusingly similar to its trademark FAURECIA, and indeed contain FAURECIA in its entirety. It contends that the addition of the terms “clarion” and “electronics” does not prevent a finding of confusing similarity, and in fact, worsens the likelihood of confusion given that the Complainant operates a business division by the name of “Faurecia Clarion Electronics”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons.
There is no evidence that the Respondent is commonly known by the disputed domain names.
The Respondent is not affiliated with the Complainant or authorized in any way to use its trademark.
Finally, the Respondent has no demonstrable plans to use the three disputed domain names, which are inactive, and intended to sell the fourth disputed domain name for a profit.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith given that the disputed domain name
Except for the email communication mentioned in the Sections 3 and 4 above, the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingsIn accordance with paragraph 11 of the Rules:
“[…] 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.”
Therefore, the default language of the proceedings shall be Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceedings, for the following main reasons.
The disputed domain names are formed by words in Roman characters and not Chinese script, they are confusingly similar to the Complainant’s trademark, and in order to proceed in Chinese, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings.
The Respondent did not respond to the Center regarding the language of the proceeding but indicated in his email to the Complainant that he would like to respond in Chinese.
However, the main purpose of the Respondent’s email to the Complainant was to make an offer to sell the disputed domain names. He did not copy the Center in its request, nor did he submit a formal response to the proceedings, despite being notified of each step in both Chinese and English. Further, the Panel notes that the emails sent by the Respondent to the Complainant were in English. The Respondent’s emails indicate he has capacity to understand and write in English and understands the nature of the proceedings. Therefore, the Panel has decided that the language of the proceedings shall be in English.
6.2 Substantive IssuesAnother preliminary issue that must be addressed is the Respondent’s offer to transfer the disputed domain names.
Many UDRP panels have dealt with a Respondent’s unilateral consent to transfer and have been faced with a decision whether to proceed with a full decision on the merits or order the transfer without consideration of the elements under paragraph 4(a) of the Policy.
Factors warranting a full decision on the merits have included whether the consent to transfer is accompanied by a request that the Panel will not make findings on the merits, and express denials of bad faith where the facts indicate the opposite (see Ticketmaster Corporation v. Global Access,
WIPO Case No. D2007-1921) as well as intentional delaying tactics, serial cybersquatting and previous UDRP cases decided against the Respondent (see President and Fellows of Harvard College v. Texas International Property Associates – NA NA,
WIPO Case No. D2008-0597).
In this case, the Respondent initially tried to sell the disputed domain names and threatened he would commence a lawsuit in a Chinese court if the Complainant was successful in these proceedings. After the Complainant indicated that it would maintain the proceedings, he then offered to transfer them without compensation. After suspension of the proceedings for the purpose of settlement, the Respondent failed to sign the settlement form or respond to follow-up queries on the issue. The Respondent did not deny that the disputed domain names infringed on the Complainant’s trademark rights but appears to have made a last attempt to extract a profit from his registrations. His subsequent offer to transfer appears to have been merely a delaying tactic.
The Panel further notes that the Respondent is a serial cybersquatter, having been involved in several domain name disputes involving third party brands, and in which decisions were made against him (see Facebook Inc. v. Shenchaoyong,
WIPO Case No. D2015-1474; Compagnie Générale des Etablissements Michelin v. Shen Chaoyong,
WIPO Case No. D2016-0396; Accenture Global Services Limited v. Chaoyong Shen, Shen Chaoyong,
WIPO Case No. D2015-1103; Canon U.S.A., Inc v. shen chaoyong,
WIPO Case No. D2015-0826; Fiat Chrysler Automobiles N.V.和FCA Bank S.P.A. 诉 Shen Chaoyong和Zaiyige,
WIPO Case No. D2015-0276; Koninklijke Philips N.V. v. Shen Chaoyong,
WIPO Case No. D2014-2053; Société des Produits Nestlé S.A. v. Shen Chaoyong,
WIPO Case No. D2014-0956; Société des Produits Nestlé S.A. v. Shen Chaoyong,
WIPO Case No. DCH2014-0013). Almost all of these cases involved offers to sell the domain names to the complainants who owned the trademarks contained within the domain names.
Therefore, given the Respondent’s serial piracy and pattern of registering domain names containing third party trademarks with the intent to sell them, this is a case that warrants a full decision on the merits.
A. Identical or Confusingly SimilarUnder the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has adequately demonstrated its right to the trademark FAURECIA.
The test for whether a domain name is identical or confusingly similar to a trademark is fairly straightforward, and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962). It is standard practice to disregard the Top-Level Domain (“TLD”) (see, e.g. F. Hoffmann-La Roche AG v. Domain Admin/xcite,
WIPO Case No. DCC2007-0003).
In this case, the disputed domain names entirely contain the Complainant’s trademark FAURECIA. The addition of the terms “clarion” and “electronics” do not detract from the confusing similarity, and as will be discussed under the third element of bad faith, they actually indicate a specific connection to the Complainant.
Therefore, the Panel is satisfied that the disputed domain names are confusingly similar to the Complainant’s mark and the first requirement of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder the second element, the Complainant must demonstrate that the Respondent should be deemed as having no rights or legitimate interests in respect of a disputed domain name (paragraph 4(a)(ii) of the Policy).
The Panel accepts that the Respondent has not been authorized or licensed to use the disputed domain names, nor is there anything to suggest the Respondent is commonly known by the disputed domain names. There is also no evidence of a bona fide offering of goods or services, or legitimate use without intent for commercial gain, within the meaning of paragraph 4(c) of the Policy. On the contrary, the Respondent’s offers to sell the disputed domain names, which incorporate the Complainant’s distinctive trademark, indicate that the sole purpose of the registrations was for commercial gain.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Respondent failed to submit a formal response, and given the clear targeting of the Complainant’s business, the Panel believes there are no scenarios that could confer rights or legitimate interests on the Respondent in this case.
The second requirement of the Policy is therefore satisfied.
C. Registered and Used in Bad FaithThe Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In this case, the Respondent registered the disputed domain names long after the Complainant began to use the FAURECIA trademark and the domain name
The Respondent’s offer price for the disputed domain names of USD 1,000 likely exceeds his out-of-pocket costs, and the subsequent offer to transfer them for free appears to have been ingenuine.
Furthermore, as described above, the Respondent is a serial cybersquatter, having been the Respondent in several UDRP cases involving well-known third-party brands, in which he was found to have registered the domain names in bad faith.
Those cases involved similar circumstances in which the Respondent registered the domain names on the same day or immediately after widely publicized press releases relating to the complainants’ businesses such as:
- a new business partnership (Compagnie Générale des Etablissements Michelin v. Shen Chaoyong, supra; Accenture Global Services Limited v. Chaoyong Shen, Shen Chaoyong, supra)
- a business name change (Fiat Chrysler Automobiles N.V.和FCA Bank S.P.A. 诉 Shen Chaoyong和Zaiyige, supra)
- the release of a new product (Facebook Inc. v. Shenchaoyong, supra); and
- the establishment of a new subsidiary or business (Canon U.S.A., Inc v. shen chaoyong, supra; Koninklijke Philips N.V. v. Shen Chaoyong, supra; Société des Produits Nestlé S.A. v. Shen Chaoyong, supra).
Additionally, the Respondent made offers, sometimes unsolicited, to sell the domain names to the complainants, as well as threats to sell the domain names to others if his offers were not accepted.
Aside from these cases, a reverse WhoIs search shows that the Respondent has registered a large number of domain names containing third-party trademarks which enjoy global reputation.
Therefore, in light of all the above, the Panel concludes that the Respondent is a serial cybersquatter and a bad-faith actor. Knowing full well of the Complainant’s business activities, he registered the disputed domain names for no other reason than to make a profit from a subsequent sale to the Complainant who owns the trademark contained within them. Therefore, the disputed domain names were registered and are being used in bad faith.
7. DecisionFor 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
Joseph Simone
Sole Panelist
Date: November 11, 2019