The Complainant is Decoweb Brands, S.A., Spain, represented by Dionisio Chanza, Spain.
The Respondent is 王健 (Wang Jian), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 9, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on October 9, 2019. The Complainant filed an amended Complaint in English and requested that English be the language of the proceeding on October 15, 2019. 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 English and Chinese, and the proceedings commenced on October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. The Response was filed on November 3, 2019 and, the following day, the Respondent confirmed by email that this was his complete Response. The Center appointed Matthew Kennedy as the sole panelist in this matter on November 13, 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 Spanish company. According to evidence submitted by the Respondent, the Complainant was established on August 25, 2015, it has a registered capital of EUR 100,000. Since a transfer effected on July 5, 2016, the Complainant has been the registered proprietor of Spanish trademark registrations number M1771414, for MAISON DECOR, registered on June 20, 1994, and number M1780102 for MAISON DÉCOR with device, originally registered in the name of a third party on April 5, 1994, both specifying fabrics and textile products not included in other classes; bed and table linen in class 24. The Complainant also owns European Union trademark registration number 017879517 for MAISON DÉCOR with device, registered on August 2, 2018, specifying goods and services in classes 20, 24, 35 and 42. All three trademark registrations remain current. The Respondent is an individual resident in China. The disputed domain name was registered on September 16, 1998. It resolves to a website that prominently displays the disputed domain name above a notice in English and Chinese advising that “[t]his domain name is for sale”. The website also displays advertising for ladies’ shoes and boots. Prior to the filing of the Complaint, the Complainant’s legal representative contacted the Respondent, in English, seeking information about a possible sale of the disputed domain name. On July 22, 2019, the Respondent offered a price of USD 8,500 and, later the same day, USD 7,000. The Complainant’s legal representative made a counter-offer of USD 500 that the Respondent rejected. On October 17, 2019, after the filing of the Complaint, the Complainant’s legal representative sent an email to the Respondent making a further counter-offer of USD 300 for the transfer of the disputed domain name and settlement of this dispute. In that email, the Complainant’s legal representative alleged that if this counter-offer was rejected and the Panel ordered transfer of the disputed domain name, the Complainant could probably also initiate proceedings for indemnity and procedural costs against the Respondent. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s Spanish trademark registrations for MAISON DECOR (word) and MAISON DECOR (figurative) and its European Union trademark registration for MAISON DECOR (figurative). The Respondent has no rights or legitimate interests in respect of the disputed domain name. No use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or service is known in the markets. The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered or acquired primarily for the purpose of selling by the website at “www.maisondecor.com”. The Complainant submits proof of the offer to sell and an exchange of emails in which the Complainant received an offer of USD 7,000 [from] the holder of the disputed domain name. B. Respondent The Complainant’s European Union trademark was not until registered until August 2, 2018, i.e., twenty years after the date of registration of the disputed domain name on September 16, 1998. The Complainant’s Spanish trademark is a domestic trademark which does not confer exclusive rights in most countries of the world. The trademark was originally registered by another party and subsequently transferred several times, only being acquired by the Complainant on December 4, 2015, which was seventeen years after than the registration of the disputed domain name. A search of business and credit information databases shows that the Complainant was established on August 25, 2015 with a registered capital of EUR 100,000. It is impossible for the Respondent to have registered the disputed domain name in 1998 to prevent a Spanish-sponsored small business established seventeen years later from promoting its business. The evidence provided by the Complainant does not show that it has any website related to the single word “maisondecor”. An Internet search for this word produces no results, hence, the registration and holding of the disputed domain name has no impact on the development of the Complainant’s Internet business. The disputed domain name was registered on September 16, 1998. The Respondent planned to use it to build a foreign trade website for China’s Shandong Zibo Huamei Stone Co., Ltd. to open up the export of decorative stone to Europe although later, due to business adjustment, the disputed domain name remained temporarily idle but the Respondent never initiated an offer to sell the disputed domain name to anyone, including the Complainant. The pre-Complaint correspondence between the Parties shows that it was the Complainant who initiated negotiations regarding a possible transfer. Even after the commencement of this proceeding, the Complainant’s representative made a further offer to purchase the disputed domain name and threatened litigation. 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 English be the language of the proceeding. Its main arguments are that English is a neutral language as between the Parties and that pre-Complaint correspondence between the Parties was in English. The Respondent requests that Chinese be the language of the proceeding and strongly objects to the choice of any language other than Chinese. His arguments are that he lacks the ability to read materials in English or to write a Response in English. Paragraphs 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 the amended Complaint was filed in English whereas the Response was filed in Chinese, with annexes in Spanish and English. The website to which the disputed domain name resolves is in English and Chinese and pre-Complaint correspondence between the Parties was in English, which demonstrates that the Respondent is indeed able to communicate in English. Moreover, the contents of the Response indicate that the Respondent has indeed understood the case set out in the amended Complaint. Therefore, the Panel considers that selecting Chinese as the language of the proceeding, and requiring the Complainant to translate the amended Complaint and its annexes into Chinese, would create an undue burden and delay, whereas accepting all documents as filed in English, Chinese or Spanish would not cause unfairness to 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 that it will accept all evidence as filed in its original language, without translation. 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 MAISON DECOR trademark. The Respondent points out that the disputed domain name was registered before the Complainant acquired its rights in the MAISON DECOR trademark. However, for the purposes of the first element of the Policy, it suffices for the Panel to note that the Complainant has rights in the MAISON DECOR trademark at the time of this proceeding. The issue of the timing of the disputed domain name registration relative to the timing of the Complainant’s trademark registrations is considered in relation to the third element of the Policy in Section 6.2C below. The Respondent also submits that the Complainant’s Spanish trademark rights do not confer exclusive rights in other countries. However, given the global nature of the Internet and Domain Name System, the Panel considers that the jurisdictions in which the Complainant’s trademark rights are valid is irrelevant to the assessment of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.1.2. The disputed domain name is identical to the MAISON DECOR trademark, but for omission of the space between the words, which cannot be included in a domain name for technical reasons, and the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the Policy unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Given the findings in Section 6.2C below, it is unnecessary for the Panel to consider whether the Respondent has any rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires the Complainant to prove the conjunctive requirement that the disputed domain name has been registered and is being used in bad faith. A conclusion that a domain name was registered in bad faith normally requires a finding that the respondent targeted a complainant’s mark. That requires an assessment as at the time of the registration of the disputed domain name by the Respondent. A major difficulty for the Complainant’s case is that the fame and reputation of a complainant’s trademark is persuasive in determining a respondent’s bad faith intent. In the present dispute, the Complainant’s word mark and the non-figurative elements of its device marks are two French dictionary words. However, the Complainant provides no evidence that the MAISON DECOR trademarks have ever been used anywhere or possess any reputation at all. The Panel is unable to conclude that the Respondent could have known of the Complainant’s rights in any MAISON DECOR trademark at that time of registration of the disputed domain name. 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 Complainant appears to rely on the first such circumstance, which is as follows: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the 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 domain name.” The Panel accepts the Complainant’s evidence that the Respondent offered to sell the disputed domain name for no less than USD 7,000. The Panel is also willing to accept that that amount is very likely in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, even when account is taken of twenty years’ worth of renewal fees. However, for the reasons given above, the Panel is unable to find that the Respondent registered the disputed domain name in 1998 for the purpose of selling the disputed domain name to the Complainant, which did not exist at that time, or to a competitor of the Complainant. The Respondent also argues that he could not have registered the disputed domain name in bad faith because the Complainant’s trademark rights had not yet accrued at that time. The Respondent registered the disputed domain name in 1998, seventeen years before the Complainant was founded and eighteen years before it acquired its earliest registered rights in a MAISON DECOR mark, by transfer, in 2016. However, the Panel notes that the Complainant’s claim is based on Spanish trademarks that were registered in 1994, before the disputed domain name. If the Respondent targeted those trademarks at the time of registration of the disputed domain name, the bad faith registration of the disputed domain name would not be altered by the subsequent change in ownership of the trademarks. See, for example, Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754. Rather, as far as its allegation of bad faith registration is concerned, the problem for the Complainant’s case is that it does not provide evidence that the Respondent targeted the mark. Instead, the Complainant relies on prior rights without so much as naming the former owner nor explaining how (or whether) that party used the MAISON DECOR trademarks and acquired any reputation in those marks prior to 1998. Therefore, the Complainant has failed to establish the third element in paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The Panel notes that the Complaint provides no evidence that the Complainant’s trademark has ever been used or acquired any fame or reputation. This renders the Complaint hopeless, in the circumstances of this case. The Panel notes that the Complainant, through its legal representative, tried and failed to obtain a transfer of the disputed domain name from the Respondent prior to filing the Complaint, and that the Complainant’s legal representative threatened legal proceedings against the Respondent after filing the Complaint in a further attempt to obtain a transfer. All of this indicates to the Panel that the Complainant (who is legally represented in this proceeding) launched this proceeding when its attempts to obtain a transfer of the disputed domain name from the Respondent proved unsuccessful, knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. See WIPO Overview 3.0, section 4.16 and, for example, GWG Holdings Inc. v. Jeff Burgar, Alberta Hot Rods, WIPO Case No. D2016-1420; AUSACORP, S.L v. Andrew David Dawson, WIPO Case No. D2018-1772. Therefore, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision For the foregoing reasons, the Complaint is denied. Matthew Kennedy
Sole Panelist
Date: November 25, 2019
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