The Complainant is Cordstrap B.V., Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is You Yuanyang (游渊洋), China, represented by HengDu Law Firm, 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 October 21, 2019. On October 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 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 in English on October 29, 2019. On October 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 October 28, 2019. The Respondent requested that Chinese be the language of the proceeding on the same day. 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 in English and Chinese of the Complaint, and the proceeding commenced on November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Response was filed in Chinese with the Center on November 19, 2019. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 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 A. Complainant The Complainant is a company incorporated in the Netherlands in 1965 and the global market leader in respect of cargo strapping for packaging and fastening merchandise. The Complainant has been manufacturing and selling its cargo strapping products under the word and device trade mark CORD STRAP (the “Trade Mark”) since 1975. The Complainant is the owner of numerous registrations in jurisdictions around the world for the Trade Mark, including Benelux registration No. 0335278, with a registration date of September 29, 1975; Hong Kong, China registration No. 300963937 for EP CORD STRAP, with a registration dated of September 28, 2007; and International registration No. 742472 for EP CORD STRAP, designating China, with a registration date of August 10, 2000. The Complainant is also the owner of several domain names comprising the Trade Mark, including in particular the Complainant’s main domain name The Respondent is an individual located in China. C. The Disputed Domain Name The disputed domain name was registered on March 18, 2017. D. The Website at the Disputed Domain Name The disputed domain name is resolving to an English language website operated by a competitor of the Complainant, Qingdao Strapping Pack Co., Ltd., a company incorporated in China and is referring to a registered trade mark symbol “Strapping Pack” (the “Website”). The Panel also notes that the company Qingdao Strapping Pack Co., Ltd. has a website for “www.strappingpack.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondents contends that the disputed domain name is not confusingly similar or identical to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was not registered and is not being used in bad faith. The Respondent contends, essentially, that it has been making use of the disputed domain name on the Website as a promotional website, but in connection with its dictionary meaning, and not in a trade mark sense. 6. Discussion and Findings 6.1 Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Complainant has requested that the language of the proceeding be English, for several reasons, including in particular the fact the Website is an English language website. The Respondent has requested that the language of the proceeding be Chinese, for the following reasons: (i) The Respondent’s conduct is not infringing; (ii) The disputed domain name was purchased from the Registrar in China and the language of the registration agreement is Chinese; (iii) The Respondent is not fully proficient in English and cannot understand the full content of the Complaint; (iv) Although the disputed domain name is registered in English, this is an internationally accepted practice and only the English alphabet can be used to register such domain names; (v) The Respondent asked somebody to translate the content of the Website as the Respondent does not itself understand English. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel considers there is sufficient evidence to support the conclusion that the Respondent is conversant in English. Even if the Panel’s conclusion in this regard is incorrect, the Respondent will be able to enlist assistance from the persons who created the Website for the Respondent and/or from its representative law firm. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In all the circumstances, and having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that: (i) It will accept the filing of the Complaint in English; (ii) It will accept the filing of the Response in Chinese; and (iii) It will render this Decision in English. 6.2 Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Disregarding the hyphen and the generic Top-Level Domain (“gTLD”) “.com”, it is almost identical to the Trade Mark. The Respondent submits that the disputed domain name differs from the Trade Mark in terms of both composition and meaning, and contends that it is comprised of the English words “cord” and “strap” used not as a trade mark, but as a descriptive generic term. The Respondent also contends that the Trade Mark has not achieved well-known trade mark status in China. The composition and used of a disputed domain name is not generally considered relevant for the purpose of the first limb, which essentially requires a side-by-side analysis of the textual components of the Complainant’s Trade Mark with the disputed domain name (see WIPO Overview 3.0, section 1.7). For the purposes of the first limb under paragraph 4(a) of the Policy, the jurisdiction(s) in which, and the goods and services in respect of which, the Complainant possesses valid rights in the Trade Mark are not considered relevant (see section 1.1 of WIPO Overview 3.0). In the same vein, for the purpose of the first limb, whether or not the Complainant’s Trade Mark has achieved well-known trade mark status is irrelevant. The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (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 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. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, to promote and sell the competing cargo strapping goods of a competitor of the Complainant. The Panel considers that, in all the circumstances, the Respondent is not able, on the facts of this proceeding, to avail itself of the “use of common dictionary words” defence. The Respondent provides evidence of use by unrelated third parties of the words “cord” and “strap” in connection with packaging products, and submits that the Respondent ought to be entitled to do the same. The Respondent also contends that, prior to receipt of the Complaint herein, it had never heard of the Complainant; and its use of the disputed domain name on the Website amounts not to use in a trade mark sense, but use in connection with the dictionary meaning of the disputed domain name. The Panel considers the Respondent has not been using the disputed domain name in connection with its common dictionary meaning, but has instead been using it because of its value as a trade mark. In particular, the Panel notes that: (i) The disputed domain name is almost identical to both the Trade Mark and the Complainant’s main domain name, (ii) The Website provides comprehensive details regarding a competitor of the Complainant in the cargo strapping industry, including full product listings and product certifications; and (iii) The operator of the Website is referring to a registered trade mark symbol when displaying “Strapping Pack” which is featured prominently on the Website. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent has failed to produce sufficient evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) of the Policy are met. C. Registered and Used in Bad Faith The Respondent contends that it had never heard about the Complainant or the Trade Mark when registering the disputed domain name; the Respondent is using the term “cord strap” in connection with its dictionary meaning, and not in a trade mark sense to profit from the Complainant’s reputation; the Respondent has a brand “Strapping Pack”, thus there is no reason for the Respondent to promote the Complainant’s trade mark instead of its own brand; a third party registered the trade mark CORDSTRAP in 1998, thus the Complainant is not the only owner of the Trade Mark; the term “cord strap” is always used as a descriptive term online; the Complainant did not prove that the Respondent knew the Complainant or the Trade Mark when registering the disputed domain name; and the Respondent does not have the bad faith behaviors as described in Policy, paragraphs 4b(i), (iii) and (iv). In light of the worldwide repute of the Complainant, as the global market leader in the field of cargo strapping, the Panel does not find the Respondent’s contention that it was unaware of the Trade Mark at the time of registration of the disputed domain name convincing. The Panel notes also that the Website is a sophisticated and comprehensive English language website that targets not the Chinese speaking domestic market, but the international market. The Panel therefore considers that, in all the circumstances, it is inconceivable the Respondent given its activity in the same area was not aware of the Complainant and of its Trade Mark at the time it registered the disputed domain name. By virtue of the Panel’s finding in Section B. above that the Respondent has been using the disputed domain name in bad faith benefiting from the Complainant’s Trade Mark reputation, and not just in accordance with its common dictionary meaning, the Panel finds that bad faith use has been made out under paragraph 4(b)(iv) of the Policy. For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used 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 name Sebastian M.W. Hughes
Sole Panelist
Dated: December 16, 2019
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