The Complainant is Signode Industrial Group LLC, United States of America (“U.S.”), represented by Neal, Gerber & Eisenberg, U.S.
The Respondent is 李忠贵 (li zhonggui), 佛山市禅城依利达包装器材有限公司 (foshanshichanchengyilidabaozhuangqicaiyouxiangongsi), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2020 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 February 26, 2020. On February 24, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on February 26, 2020. 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, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2020. The Center appointed Karen Fong as the sole panelist in this matter on April 2, 2020. 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’s business was established in the early 1900s and has since become a leading global manufacturer of a broad spectrum of transit packaging consumables, tools, software, and equipment. Its products are used to pack, bundle, unitize, protect, and secure goods during warehousing and transportation. One of the Complainant’s brands is ORGAPACK. For over 40 years, the ORGAPACK mark has been used in connection with the Complainant’s hand tools, strapping machines, installations for strapping, seals and related tools to offer transit packaging solutions to its customers. The Complainant has trade mark registrations for ORGAPACK in many jurisdictions around the world. The earliest trade mark registrations submitted in evidence is U.S. Trade Mark Registration No: 1235162 for ORGAPACK registered on April 19, 1983 (the “Trade Mark”). The Complainant also has rights in Chinese Trade Mark Registration No. 6931326 for ORGAPACK registered on March 7, 2014. The Complainant promotes its ORGAPAK branded products online through its website at “www.orgapack.com”. The Respondent registered the Domain Names on December 28, 2007. According to the Registrar’s confirmation, the Respondent’s organization name is “佛山市禅城依利达包装器材有限公司 (foshanshichanchengyilidabaozhuangqicaiyouxiangongsi)”, which may be translated as “Foshan Elida [A]Packaging Equipment Co., Ltd.” as suggested on the websites at the Domain Names. The Respondent as its name suggests, is a manufacturer of packaging machines and equipment based in Foshan, China. The websites connected to both Domain Names appear to be identical and they both display the Respondent’s corporate name and brand ELIDA and Logo which bears the ® symbol indicating that this is a registered trade mark (the “Websites”). The Websites are identical to the Respondent’s websites connected to the domain names A letter was sent to the Respondent by the Complainant’s legal representatives requesting immediate transfer of the Domain Names but the Respondent refused to comply. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that: (i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and (ii) The Respondents has no rights or legitimate interests in respect of the Domain Names; and (iii) The Domain Names were registered and are being used in bad faith. B. Language of the Proceeding The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Names is Chinese. The Complainant submits that the language of the proceeding should be English as a) the websites associated with the Domain Names can be viewed in English; b) the term “Orgapack” is an English word; and c) the Complainant’s website relating to the genuine products bearing the Trade Marks is in English, which indicates that the Respondent is familiar with the English language. 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 accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. C. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Names contain the Complainant’s Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.org” and “net”. It is viewed as a standard registration requirement (section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Domain Names are identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. D. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the UDRP panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Names or for any other purpose. Further, the Respondent is not commonly known by the Domain Names. The Websites purport to offer for sale the Complainant’s ORGAPACK products but instead delivers inferior knock-off products. The Websites also offer other competing products and there is evidence that the Respondent “baits and switches” by using the Domain Names and the Trade Mark to draw in customers and then sell them its own inferior products. Such use in not a bona fide offering of goods. There can be no legitimate interests in selling knock-off products. Nor can there be legitimate interests in the use of a third party’s trade mark in order to lure customers to its business in order to sell its own competing products by relying on the trade mark. The fact that the Domain Names have been registered since 2007 with no complaint from the Complainant does not give the Respondent any rights or legitimate interests especially in view of the activities of the Respondent in connection with the Domain Names. Section 4.17 of the WIPO Overview 3.0 makes it clear that delay in filing a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. E. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The very incorporation of the Trade Mark in its entirety in the Domain Names and the offer for sale of non-genuine ORGAPACK products on the Websites confirm the Respondent’s awareness of the Trade Mark especially since its own trade mark appears to be ELIDA. It is implausible that it was unaware of the Complainant when it registered the Domain Names. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The clear absence of rights or legitimate interests coupled with the fact that the Domain Names are being used to trade in knock-offs and to lure customers to its business and goods competing with the Complainant as well as the lack of any explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain Names in bad faith. The Domain Names are also being used in bad faith. The products offered for sale on the Websites are non-genuine ORGAPACK products. Further, the Domain Names are being used to “bait and switch”. These activities amount to using the Domain Names to intentionally attract for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant as the source, sponsorship, affiliation or endorsement of the Websites is bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Panel therefore concludes that the Domain Names were registered and are 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 Domain Names Karen Fong
Sole Panelist
Date: April 23, 2020
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