The Complainant is Rheem Manufacturing Company, United States of America (“United States”), represented by Troutman Sanders, LLP, United States.
The Respondent is 高海生(Hai Sheng Gao), 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 April 9, 2020. 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 April 10, 2020, 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 April 14, 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 April 16, 2020. On April 14, 2020, 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 April 16, 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 in English and Chinese of the amended Complaint, and the proceedings commenced on April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on May 29, 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 Founded in 1925, the Complainant manufactures residential and commercial water heaters and boilers, as well as heating, ventilating and air conditioning equipment. Its products are available in many countries, including China, where its subsidiary Rheem (China) Water Heater Co., Ltd. advertises, promotes and sells its products. The Complainant owns trademark registrations for RHEEM in multiple jurisdictions, including United States trademark registration number 669,287, registered on November 4, 1958, specifying goods in class 11; and Chinese trademark registration number 627706, registered on February 7, 1993, also specifying goods in class 11. Those trademark registrations remain current. The Complainant has also registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on March 26, 2020. It resolves to a website in Japanese and English. The website prominently displays the words “Outlet Sale” and offers for sale a variety of consumer products. Prices are displayed in Japanese Yen. 5. Parties’ Contentions A. Complainant The disputed domain name incorporates the Complainant’s RHEEM mark in its entirety. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The mark is strong and famous and has no meaning other than as a means to identify the Complainant as a source of its products and services. The Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the RHEEM mark for any purpose. The Respondent is not commonly known as “Rheem”. The disputed domain name was registered and is being used in bad faith. The RHEEM mark is famous, has been used for nearly 100 years, including in China, and uniquely identifies the Complainant. The RHEEM mark has no meaning in any language. The Respondent knowingly registered the disputed domain name containing an exact reproduction of the Complainant’s well-known mark and redirected website users to the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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 the language of the proceeding be English. Its main arguments are that the disputed domain name is composed of Latin characters; the disputed domain name is a near-exact copy of a mark in English and targets English-speaking customers; and requiring this proceeding to be held in Chinese would significantly burden the Complainant with additional translation costs and delay the action. Paragraph 10(b) and (c) of the Rules requires 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 in this proceeding the Complaint and amended Complaint were filed in English. The website associated with the disputed domain name is partly in English, and not in Chinese, from which it can be inferred that the Respondent is able to communicate in English. The Respondent has not commented on the language of the proceeding, filed a Response or expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint and the amended Complaint into Chinese would create an undue burden and delay, whereas accepting the Complaint and the amended Complaint as filed and rendering this decision in English will 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. The Panel would have accepted a Response in Chinese, but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that a 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 RHEEM mark. The disputed domain name wholly incorporates the RHEEM mark. The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.xyz”), which is a technical requirement of domain name registration. A gTLD suffix may be disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) 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 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 a 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 set out above, the disputed domain name resolves to an online store. Nothing on the website suggests any explanation for the Respondent’s choice of “rheem” in the disputed domain name. However, the disputed domain name wholly incorporates the Complainant’s RHEEM trademark with no additional element besides a gTLD suffix, which is a technical requirement of registration. The Complainant submits that the Respondent is not a licensee of the Complainant nor otherwise authorized to use the RHEEM mark for any purpose. Accordingly, the Panel does not consider this to be a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. As regards the second circumstance, the Registrar’s verification email indicates that the Respondent’s name is “高海生(Hai Sheng Gao)”, not “rheem”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy. In view of the above circumstances, 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 did not rebut that prima facie case because he did not respond to the Complaint. 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 created in 2020, many years after the Complainant acquired its registered trademark rights in RHEEM, including in China, where the Respondent is located. The Complainant has made extensive use of its RHEEM mark, including in China, where the Respondent is located. The disputed domain name wholly incorporates the Complainant’s RHEEM trademark with no additional element besides a gTLD suffix. RHEEM is a coined term with no apparent meaning other than as the Complainant’s trademark. This all gives the Panel reason to find that the Respondent registered the disputed domain name in bad faith. The disputed domain name is used to attract Internet users to the Respondent’s online store by creating a likelihood of confusion with the Complainant’s RHEEM trademark as to the source, sponsorship, affiliation, or endorsement of that online store. This use is intentional and for commercial gain. The Panel finds that these facts fall within the terms of 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 Matthew Kennedy
Sole Panelist
Date: June 11, 2020
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