The Complainant is Air Supplies Holland B.V., Netherlands, represented by Van Doorne N.V., Netherlands.
The Respondent is Huizhou Hicool Climate Equipment Co., Ltd, China / li fang chen (李芳晨), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2020. On June 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 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 June 18, 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 amendment to the Complaint on June 19, 2020. On June 18, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on June 19, 2020. The Respondent commented on July 13, 2020on the language of the proceeding by email, essentially stating in English and Chinese that the Center has accepted the Complaint as filed in English, accepts a Response in either language and that a Panel familiar with both languages will be appointed, if available. On July 25, 2020, the Respondent filed its Response in English. The Center verified that the Complaint together with the amendment to 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 of the Complaint, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. On July 13, 2020, the Respondent sent an email requesting the extension of the Response due date. On July 14, 2020, the Center granted the extension of the time until July 25, 2020. On July 25, 2020, the Respondent filed the Response. Accordingly, the Center proceeded to appoint the Administrative Panel on July 27, 2020. On July 30, 2020, the Complainant sent an email to the Center requesting to appoint a three-member panel, accompanied by supplemental filings. On July 31, 2020, the Center acknowledged the receipt of the Complainant’s email, and invited the Respondent to submit any comments on this request by August 5, 2020. On August 5, 2020, the Respondent sent an objection email to the Complainant’s request accompanied by its own supplemental filings. On August 7, 2020, the Center acknowledged receipt of the Respondent’s objection and supplemental filing of August 5, 2020 and proceeded to appoint a single-member administrative panel. However, on August 11, 2020, the Complainant sent another email requesting the Center to reconsider and clarify the decision on the appointment of a single-member Panel. The Center acknowledged receipt of the Complainant’s email on August 12, 2020, and further clarified that the Complainant had the opportunity to select either a single-member or three-member panel in its Complaint, when filed. The Center further clarified that since the Complainant elected a single-member panel in its Complaint, and the Respondent did not elect a three-member panel in its Response, the Center appointed a single-member panel in this case. In light of the objections of the Respondent to a three-member panel, the Center appointed a single-member Panel in accordance with paragraph 6 of the Rules. Therefore, the Center appointed Deanna Wong Wai Man as the sole panelist in this matter on August 13, 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 is a company incorporated in the Netherlands, and is active in the field of developing, producing and selling air conditioning systems, mainly for professional use, which are branded with the trademark OPTICLIMATE. The Complainant sources its products from China, and commercializes them through distribution channels in European Union, the United States of America, and Australia. The Complainant owns registered trademarks for OPTICLIMATE (word and device marks), i.e., Benelux trademark number 0952447, registered on May 7, 2014 and European Union trademark number 8632119, registered on March 16, 2010. The Respondent is a company established in Huizhou, Guangdong Province, China and is represented by its director Li Fang Chen (李芳晨), also known as Mary Lee. The Respondent is a manufacturer of air conditioning systems also branded as OPTICLIMATE, and commercializes these products in European Union, among other jurisdictions, through a distributor, Climate Perfection BV, established in the Netherlands. The Respondent owns a registered trademark for HICOOLAC, i.e., Chinese trademark number 34176442, registered on June 28, 2019 and provides evidence (uncontested by the Complainant) that on December 1, 2018 it obtained a ten year license to use Chinese device mark OPTICLIMATE, Chinese registration number 37023156, registered on November 21, 2019 from Huizhou Conet Harness Co. Ltd for air conditioning products and related products. The Respondent also provides a number of patent registration certificates, which it claims protect certain technical features in its products. The disputed domain name was created on August 29, 2018. The disputed domain name directs to an active webpage hosted by the Respondent, which provides information regarding the Respondent and its business and offers for sale air conditioning systems branded with the mark OPTICLIMATE. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the Respondent is a counterfeiter of its branded products, and that this administrative proceeding fits in the framework of a wider legal dispute regarding alleged trademark and design right infringement by the Respondent and its European distributor Climate Perfection BV. The Complainant refers on multiple occasions in its Complaint and supplemental filings to prior judicial proceedings against the Respondent’s European distributor Climate Perfection BV, where the Complainant claims to have prevailed. Nevertheless, the Complainant does not submit any judgment or other evidence regarding this procedure, so that the Panel cannot form a clear view on such procedure(s) or its outcome. As to the specific merits of this administrative proceeding, the Complainant firstly contends that the disputed domain name is confusingly similar to its trademarks for OPTICLIMATE, since the disputed domain name incorporates its trademarks in its entirety and because the addition of the term “hicool”, which it argues is purely descriptive, would not prevent a finding of confusing similarity. Secondly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the use of a domain name for an illegal activity (here: the sale of alleged counterfeit goods), can never confer rights or legitimate interests. The Complainant supports this contention with arguments regarding the Respondent’s alleged design right infringement concerning a remote control used with its products, the Respondent’s alleged trademark infringement through use of OPTICLIMATE, the sales by the Respondent of its products at a price allegedly disproportionally below the market value, and the Respondent’s alleged copyright infringement through its use of images and videos allegedly owned by the Complainant on the website linked to the disputed domain name. The Complainant also argues that the Respondent’s rights in the Chinese trademarks for OPTICLIMATE are not relevant, because the website linked to the disputed domain name does not target consumers in China, but in European Union, i.e., the territory where the Complainant owns its registered trademarks. The Complainant also contends that the Respondent’s trademark rights in China were primarily obtained to circumvent the application of the UDRP, and that these should therefore not be accepted as legitimate rights by the Panel. Thirdly, as to use and registration in bad faith, the Complainant essentially argues that illegal activity (here: the sale of alleged counterfeit goods by the Respondent) must be considered evidence of bad faith, and that the disputed domain name was registered and used primarily for the purpose of disrupting the business of the Complainant, by intentionally attracting Internet users to its website by creating confusion, or at least a likelihood of confusion with the Complainant’s products. B. Respondent The Respondent essentially contends that the disputed domain name is not confusingly similar to the Complainant’s trademarks because it is materially different and clearly distinguishable, due to the addition of the term “hicool”, which is the Respondent’s company name. Moreover, the Respondent contends that it has rights and legitimate interests in the disputed domain name because it contains its company name “hicool”, its Chinese trademark HICOOLAC and the Chinese trademark OPTICLIMATE for which it has obtained a license. The Respondent also submits that the disputed domain name was registered in good faith two years before this administrative proceeding, that it is a unique name and its sole identifier on the Internet, and should therefore belong exclusively to the Respondent. The Respondent finally also submits that the mark OPTICLIMATE refers to its patented technology, by which climate is controlled through optical technology. Furthermore, as to the third element under the Policy, the Respondent contends that the disputed domain name was registered and is being used in good faith, in support of its legitimate business, and for the promotion and commercialization of its patented products. The Respondent contends it has no subjective will or behavior of intellectual property infringement, and that its sales in European Union are in the form of cooperation with dealers, who sell under the dealers’ brands. The Respondent finally also contends that the Complainant’s own products violate intellectual property rights because they allegedly infringe on the Respondent’s Chinese patents. 6. Discussion and Findings 6.1. First Preliminary Issue: Language of the administrative proceeding Pursuant to paragraph 11(a) 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. The language of the Registration Agreement is Chinese. Nevertheless, the Complainant filed its Complaint and all other documents and communications in this proceeding in English, and requested that English be the language of the proceeding on June 19, 2020. The Respondent did not comment on the language of the proceeding by the due date for comments, but submitted comments by email well after the fact, essentially stating in both English and Chinese that the Center has accepted the Complaint as filed in English, accepts a Response in either language and that a panel familiar with both languages will be appointed, if available. The Respondent subsequently filed its Response in English on July 25, 2020, and used alternately English and Chinese for its further communications in this proceeding. In considering the Complainant’s request that the language of the proceeding be English, the Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the Respondent’s comments on the language of the proceeding; the Panel’s conclusion that the Respondent is able to understand and communicate in English because the Parties conducted communication prior to this proceeding in English, because the website hosted at the disputed domain name is exclusively in English and because the Respondent filed its Response and sent various communications in this proceeding in English. The Panel also considers that Chinese as the language of the proceeding could lead to unwarranted delays and costs for Complainant. In view of the above elements, the Panel rules that the language of the proceeding shall be English. However, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the Panel accepts all communications and documents in Chinese submitted by the Respondent, and does not require a translation thereof. 6.2 Admissibility of the supplemental filings by both Parties Regarding the admissibility of the supplemental filings, on July 30, 2020, the Complainant submitted to the Center a request for a three-member panel, accompanied by a supplemental filing. On August 5, 2020, the Respondent submitted comments in reply to the Complainant’s request for a three-member panel, also accompanied by a supplemental filing. The Rules grant the Panel sole discretion to determine the admissibility of unsolicited supplemental filings. The consensus opinion of administrative panels on this issue, set out in section 4.6 in the WIPO Overview 3.0, states as follows: “Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. On receipt of a request to submit an unsolicited supplemental filing or the actual receipt of such filing, the WIPO Center will confirm receipt of the request or filing to the parties, and forward such request or filing to the panel for its consideration as to admissibility. In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some ‘exceptional’ circumstance).” The Panel finds that the supplemental filings of both Parties are relevant to the case, since they further clarify arguments made in the Complaint and Response respectively, and that admitting the supplemental filings would be equitable, because both Parties have submitted their own supplemental filings, so that the right of defense and rebuttal of each Party has been respected. The Panel therefore admits the supplemental filings into the proceeding. The supplemental filings have been considered and taken into account by the Panel in reaching this decision. 6.3. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark OPTICLIMATE based on its registration and use of the same as a Benelux and European Union trademark. Moreover, as to confusing similarity, the disputed domain name can be considered as two main parts namely the Respondent’s company name “hicool” and Complainant’s registered European Union / Benelux trademark OPTICLIMATE, the Panel does not accept the Complainant’s contention that the Respondent’s company name “hicool” is a merely descriptive term for air conditioning equipment, but notes that it does have a suggestive or descriptive element to it. Nevertheless, in assessing the confusing similarity of the disputed domain name to the Complainant’s trademark, the Panel refers to the WIPO Overview 3.0, section 1.7, which provides: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Panel notes that in this case, the disputed domain name incorporates the entirety of the Complainant’s trademark, and concludes that the disputed domain name is therefore confusingly similar to the Complainant’s trademarks. The Panel finds that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests In reviewing the submissions of the Parties regarding rights or legitimate interests of the Respondent in the disputed domain name, the Panel would firstly like to clarify that while it is mindful of historical concerns with first-to-file national trademark registration regimes and reforms thereto, it does not have the authority to judge the claims and counterclaims regarding the validity and infringement of trademarks, design rights or patents presented by both Parties in their submissions, which remain the exclusive jurisdiction of the respective courts, intellectual property offices, and customs authorities. The Panel generally needs to accept the prima facie validity of the trademarks and other registered intellectual property rights submitted to it by the Parties, and does not have the competence to decide disputes through a “weighing” of respective trademark rights, or to “look behind” a trademark granted by a national authority to question or re-assess its validity (see in this regard Mubadala Trade Marks Holding Company, LLC, Al Yah Satellite Communications Company PrJSC, and Al Maisan Satellite Communications Company, LLC v. Emedia Development Ltd. and Whois Privacy Services Pty Ltd.WIPO Case No. D2013-0570). This may well be different if the Complainant were challenging the underlying trademark registrations, but it has not presented evidence that this is the case. The Panel notes that the Respondent has submitted evidence that it uses “hicool” as its company name and is commonly known under that name, that it owns the Chinese trademark for HICOOLAC and that it holds a license agreement (uncontested by the Complainant) for the Chinese trademark OPTICLIMATE (the Panel notes that this trade mark is still valid). In this regard, the Panel refers to the WIPO Overview 3.0, sections 2.12.1 and 2.12.2: “Panels have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element. The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). Absent evidence of such circumstances indicating pretext however, panels have been reluctant to reject a respondent trademark registration out of hand.” In the present case, based on the evidence filed, the Panel is unable to agree with the Complainant’s reasoning that the Respondent’s rights in its Chinese trademarks (i.e., HICOOLAC and OPTICLIMATE) are irrelevant because the disputed domain name allegedly targets consumers in European Union, and not in China. Given the global nature of the Internet and the Domain Name System and the territoriality of trademark rights, it is acknowledged that the Respondent can have rights or legitimate interests in the disputed domain name in a certain jurisdiction. It is not required that the Respondent has rights or legitimate interests in all jurisdictions globally, or in the Complainant’s home jurisdiction. Whether the Respondent’s products infringe on the Complainant’s trademarks in the European Union or not, is not a matter for the Panel to decide, but remains the exclusive competence of the local courts and authorities. In particular, the Panel notes that the Complainant does not provide any evidence showing that the Respondent’s trademark and license in China were primarily obtained to circumvent the application of the UDRP. The Panel was not provided with the earlier judgment(s) and litigation particulars between the Parties and hence is unable to take unsubstantiated statements into consideration regarding the alleged intention of the trademark and license arrangements. The Panel notes from the evidence submitted that the Respondent obtained its license under the Chinese OPTICLIMATE mark on December 1, 2018, i.e., approximately a year and half before the Complaint was filed. The Respondent also obtained its trademark in the Chinese HICOOLAC mark on June 28, 2019, i.e., approximately a year before the Complaint was filed. The Respondent moreover provides evidence that it has used its marks and domain name intensively for commercial purposes, i.e., manufacturing its products in China and commercializing them, including abroad through its distributors. The Panel notes that the burden of proof remains on the Complainant (WIPO Overview 3.0, section 2.1), and concludes that under these circumstances and given the lack of concrete indications or evidence submitted by the Complainant, it is unable to accept or rely on the Complainant’s argument that the Respondent obtained its Chinese trademark rights primarily to circumvent the application of the UDRP. On the basis of the above elements, the Panel finds that the Complainant has therefore failed to satisfy the requirements of the second element under the Policy. C. Registered and Used in Bad Faith In view of the Panel’s findings in relation to the second element, the Panel need not come to a conclusion on whether the Complainant has met the requirements of the third element under the Policy. The Panel would note that the present dispute forms part of a larger intellectual property-based dispute between the Parties, and these are better addressed in court. 7. Decision For the foregoing reasons, the Complaint is denied. Deanna Wong Wai Man
Sole Panelist
Date: August 27, 2020
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