Complainant is MBIP Nominees Pty Ltd, Australia, represented by Bespoke, Australia.
Respondent is Chen Jia Xing, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 25, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on July 6, 2020. On June 25, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 30, 2020, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 28, 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 Complainant is an Australian company and part of the Mecca group of companies, a retailer of local and international beauty, skincare and cosmetic services and products since 1997. It is the owner of trademarks for the name and logos for MECCA in jurisdictions worldwide (the “Trademark”) including Australia, Canada, China, European Union, Hong Kong, China, Indonesia, Japan, Malaysia, New Zealand, Singapore, South Africa, Republic of Korea, United Kingdom and United States of America (the “Mecca Marks”). An example of their trademarks includes Australian registered trademark no. 1655735, registered on October 31, 2014. Complainant also owns and operates a number of domain names with the MECCA trademark, including: The Domain Name was registered on January 14, 2019 by Respondent who is based in China. It resolves to a website available in English language (the “Website”), which bears Complainant’s MECCA trademark, and features products, layouts and designs that are either identical or similar to those listed and used by Complainant in Complainant’s online operations and on Complainant’s website. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the MECCA marks and has rights in the Domain Name incorporating the MECCA mark. Complainant contends that Respondent registered and is using the Domain Name to confuse and mislead consumers looking for bona fide and well-known MECCA products and services of MECCA or authorized partners of MECCA. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name and related website, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in 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 is Chinese. Complainant submits in its communication to the Center on June 30, 2020 and in the Complaint that the language of the proceeding should be English. Complainant contends that the Domain Name resolves to a website that is available in English, and that the website’s legal disclaimers and terms are in English – indicating a willingness and capacity by Respondent to communicate in English. In addition, Complainant notes that Respondent has been involved in other UDRP matters where the panel has found there to be persuasive evidence that Respondent had sufficient knowledge of the English language and for the language of the proceeding to be in 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 accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to respond to the Complaint or comment on the language of the proceeding. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MECCA marks, which have been registered since at least as early as 2014, which predate the registration of the Domain Name on January 14, 2019. With Complainant’s rights in the MECCA marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s MECCA trademark. This mark, which is fanciful and inherently distinctive, is recognizable in the Domain Name. The addition of the term “outlet” in relation to the MECCA mark in the Domain Name does not change the overall impression produced by the Domain Name and does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent. Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MECCA trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of filing of the Complaint, Respondent registered and was using the Domain Name to confuse and mislead consumers looking for bona fide and well-known MECCA products and services of Complainant or authorized partners of Complainant. The Domain Name resolves to a website, available in English, which bears Complainant’s trademark, and features products, layouts and designs that are either identical or similar to those listed and used by Complainant in Complainant’s online operations and on Complainant’s website. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that the respondent has registered or 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 your documented out of pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on your website or location.” The historical WhoIs record provided by Complainant shows that Respondent registered the Domain Name on January 14, 2019. The Panel notes that Complainant’s earliest MECCA trademark on record has been registered since October 31, 2014. Therefore, the Panel finds that Complainant’s registration and use of the MECCA marks predate the registration of the Domain Name by Respondent by several years. Complainant is also well established and known worldwide. Therefore, Respondent is likely aware of the MECCA marks when Respondent registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Further, the Domain Name includes Complainant’s well-known MECCA trademark, with the addition of the term “outlet”, which suggests Respondent’s actual knowledge of Complainant’s rights in the MECCA marks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking for bona fide and well-known MECCA products and services of Complainant or authorized partners of Complainant. The Domain Name resolves to a website, available in English, which bears Complainant’s trademark, and features products, layouts and designs that are either identical or similar to those listed and used by Complainant in Complainant’s online operations and on Complainant’s website. The use of the MECCA mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. Such use and association of the Domain Name with offers of outlets could result in causing confusion with Complainant’s business and activities. It may confuse Internet users who are looking for Complainant’s legitimate website and deceive Internet users into thinking that Respondent is somehow connected to Complainant, which is not the case. There are no contact details on the Website, which could suggest that personal data and credit card details entered by customers could potentially be collected and used for nefarious purposes. Such use of the Domain Name could be highly disruptive to Complainant’s business activities and reputation. In addition to the circumstances referred to above, Respondent appears to have provided incorrect/false or incomplete information in its registration information. Respondent’s failure to file a response and the undelivered Written Notice to Respondent due to false or incorrect contact details are further indicative of Respondent’s bad faith. Accordingly, the Panel finds in view of the above, that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of 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 Domain Name Kimberley Chen Nobles
Sole Panelist
Date: September 9, 2020
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