The Complainant is DSM IP Assets B.V., Netherlands, represented by Legaltree, Netherlands.
The Respondent is 李建东 (Li Jian Dong), 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 July 21, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 24, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 27, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that 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 in English and Chinese of the Complaint, and the proceedings commenced on July 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2020. The Center appointed Joseph Simone as the sole panelist in this matter on September 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. On September 21, 2020, the Panel issued, in English and Chinese, the Administrative Panel Procedural Order No.1 (the “Panel Order”), inviting the Respondent to comment on the Complaint (due to an apparent issue with the notification), on the Chinese company“河南迪斯曼生物科技有限公司” (Henan Di Si Man Biotechnology Co. Ltd.) on the website at the disputed domain name, and on the Complainant’s assertion that the Respondent falsely claimed that the Chinese company Henan Di Si Man Biotechnology Co. Ltd. was a licensee of a large Dutch company “荷兰迪斯曼化工作物营养公司” (Dutch Disiman Chemical Group Nutrition Co. Ltd.) because this Dutch company does not exist. The Respondent did not comment on the Panel Order nor did the Complainant. 4. Factual Background The Complainant, DSM IP Assets BV, is part of the large and well-known Dutch company Koninklijke DSM N.V. (Royal DSM), established in 1902 in Heerlen, the Netherlands. Royal DSM is a global company specializing in the production and sale of goods in the nutrition, health and sustainable living sectors, including chemical raw materials and pharmaceuticals. The Complainant is the owner of a large portfolio of trademarks, which include the following: - International Registration No. 702967 帝斯曼 (DSM in Chinese characters), registered on October 23, 1998, inter alia, designating China, for goods and services in classes 1 (including chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry), 2, 5, 17, 22, 23, 24 and 42; and - European Union Trade Mark No. 001583053 DSM, registered on February 5, 2003, for goods and services in classes 1 (including chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry and fertilizers), 2, 3, 4, 5, 17, 19, 22, 23, 24, 29, 30, 31, 32, 33 and 42. The DSM trademarks have been in use for many decades throughout the world (including in China) in various industries, including the chemical, food and nutritional industries (such as food ingredients and additives) as well as the textiles and clothing, manufacturing and equipment, electrical and electronics industries. The disputed domain name was registered on January 18, 2016. According to the archived website in January 2018 provided by the Complainant, the disputed domain name resolved to a website that featured a Chinese company by the name of “河南迪斯曼生物科技有限公司”(Henan Di Si Man Biotechnology Co. Ltd.) which advertised fertilizers and claimed to be founded in April 2010 as the first Chinese subsidiary of a Dutch company, “荷兰迪斯曼化工作物营养公司” (Dutch Disiman Chemical Group Nutrition Co. Ltd.). The Complainant sent a cease and desist letter to Henan Di Si Man Biotechnology Co. Ltd. in February 2018. However, no reply was received. At the time of filing the Complaint, the Complainant provided evidence that the disputed domain name resolved to a newly designed website that still features the same Chinese company advertising fertilizers. However, information regarding this Chinese company being a subsidiary of Dutch Disiman Chemical Group Nutrition Co. Ltd. was no longer found on the website. At the time of this decision, the Panel notes that a business license has been uploaded to the website which shows that this Chinese company was established in 2015 as a limited liability company with the sole investor being a natural person. 5. Parties’ Contentions A. Complainant The Complainant asserts that it has prior rights in the DSM trademark in Chinese characters and DSM trademarks and that it is a leading player in its fields of business on a global basis. The Complainant further notes that the disputed domain name registered to and used by the Respondent is confusingly similar to the Complainant’s Chinese-character name for DSM, the Mandarin pronunciation of which is “Di Si Man”. As such, the Complainant claims that the disputed domain name has comprised the Complainant’s DSM trademark in Chinese characters in its entirety. The Complainant further points out that information on the 2018 archived website regarding the source of the products sold on the website is inaccurate. Specifically, the claimed licensor, a Dutch company that goes by the Chinese name “荷兰迪斯曼化工作物营养公司” (Dutch Disiman Chemical Group Nutrition Co. Ltd.) is nowhere to be found in the register of the Dutch Chamber of Commerce or through Internet searches. The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, and that it has not authorized the Respondent to use the DSM trademark or the Chinese-character version of the DSM trademark. The Complainant also stresses that the Respondent is not commonly known by the disputed domain name and that to the Complainant’s knowledge, the Respondent has not acquired any trademark or service mark rights in “Di Si Man”, at least not prior to when the Complainant obtained rights to any of its DSM trademark registrations. The Complainant also asserts that the disputed domain name suggests a link between the Complainant and the Respondent, given that information on the website associated with the disputed domain name referred to Henan Di Si Man Biotechnology Co. Ltd. as the licensee of a large Dutch company. Lastly, the Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith, with the intent to misappropriate the Complainant’s identity, or at least to create confusion. Furthermore, this bad faith use is emphasized by the fact that the Respondent falsely claims that Henan Di Si Man Biotechnology Co. Ltd. is the licensee of a well-known and large Dutch company, a description which applies to the Complainant and its parent company, Royal DSM. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding In accordance with 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.” In this case, the language of the Registration Agreement of the disputed domain name is in Chinese. As such, the default language of the proceeding should be in Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding because (a) the disputed domain name is registered in Latin script rather than Chinese script, (b) English is widely used in international relations, (c) proceeding in Chinese would not only cause unwarranted delay but also lead to very high costs for the Complainant who would need to retain specialized translation services. The Panel finds that the Respondent was notified of each step of the proceeding in both Chinese and English but did not submit any response. Nor did the Respondent comment on the language of the proceeding. Given this, the Panel sees no reason to request the Complainant to translate the Complaint into Chinese. Accordingly, the Panel decides that the language of the proceeding shall be English, and the Panel shall proceed with a decision in English. 6.2 Substantive Matters A. Identical or Confusingly Similar The Panel acknowledges that the Complainant has established rights in the DSM trademark in Chinese characters and DSM trademark on a global basis. Here, the Panel must point out that the Chinese name for DSM cited by the Complainant is actually rendered as 帝斯曼 (DSM in Chinese characters), as noted in the Appendix submitted by the Complainant, and confirmed through search results on the China Trademark Office Database (“CTMO Database”). The alternate version claimed by the Complainant, and the version used on the website associated with the disputed domain name, is rendered in a different form: 迪斯曼 (“Alternate DSM”). For the sake of clarity, the Panel offers the following explanations: - Both the DSM trademark in Chinese characters and Alternate DSM share the same pronunciation in Mandarin Chinese (save for the first character due to different tones), as well as the same Pinyin romanization; - But the first character in both trademarks are different in terms of appearance and meaning. The “Di”（帝）in the DSM trademark in Chinese characters can be translated as “emperor”, whereas the “Di”（迪）in the Alternate DSM has no specific meaning when used alone and is commonly used in transliterations of foreign words; - As for the remaining two characters, “Si Man”, both have adopted the same Chinese characters. These two Chinese characters have no specific meaning when used alone and are commonly used in Chinese transliterations of foreign words. Both the DSM trademark in Chinese characters and Alternate DSM are represented as “Di Si Man” in the Pinyin romanization of Mandarin (the official language in China). Therefore, it cannot be denied that the disputed domain name contains a term that is phonetically identical to the Complainant’s DSM trademark in Chinese characters. Meanwhile, while the disputed domain name also includes “China”, it is merely a geographic term, the addition of which does not preclude a finding of confusing similarity. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the DSM trademarks and in showing that the disputed domain name is identical or confusingly similar to its trademarks. B. Rights or Legitimate Interests The Panel has conducted trademark proprietorship searches using the CTMO database, which confirmed the following: - The Complainant only owns registrations for the DSM trademark in Chinese Characters, but not the Alternate DSM; - The company featured on the website associated with the disputed domain name, i.e., 河南迪斯曼生物科技有限公司 (Henan Di Si Man Biotechnology Co. Ltd.), owns the following registration and pending application for the Alternate DSM trademark 迪斯曼: a) Registration No. 21189560 – Class 1 (covering various fertilizers) – Registered on November 7, 2017; and b) Trademark Application No. 42514932 – Class 5 (covering various pests killing chemicals), filed on November 21, 2019. However, the Respondent has failed to provide evidence proving he has a relationship with Henan Di Si Man Biotechnology Co. Ltd. The Panel cannot simply assume that the Respondent is affiliated with Henan Di Si Man Biotechnology Co. Ltd. The Panel can only agree that the Complainant has confirmed that it is not related to, or has any business with, the Respondent; and that the Respondent has not been authorized to use or register the disputed domain name. The Respondent appears to be an individual, and there is nothing in the evidence to suggest that the Respondent is commonly known by either the DSM trademark in Chinese characters or the Alternate DSM trademarks, or that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent also has not put forward evidence showing his relationship to Henan Di Si Man Biotechnology Co. Ltd., thereby failing to establish that he enjoys rights or legitimate interests in the disputed domain name. In light of the above, the Complainant has established a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this presumption. The Panel therefore concludes that the Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy is evident in this case. Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. The Panel notes that not only has the Chinese company featured on the website associated with the disputed domain name held a trademark registration for the Alternate DSM 迪斯曼 since November 2017 covering the fertilizer products available on the website, but the Alternate DSM 迪斯曼also forms part of its company name. The Panel is fully aware of the arguments made by the Complainant, such as Henan Di Si Man Biotechnology Co. Ltd.’s false claims concerning its association with a large Dutch Company, which potentially misled consumers into believing that it is connected with the well-known and long established Dutch Complainant. Such allegedly inaccurate, misleading and potentially false marketing statements fall under the purview of various laws in China, including laws prohibiting false advertising and/or unfair competition, but are, in the Panel’s view, outside the scope of UDRP proceedings. Although the disputed domain name resolves to a website with an apparently bona fide offering of goods under the Alternate DSM 迪斯曼trademark owned by Henan Di Si Man Biotechnology Co. Ltd., the Respondent has failed to file a response clarifying his exact relationship with this company. As such, while Henan Di Si Man Biotechnology Co. Ltd. might have legitimate rights to use the “di si man” Pinyin and the Alternate DSM trademarks in the normal course of business if it were the registrant of the disputed domain name, the Respondent does not. The Panel further notes that the first few Internet search results all point to the Complainant’s entities and business in China, and as such, the Panel finds on balance of probabilities that the Respondent should have been aware of the Complainant’s business and its dominant DSM trademark registrations in China at the time of registration of the disputed domain name. As such, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s marks with the intent to unlawfully profit therefrom. Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) 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 Joseph Simone
Sole Panelist
Date: October 13, 2020
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