Complainant is Sociedad Anonima Damm, Spain, represented by González-Bueno SLP, Spain.
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 October 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 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 November 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on November 30, 2020. On November 29, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 30, 2020, Complainant submitted a 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 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2021. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 12, 2021. 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, Sociedad Anónima Damm, is a Spanish brewery founded in Barcelona, which has grown to a multinational company with operations also in United States, United Kingdom and China, and a presence in over 120 countries. The record shows that one of its best known beer products includes Estrella Damm, a pale beer, which has been brewed since 1876 and now distributed internationally. Complainant is the owner of numerous ESTRELLA DAMM trademark registrations, including: International Trademark Registration No, 924729 for ESTRELLA DAMM mark, registered on February 26, 2007, designating various countries, including Japan and China; Complainant also owns several ESTRELLA DAMM domain names, including: The Domain Name was registered on October 9, 2020 and resolves to a website that features third party sponsored links to a wide range of products for sale, ranging from electronics to DIY (“Do It Yourself”) tools, phone accessories, household appliances, cameras, furniture, clothing, hats, handbags, glasses, food, sports drinks, jelly drinks, vehicle accessories, etc. 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 ESTRELLA DAMM mark and owns domain names incorporating the ESTRELLA DAMM mark. Complainant contends that Respondent registered and is using the Domain Name, which incorporates Complainant’s ESTRELLA DAMM mark in its entirety, to confuse Internet users looking for bona fide and well-known ESTRELLA DAMM products and services. 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, 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. Complainant submits in its communication to the Center on November 30, 2020 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese. Complainant contends that the Domain Name includes Latin characters and is registered in the new generic Top-Level Domain (“gTLD”) space with the English word “shop”. In addition, Complainant has presented evidence that the Domain Name resolves to a website that offers goods and services that features English terms, and the search engine offered by the site can also receive search terms in English. The record indicates that screen shots taken of the website that the Domain Name resolves to, features English terms such as “GO SHOPPING”, “NEW ARRIVAL”, “GENUINE VINTAGE DESIGN” etc. Complainant also contends that it is not acquainted with the Chinese language and it would be burdensome and disadvantageous for Complainant to translate and conduct the proceedings in Chinese. Complainant further contends that English is the dominant language of business and international communications, and requests that the proceeding be in English. In exercising its discretion to use a language other than that of the outstanding subject 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 comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using the Roman alphabet, and the Domain Name resolves to a website that features English terms and promotes products in English words. 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 translate all case relevant documents into Chinese and 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; and 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. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the ESTRELLA DAMM mark, which have been registered since at least as early as 2004, well before Respondent registered the Domain Name on October 9, 2020 as noted above. Complainant has also submitted evidence, which supports that ESTRELLA DAMM is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark ESTRELLA DAMM. With Complainant’s rights in the ESTRELLA DAMM mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.shop”), 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 identical or confusingly similar to Complainant’s ESTRELLA DAMM mark. Complainant’s mark is completely incorporated in the Domain Name. See WIPO Overview 3.0, section 1.7. Thus, the Panel finds that 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, it is evident that Respondent was, and is, aware of Complainant and the ESTRELLA DAMM marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the ESTRELLA DAMM 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 the Domain Name resolves to a website that features third party sponsored links to a wide range of products for sale, ranging from electronics to DIY (“Do It Yourself”) tools, phone accessories, household appliances, cameras, furniture, clothing, hats, handbags, glasses, food, sports drinks, jelly drinks, vehicle accessories, etc. 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. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). 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 you have registered or you have 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) you have 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) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the ESTRELLA DAMM mark long predates the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide. Indeed, the record shows that Complainant’s ESTRELLA DAMM mark and related products are distributed worldwide and are widely known and recognized. Complainant also has trademarks that are registered in numerous countries, including China, where Respondent resides and operates. Therefore, Respondent was likely aware of the ESTRELLA DAMM marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or 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. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known ESTRELLA DAMM trademark in its entirety, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the ESTRELLA DAMM marks, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. 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. As discussed above, the Domain Name resolves to a website that features third party sponsored links to a wide range of products for sale, ranging from electronics to DIY (“Do It Yourself”) tools, phone accessories, household appliances, cameras, furniture, clothing, hats, handbags, glasses, food, sports drinks, jelly drinks, vehicle accessories, etc. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of his website. Furthermore, such use by Respondent interferes with Complainant’s functions and activities, and may result in disrupting Complainant’s businesses. In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and is using 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
European Union Trade Mark Registration No. 004040622 for ESTRELLA DAMM mark, registered on January 3, 2006;
European Union Trade Mark Registration No. 003249828 for ESTRELLA DAMM LAGER BEER PREMIUM QUALITY mark and design, registered on November 11, 2004;
European Union Trade Mark Registration No. 001439207 for DAMM ESTRELLA DAMM mark and design, registered on August 20, 2004;
European Union Trade Mark Registration No. 006529374 for ESTRELLA DAMM INEDIT mark registered on December 4, 2008;
European Union Trade Mark Registration No. 006529739 for ESTRELLA DAMM INEDIT mark and design, registered on December 4, 2008;
European Union Trade Mark Registration No. 010650786 for ESTRELLA DAMM BARCELONA mark and design, registered on July 13, 2012;
Spanish Trademark Registration No. M2548339 for ESTRELLA DAMM LAGER BEER PREMIUM QUALITY mark and design, registered on December 16, 2003;
Spanish Trademark Registration No. M2805434 for ESTRELLA DAMM INEDIT mark and design, registered on June 1, 2008;
Spanish Trademark Registration No. M2730522 for ESTRELLA DAMM ZERO mark registered on May 1, 2007.
(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.
Sole Panelist
Date: February 26, 2021
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