The Complainant is Hurtigruten AS, Norway, represented by SANDS Advokatfirma DA, Norway.
The Respondent is Zhichao Yang (杨智超), 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 November 2, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 16, 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 in English on November 25, 2020. On November 16, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 25, 2020, the Complainant submitted a 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 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 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2021. The Center appointed Joseph Simone as the sole panelist in this matter on March 9, 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 The Complainant, Hurtigruten AS submitted a list of its registered trade marks in major jurisdictions around the world, including but not limited to: - International Trade Mark Registration No. 1329308 HURTIGRUTEN in Classes 16, 18, 25 and 39, registered on September 16, 2016, extended into China; - United States of America Trade Mark Registration No. 3185397 HURTIGRUTEN in Class 39, registered on December 19, 2006; - European Union Trade Mark Registration No. 0913193 HURTIGRUTEN in Classes 39, 41 and 43, registered on December 1, 2006. The disputed domain name was registered on August 21, 2020. The Complainant asserts that, at the time the complaint was filed, the disputed domain name resolved to pay-per-click parking website. 5. Parties’ Contentions A. Complainant The Complainant asserts that it has prior rights in the HURTIGRUTEN trade marks. The Complainant further notes that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s HURTIGRUTEN trade marks. The Complainant asserts that there is no evidence indicating that the Respondent is known by the HURTIGRUTEN trade mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also asserts that the disputed domain name is designed for commercial gain by attracting users searching for HURTIGRUTEN to accidentally end up on the Respondent's website, a classic and obvious example of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings In accordance with paragraph 11 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 for the disputed domain name is Chinese. Hence, the default language of the proceeding should be Chinese. However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting that the registration agreement of the domain name holder (i.e., the Respondent) is in English, and that this shows the Respondent is familiar with English and is sufficiently proficient in English to be able to use the language for legal purposes. The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint, and did not object or submit any further formal response. The Panel further notes that the disputed domain name resolved to pay-per-click parking website in English. Accordingly, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. B. Identical or Confusingly Similar The Panel acknowledges that the Complainant has established rights in the HURTIGRUTEN trade mark in many territories around the world. Disregarding the “.com” generic Top-Level Domain (“gTLD”), the disputed domain name “hurtigruen” only bears a one letter difference with the Complainant’s HURTIGRUTEN trade mark. Further, the HURTIGRUTEN mark seems inherently distinctive and unusual. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. Thus, the disputed domain name should be regarded as confusingly similar to the Complainant’s HURTIGRUTEN trade mark. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the HURTIGRUTEN trade mark and in showing that the disputed domain name is identical or confusingly similar to its mark. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. The Complainant has not authorized the Respondent to use its trade mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the case file establishes that the disputed domain name resolved at one point in time to an active website that advertised financial services with links redirecting users to third-party websites. Thus, the Panel holds that the Complainant has established its prima facie case with sufficient evidence. The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of 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 further finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. 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 trade mark 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 in 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 trade mark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers 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, given the prior use and fame of these marks. The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the distinctive mark HURTIGRUTEN was a mere coincidence. Ultimately, the Complainant’s registered rights in the HURTIGRUTEN trade mark for its signature services predate the registration date of the disputed domain name by almost a century, and a simple search on Baidu against the term “HURTIGRUTEN” would have revealed that it is a world-renowned brand in the arctic cruise industry. The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights and with the intention of taking advantage of the fame and reputation of the Complainant’s trade mark. In doing so, the Respondent has registered and used the disputed domain name to create a likelihood of confusion with the Complainant’s trade marks in order to attract Internet users. Furthermore, the Respondent was a respondent in in previous multiple UDRP complaints having been filed against him, and such behavior of registering trade mark-abusive domain names further reinforces the Panel’s view of establishment of bad faith. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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: March 23, 2021
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