The Complainant is GS1 AISBL, Belgium, represented by Osborne Clarke scrl, Belgium.
The Respondent is ding jian long, kun shan shi lian yin tong bao zhuang cai liao you xian gong si (丁建龙, 昆山市联印通包装材料有限公司), China, self-represented. 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 13, 2020. On November 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 17, 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 amended Complaint in English on November 20, 2020. On November 17, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 19, 2020, the Complainant confirmed its request that English be the language of the proceeding. On November 20 and 21, 2020, the Respondent commented on the language of the proceeding. On November 17, 2020, the Center received the Respondent’s enquiry email in English. On November 20, 2020, the Center sent an email regarding possible settlement to the Parties. The Complainant did not request for a suspension. 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2020. On December 3, 2020, the Respondent commented on the language of the proceeding and requested Chinese be the language of the proceeding. The Response was filed in Chinese with the Center on December 20, 2020. On January 8, 2021, the Center received the Complainant’s supplemental filing in English. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 26, 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. On February 1, 2021, the Panel issued a procedural order, inviting the Respondent to comment solely on the Complainant’s unsolicited supplemental filing of January 8, 2021, and to submit such comments to the Center by February 7, 2021. The Respondent did not submit any comments. 4. Factual Background The Complainant is a non-profit organization that develops and maintains supply chain standards for use in business transactions, particularly including barcodes. The Complainant is headquartered in Brussels, Belgium and is active globally through a network of offices in over 110 countries and has more than 2 million members. The Complainant owns a portfolio of trademark registrations for the mark GS1, for instance international trademark registration 850909 for the word mark GS1, registered on April 26, 2005 and designating, amongst other jurisdictions, China and Singapore, and international trademark registration 850908 for the GS1 logo, registered on April 26, 2005 and designating, amongst other jurisdictions, China and Singapore. The Complainant also owns a portfolio of official domain names, such as The Respondent is a company established in Kunshan City, China, and its main business activities are providing label design and printing services. The disputed domain name directs to an active website, which provides information and offers the Respondent’s label design and printing services to customers, and includes a free barcode generator. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical to its trademarks for GS1, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant particularly claims that the Respondent is active in the same or, at least, a closely related field of industry (i.e. standards and barcodes market) and operates in the same geographic area (China) as the Complainant, and is therefore a direct competitor of the Complainant. The Complainant contends that the Respondent is offering goods and services that are intentionally competitive with the Complainant’s and that it registered the disputed domain name to capitalize on customers’ confusion with its registered trademarks, which, the Complainant claims, does not confer any rights or legitimate interests in respect of the disputed domain name on the Respondent, and constitutes use in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent contends that there is no competition between the Respondent and the Complainant as the Parties have a different scope of activity, i.e. it is a manufacturing company mainly providing label printing services, while the Complainant is an international standard setting organization formulating and regulating standards for barcodes and radio frequency identification tags. The Respondent also claims that the Complainant does not have the right to possess all GS1 domain names, and refers to the fact that there are still many domain names containing GS1, under an array of generic Top-Level Domains (“gTLD”s), that are still registrable. The Respondent also contends that the content of its website does not mislead Internet user that it has any special relationship with the Complainant, and that it also provides a free open-source barcode generator, from which it obtains no profits. The Respondent requests that the Complaint be denied. 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 Complainant submitted its Complaint in English, and requested that the language of the proceeding be English. On November 17, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 19, 2020, the Complainant confirmed its request that English be the language of the proceeding, essentially referring to the fact that Chinese as the language of the proceeding would put it at a disadvantage, that English is widely used as an international language and that there are indications that the Respondent is able to communicate in English in this proceeding. On November 17, 2020, the Center received the Respondent’s enquiry email in English and on November 20 and 21, 2020, the Respondent commented on the language of the proceeding. The Respondent essentially requested that Chinese be the language of the proceeding, claiming that it does not understand English sufficiently to defend its interests in this proceeding. Given the circumstances of this case, the Center accepted the Complaint as filed in English, accepted the Response as filed in Chinese, and appointed the present Panel, which is familiar with both English and Chinese. 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 request that the language of the proceedings be Chinese; the fact that the website linked to the disputed domain name contains text in English and Chinese, and that the Respondent sent an email to the Center exclusively in English on November 17, 2020 and thereafter sent various communications bilingually in English and Chinese, as well as the fact that in its Response, the Respondent replies to the specific arguments presented in the Complaint (which was written exclusively in English), from which the Panel deducts that the Respondent is able to understand and communicate in English. The Panel also refers to the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. Nevertheless, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.5.1, the Panel accepts the Response in Chinese, and does not require a translation of the Response into the language of the proceedings. 6.2 Second Preliminary Issue: Admissibility of the supplemental filing by the Complainant Regarding the admissibility of the Complainant’s 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 of 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 Complainant’s unsolicited supplemental filing is relevant to the case, and that admitting the supplemental filing would be equitable. The Panel has given the Respondent sufficient time to reply to the supplemental filing through the procedural order issued on February 1, 2021, and the Panel concludes that the Respondent’s rights of defense and rebuttal were respected. For the above reasons, the Panel admits the Complainant’s supplemental filing into the proceeding. The supplemental filing has 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 shown that it has rights in the mark GS1, based on its intensive use and registration of the same as a trademark in a large number of jurisdictions. Moreover, as to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, the Panel notes that the disputed domain name only consists of the Complainant’s registered trademark GS1. The applicable gTLD, namely “.shop” in this case, is viewed as a standard registration requirement, and as such is disregarded by the Panel, see WIPO Overview 3.0, section 1.11.1. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant. The Panel also accepts that the Respondent is not making legitimate noncommercial use or fair use of the Complainant’s trademarks, since the Respondent uses such trademarks in the disputed domain name to attract Internet users to its website, where it offers its services for commercial gain. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). In its Response, the Respondent essentially contends that it has rights or legitimate interests in the disputed domain name because it is a genuine manufacturing company mainly providing label design and printing services, and because the Parties are not competing on the same market. The Panel further notes that the Respondent argues that the GS1 barcode is an open and usable coding standard, but that does not mean per se that the Respondent is entitled to register a domain name identical to the Complainant’s GS1 trademarks. The Panel refers to WIPO Overview 3.0, section 2.8.1. UDRP panels habitually recognize that service providers using a domain name containing a complainant’s trademark may be making a bona fide offering of goods and services, if their behavior meets the “Oki Data test”, set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. This test requires that the Respondent meet the following cumulative requirements: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. In this case, while the Respondent may not be technically considered a reseller or distributor of the Complainant’s products, the Panel finds there is clear analogy between the Respondent’s situation and the ones considered in WIPO Overview 3.0, section 2.8.1, and accordingly will assess this case under the so-called Oki Data test. In this regard, the Panel considers that the Respondent’s behavior does not comply with the requirements of the “Oki Data test”, and particularly with parts (ii) and (iii) of such test, since the Respondent also offers its own unrelated label designing and printing services on the website linked to the disputed domain name, and note the Respondent does not disclose or disclaim its total lack of relationship or connection to the Complainant anywhere on the website linked to the disputed domain name. To the contrary, the Respondent prominently uses the Complainant’s GS1 trademarks in large font at the top of its homepage, and at several other webpages of such website, thereby suggesting at least some kind of business connection to the Complainant. The Panel also finds that the registration by the Respondent of the disputed domain name, which is identical to the Complainant’s trademark, causes a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). Other elements in this proceeding also lead the Panel to conclude that the Respondent has no rights or legitimate interests in the disputed domain name, such as the fact that the label printing services offered by the Respondent on the website linked to the disputed domain name seem to fall within, or are at least closely related to the scope of services for which the Complainant’s trademark is registered (even in the Respondent’s home jurisdiction China), and the fact that the Respondent provides a free bar code generator, which is one of the Complainant’s core business activities, and explicitly refers to the Complainant’s GS1 trademarks. Finally, the Panel also refers to WIPO Overview 3.0, section 2.14, and concludes that the choice of the descriptive and suggestive “.shop” gTLD by the Respondent further supports the Panel’s finding that the Respondent obtained the disputed domain name to take advantage of the Complainant’s mark, and, as such, that the Respondent lacks rights or legitimate interests in the disputed domain name. Finally, as to the Respondent’s argument that the Complainant does not have the right to possess all GS1 domain names, stating that there are still many domain names containing GS1 that are still registrable, the Panel refers to the Policy and the Rules, which clearly give a trademark owner the right to file a UDRP proceeding whenever it believes its trademarks are abused in a domain name registration, regardless of whether its trademarks are still registrable as domain names under certain Top-Level Domains. The Complainant has provided sufficient evidence that its registered trademarks for GS1 are famous and enjoy a strong reputation, including in the Respondent’s home jurisdiction China. Therefore, the Panel considers that the registration of the disputed domain name, which is identical to the Complainant’s trademark, was intended to mislead and attract consumers to the disputed domain name. Even a cursory Internet search by the Respondent at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned trademarks in GS1 and used them extensively. Moreover, the Respondent’s choice for the specific gTLD “.shop” reinforces this finding, as it is likely to mislead Internet users into thinking that the website linked to the disputed domain name is operated as a web-shop for the Complainant’s products or services (see also WIPO Overview 3.0, section 3.2.1). In the Panel’s view, the above elements are clear evidence of the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. As to use of the disputed domain name in bad faith, the Panel considers that by registering the disputed domain name, which is identical to the Complainant’s trademark, and by using the Complainant’s trademark prominently on the website linked to the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain (i.e. to offer its own label design and printing services), Internet users to its web site by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website linked to the disputed domain name (see also paragraph 4b(iv) of the Policy). On the basis of these elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith. On the basis of the elements set out above, the Panel rules that the Complainant has satisfied the requirements of the third element under 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 Deanna Wong Wai Man
On the basis of the elements set out above, the Panel rules that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith
Sole Panelist
Date: February 16, 2021
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