Complainant is Kelin S.r.l., Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
Respondent is 曹伟 (Wei Cao), 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 May 3, 2021. On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 5, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 6, 2021, 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 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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Response was filed in Chinese with the Center on May 12, 2021. The Center appointed Yijun Tian as the sole panelist in this matter on June 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 A. Complainant Complainant, Kelin S.r.l., is a company incorporated in Italy. Founded in 1978, Complainant is one of the world’s leading companies specializing in service of the production and making of motorbike accessories. It has nearly 500 employees all over the world, and has more than 90 official distributors in China (Annex 7 to the Complaint). Complainant has registered a number of trademarks for GIVI in various jurisdictions, including trademark registrations in China (registered on May 7, 2011, the Chinese trademark registration number 8108145) (Annex 5 to the Complaint), and the international trademark registration covering China (registered on June 3, 2004, the international trademark registration number 837911) (Annex 5 to the Complaint). Complainant promotes its products and services using the domain name Respondent is 曹伟 (Cao Wei), China. Respondent registered the disputed domain name Complainant contends that the disputed domain name is identical to the GIVI marks. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant contends that Respondent has already been the respondent in other UDRP cases related to the registration of domain names incorporating well-known trademarks, such as Medtronic, Inc. v. Cao Wei (曹伟),WIPO Case No. D2020-1947, and Nestlé Waters v. 曹伟 (Cao Wei),WIPO Case No. D2020-3363 , in particular related to a “.tech” domain name. Complainant requests that the disputed domain name Respondent contends that the disputed domain name was obtained from his/her legal registration through “west.cn”. Respondent contends that “givi” is a common four-letter combination, not a special trademark letter combination. There are more than one companies using “givi”. Respondent has legally offered the disputed domain name for sale. Respondent contends that his/her webpage of selling the disputed domain name does not infringe the rights of any enterprise or individual, nor does it contain any commercial information. The webpage simply displays information related to the sale of the disputed domain name, which facilitates the interesting parties to purchase the disputed domain name, and it is a normal domain name sale behavior. Respondent contends that although Complainant has registered the GIVI trademark in China, it does not mean Complainant has obtained legal right to the disputed domain name, and Respondent is willing to negotiate with Complainant in relation to the sale of the disputed domain name. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons: a) Neither Complainant, nor its representatives, understand Chinese. It would be quite burdensome and expensive for Complainant to translate the Complaint with all its annexes. b) Requiring a Chinese translation of all documents would result in an unnecessary delay of the UDRP procedure, and would unduly increase the damages, which the abusive use of the disputed domain name has created, to Complainant’s image and reputation. c) The disputed domain name is redirected to a parking page with English content. d) The disputed domain name does not consist of Chinese words. On the contrary, it is composed by Latin letters (“g”, “i”, “v” and “i”), and the new generic Top-Level Domain (“gTLD”) “.tech” that represents an English word. Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. However, Respondent has indicated in the Response that he/she needs to use Chinese to explain his/her viewpoints. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585). On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the case file, (a) the disputed domain name Further, Respondent has submitted the Response in Chinese. Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantial Issues Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred: (i) The disputed domain name registered by Respondent 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 disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. On the basis of the submissions introduced by the Parties and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows: A. Identical or Confusingly Similar The Panel finds that Complainant has rights in the GIVI marks acquired through registration. The GIVI marks have been registered worldwide including in China. It has a widespread reputation as a leading company specializing in the service of the production and making of motorbike accessories. Complainant has nearly 500 employees all over the world, and has more than 90 official distributors in China. The disputed domain name “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. […] The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’).” Thus, the Panel finds that disregarding the gTLD suffix “.tech”, the disputed domain name is identical to the GIVI marks in which Complainant has rights. The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name: (i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks. The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein). According to the Complaint, Complainant is one of the world’s leading companies specializing in service of the production and making of motorbike accessories. Complainant has rights in the GIVI marks internationally since 2004, and in China since 2011, which long precede Respondent’s registration of the disputed domain name (in 2021). Moreover, Respondent is not an authorized dealer of Givi-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name: a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent asserts that “givi” is a common four-letter combination and there are other companies using “Givi”. Therefore, Respondent has the right to offer the disputed domain name for sale. However, the Panel notes that “givi” does not appear to have any dictionary meaning and the top search results over the Internet including Baidu (a popular search engine in China) are related to Complainant and its Givi-branded products. Further, third party rights in the term “Givi” would not confer any rights or legitimate interests onto Respondent to register a domain name incorporating the entirety of Complainant’s GIVI mark. Based on the evidence before the Panel, it seems more likely than not that Respondent’s intent to register the disputed domain name was to profit off Complainant and its GIVI marks and to sell the disputed domain name to Complainant and/or its competitors for commercial gain. b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2021, long after the GIVI marks became internationally known. c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name is currently resolved to a parking page, displaying an advertisement to sell the disputed domain name for USD 4,999 (previously it was offered for sale for USD 3,799). Accordingly, the Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location. a) Registered in Bad Faith The Panel finds that Complainant has a widespread reputation in the GIVI marks with regard to its products and services. Complainant has nearly 500 employees all over the world, and has more than 90 official distributors in China. As mentioned above, Complainant has registered its GIVI mark internationally, including international registration (since 2004) and registration in China (since 2011). Further, Complainant promotes its products and services using the domain name Respondent claims that “givi” is a common four-letter combination without any explanation or evidence. The Panel finds that “givi” does not appear to have any dictionary meaning, and the Panel further notes that the top search results over the Internet are related to Complainant and its Givi-branded products. Under the circumstances of this case, the Panel finds that it seems more likely than not that Respondent targeted Complainant and its GIVI marks at the time of the registration of the disputed domain name (in 2021). Thus, the Panel concludes that the disputed domain name was registered in bad faith. b) Used in Bad Faith The Panel also notes that, as mentioned above, the disputed domain name previously resolved to a parking page, displaying an advertisement to sell the disputed domain name for USD 3,799. At the time of this decision, the disputed domain name still resolves to a parking page, but displaying an advertisement to sell the disputed domain name for USD 4,999. With the said fact, the Panel finds that Respondent registered the disputed domain name not for actual use, but primarily for the purpose of selling it for a commercial gain, should he/she stands a chance. Further, the Panel notes that Respondent has already been the respondent in other UDRP cases related to the registration of domain names incorporating third party trademarks, such as Medtronic, Inc. v. Cao Wei (曹伟), supra ( In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith. The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision For all 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 Yijun Tian 1 See “www.givi.tech”.
Sole Panelist
Dated: July 12, 2021
Full & Egal Universal Law Academy