The Complainant is Miguel Torres S.A., Spain, represented by Currel Suñol, Spain.
The Respondent is Shilin Li, 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 the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2021, 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 June 1, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 3, 2021, 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 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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 29, 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 is a Spanish wine producer. It owns multiple trademark registrations, including: - International trademark registration number 756841 for TORRES, registered on April 24, 2001, designating multiple jurisdictions, including China, and specifying wine and other goods in class 33; and - Spanish trademark registration number 2969487 for CLUB TORRES, registered from October 9, 1990, specifying goods and services in classes 16, 35, 41 and 42. Those trademark registrations remain current. The Complainant’s TORRES brand was ranked by Intangible Business among the top 14 most powerful wine brands in the world in 2013 and it was rated by Drinks International magazine as the world’s most admired wine brand in 2021. The Complainant formerly operated Club Torres, which organized visits, workshops and wine tastings, among other activities. The Complainant registered the domain name The Respondent is an individual in China. The disputed domain name was registered on January 8, 2021. It resolves to a webpage in Chinese displaying pornography and links to gambling websites. On January 3, 2021, the Complainant received an email in English from a third party advising that the disputed domain name was for sale. On January 9, 2021, the Complainant received another email in English in the same format from a third party inviting the Complainant to make a bid for the disputed domain name and advising that the sender was open to “any reasonable offers for it”. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s TORRES and CLUB TORRES marks. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed, authorized or permitted the Respondent to use its TORRES and/or CLUB TORRES trademarks in a domain name. Commercial use is being made of the disputed domain name. The disputed domain name was registered and is being used in bad faith. It appears to have been registered by the Respondent to make a profit by selling it to the Complainant and taking unfair commercial advantage of the fame associated with the Complainant’s TORRES and CLUB TORRES trademarks. The Respondent is using the disputed domain name in bad faith to divert consumers looking for the Complainant’s website and trademarks to the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are based on the principles of equality and neutrality between the Parties, and the fact that emails offering to sell the disputed domain name were sent to the Complainant in English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent the Parties an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment or express any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the TORRES and CLUB TORRES marks. The disputed domain name wholly incorporates the TORRES mark. It also incorporates the word “club”. Given that the trademark remains recognizable within the disputed domain name, the Panel does not consider that the addition of this word prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The disputed domain name incorporates both words in the CLUB TORRES mark, albeit in reverse order. The Panel does not consider that the reversal of these words prevents a finding of confusing similarity. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix (“.com”). However, as a standard technical requirement of registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to two trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the 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 the trademark or service mark at issue. As regards the first and third circumstances set out above, the disputed domain name resolves to a website displaying pornography and links to gambling websites. The disputed domain name wholly incorporates the Complainant’s TORRES trademark, and both words in its CLUB TORRES trademark in reverse order. The Complainant submits that it has not licensed, authorized or permitted the Respondent to use its TORRES or CLUB TORRES trademarks in a domain name. Nothing on the website indicates any connection to the word “torres” or “club”. Accordingly, the Panel does not consider that the disputed domain name is being used in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. The website operates for the commercial gain of the Respondent, if he is paid to display links to other websites, or for the commercial gain of the operators of the linked websites, or both. Accordingly, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Shilin Li”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain name was registered in 2021, years after the registration of the Complainant’s TORRES trademark, including in China, where the Respondent is resident, and years after the registration of the Complainant’s CLUB TORRES trademark as well. The Complainant has acquired a considerable reputation in its TORRES mark in the wine sector through extensive use of that mark. Although “Torres” is both a name and a word meaning “towers” in Spanish, the Respondent chose to combine it with the word “club”, which is the other word in the CLUB TORRES mark. The disputed domain name was offered for sale to the Complainant within a day of its registration by the Respondent, which the Panel does not consider a coincidence. The Respondent provides no explanation as to why he chose to register the Complainant’s trademark in the disputed domain name and nothing on his website provides any explanation for his choice of the words “torres” or “club” either. Accordingly, the Panel considers it likely that the Respondent had the Complainant’s marks in mind when he registered the disputed domain name. With respect to use, the disputed domain name wholly incorporates the Complainant’s TORRES trademark, and both words in the CLUB TORRES trademark in reverse order, but it resolves to a website displaying pornography and links to gambling websites. Nothing on the website has the remotest connection to the Complainant or its goods or services. The links operate for the commercial gain of the Respondent, if he is paid to display links to other websites, or for the commercial gain of the operators of the linked websites, or both. Given these circumstances, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 disputed domain name Matthew Kennedy
See Boehringer Ingelheim Pharma GmbH & Co. KG v. Klinik Sari Padma, BAKTI HUSADA,WIPO Case No. D2014-0306.
Sole Panelist
Date: August 12, 2021
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