The Complainant is Trueing Studio LLC, United States of America (“United States” or “U.S.”), represented by Getz Balich LLC, United States.
The Respondent is WangWenLong (王文龙), 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 June 25, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 29, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On the same day, the Respondent submitted a request that Chinese be 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 July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Response was filed in Chinese with the Center on July 16, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 4, 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 design studio that launched its first product (the Janus table lamp) in October 2016. The new product was reported in design and decoration magazines, including the Chinese publications Ideat (理想家) in November 2016, Shejipi (设计癖), Art China (艺术中国), Sohu (搜狐) and Ugainian (优概念) in December 2016, and Modern Decoration (现代装饰) in January 2017. The reports included the (as of then unregistered) TRUEING trademark. The Complainant owns United States trademark registration number 5,530,075 for TRUEING, registered on July 31, 2018, specifying lighting fixtures, table lamps and other goods in class 11 and furniture and other goods in class 20, with claims of first use in commerce on November 20, 2016 with respect to the goods in class 11, and May 19, 2017 with respect to the goods in class 20. That trademark registration remains current. The Complainant has also registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on February 20, 2017. It resolves to a landing page on a domain name broker’s website in Chinese and English that advertises the disputed domain name for sale and invites Internet users to make an offer. The Complainant visited the landing page and made three offers to purchase the disputed domain name on November 13, 2018, October 11, 2019, and September 18, 2020, which were all rejected. The broker communicated counteroffers of USD100,000 and USD90,000 on October 11, 2019 and September 18, 2020, respectively. The term “trueing” is the present participle of the English verb “true”, meaning “to make level, square, balanced, or concentric: bring or restore to a desired mechanical accuracy or form”.1 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s TRUEING mark. The Complainant had acquired common law rights in that mark prior to its registration and prior to the registration of the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no relationship between the Complainant and the Respondent, whether by license, express or implied or otherwise. There is a risk of implied affiliation with the Complainant. The disputed domain name was registered and is being used in bad faith. Numerous publications electronic and print articles referencing the Complainant’s TRUEING mark were published shortly after the launch of the Complainant’s Janus table lamp during the period October 2016 to January 2017. Several of the articles were published in Chinese immediately prior to the registration of the disputed domain name. This demonstrates the Respondent’s bad faith. The TRUEING trademark is an arbitrary mark. There is no credible good faith explanation for the Respondent’s choice of the disputed domain name. The Respondent has demanded compensation far in excess of his out-of-pocket costs directly related to the disputed domain name. B. Respondent The disputed domain name is similar to the TRUEING mark but that mark was not registered until after the registration of the disputed domain name. The disputed domain name was acquired at an auction from a broker and the Respondent has rights and legitimate interests with respect to it. The disputed domain name resolves to a domain name template provided by the broker. The The Complainant is completely unknown in China. The Respondent had never heard of the Complainant prior to receiving the Complaint. A search in the Baidu search engine for “trueing” during the period from January 1, 2010 to June 30, 2018 yields no results related to the Complainant. The materials from Chinese websites provided by the Complainant are difficult to view in China and the Respondent had never seen them before. Even on July 10, 2021, a search in the Baidu search engine does not yield results related to the Complainant. “Trueing” is a word and it was not created by the Complainant. It has many meanings in Chinese, such as true, correct and accurate. It can be translated as “校正” and used in contexts such as “grinding, sharpening, polishing, trueing and cutting of natural stone, abrasives or pottery” and “tire trueing machine”. The disputed domain name 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 that the Complainant is a U.S. company, the disputed domain name incorporates an English word and it resolves to a site in both English and Chinese, and requiring the Complainant to translate the Complaint would cause excessive burden and delay. The Respondent requests that the language of the proceeding be Chinese. His main argument is that his level of English is not good enough to understand the Complaint properly. However, he later informed the Center that he had had the Complaint translated before filing the Response. 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 and the Response was filed in Chinese. The Respondent informed the Center that he had had the Complaint translated and the content of the Response confirms that he has indeed understood the Complaint in detail and been able to respond to it and present his case. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting all submissions as filed in English or Chinese 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 but that the Panel will accept all submissions as filed in their original language without translation. 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 TRUEING mark. The disputed domain name wholly incorporates the TRUEING mark as its operational element. The only additional element is a generic TLD suffix (“.com”). As a technical requirement of domain name registration, a gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Respondent points out that he registered the disputed domain name in 2017 before the Complainant obtained registration of its trademark in 2018. However, the Panel does not consider this relevant to the comparison between the disputed domain name and the (ultimately registered) mark for the purposes of the first element of paragraph 4(a) of the Policy. Rather, the Panel will consider that circumstance in Section 6.2.C below in relation to the third element. See WIPO Overview 3.0, section 1.1.2. Therefore, the Panel finds that the disputed domain name is identical to a trademark 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 above, the disputed domain name resolves to a site offering it for sale. The disputed domain name is identical to the Complainant’s TRUEING mark. The Complainant submits that there is no relationship between itself and the Respondent, whether by license, express or implied or otherwise. The Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services for the purposes of the second element of paragraph 4(a) of the Policy. Nor, self-evidently, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “WangWenLong (王文龙)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name. 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. Turning to the Respondent’s case, he argues that he validly registered the disputed domain name. However, mere registration of a domain name does not confer rights or legitimate interests for the purposes of the Policy, otherwise, no complainant could ever succeed, which is an illogical result: see Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. The Respondent notes that the Complainant did not take the opportunity to register its trademark in the “.com” gTLD prior to the registration of the disputed domain name. However, this has no bearing on whether the Respondent has any rights or legitimate interests in the disputed domain name. The failure by a trademark owner to register a particular domain name does not constitute consent to registration by a third party of a domain name identical or confusingly similar to that trademark (noting of course that no consent would be required for a non-infringing registration). The Respondent also asserts that his original intention was to use the disputed domain name in connection with a food website on which he would promote green food planting and production. However, this is mere assertion and the Respondent provides no evidence of any demonstrable preparations to make such use of the disputed domain name. While he refers to an existing third party food trading platform (titled “绿优原生”), he provides no evidence that that platform has any relationship to himself. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case. Therefore, based on the record of this proceeding, the Panel finds that 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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;” As regards registration, the disputed domain name was registered in February 2017, prior to the registration of the Complainant’s TRUEING trademark in July 2018 and also prior to the filing of the Complainant’s application for that trademark in December 2017. Although the disputed domain name was registered subsequent to the claimed date of first use of the mark in commerce in relation to certain goods in November 2016, the evidence on record is not sufficient for the Panel to conclude that the Complainant had acquired common law rights in that mark by the time when the disputed domain name was registered. In circumstances such as these, where the Complainant’s registered rights in its trademark arose after the registration of the disputed domain name, it may be difficult to show bad faith on the part of a respondent. See WIPO Overview 3.0, section 3.8.1. However, in the present dispute, the disputed domain name is identical to the trademark, which is an uncommon word, being the present participle of the verb “true” (see Section 4 above). The evidence provided by the Complainant shows that the launch of its first product with the TRUEING mark was reported in magazines and on their websites, including in China, where the Respondent is resident, prior to the registration of the disputed domain name (see Section 4 above). The relatively brief period (less than two months) between the appearance of these publications and the registration of the disputed domain name does not appear coincidental. The Respondent provides no plausible explanation for his choice of the disputed domain name: while he is correct that “trueing” has a dictionary meaning in English, that meaning has no apparent relevance to a website about green food planting and production, which he claims was his original intention behind the registration of the disputed domain name; again if this was his intent, no evidence to support that has been provided. In view of these circumstances, the identity between the disputed domain name and the Complainant’s then-nascent trademark shows that more likely than not the Respondent targeted that mark, even though the landing page to which the disputed domain name resolves does not refer to the Complainant itself. Accordingly, the Panel finds it likely that the Respondent registered the disputed domain name in bad faith in anticipation of the Complainant’s rights in the TRUEING mark. See WIPO Overview 3.0, section 3.8.2. The Respondent seeks credit for the fact that he did not register the Complainant’s TRUEING mark in more TLDs. However, this does not provide a justification for his bad faith registration of that mark in the “.com” gTLD. In any case, he appears to acknowledge that he has registered the mark in at least one other TLD (“.cn”). As regards use, the Respondent uses the disputed domain name in connection with a domain name broker’s landing page that advertises it for sale and invites Internet users to make an offer. The Complainant replied to that invitation and entered into a negotiation with the broker for the purchase of the disputed domain name. Given that the Respondent parked the disputed domain name at the broker’s landing page and that the broker represented that she was acting on his instructions, the Respondent cannot credibly disclaim responsibility for the prices quoted by the broker. The broker communicated selling prices of USD100,000 and USD90,000. The Panel considers both amounts to be far in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent has not documented any such costs. Accordingly, the Panel considers that the above circumstances fall within the terms of paragraph 4(b)(i) of the Policy. The Respondent argues that an offer to sell a domain name does not necessarily constitute bad faith, even when it is offered at a high price, referring to the decision in Stone Fashion Group B.V. v. John James Broderick and or Jeanne Broderick Shelton,WIPO Case No. D2019-1888. However, the Panel recalls that the complainant in that prior UDRP proceeding failed to show that the respondent had any bad faith intention when registering their domain name. In contrast, the Panel has found in the present proceeding that the Respondent targeted the Complainant’s mark when he registered the disputed domain name, which leads to the conclusion that the disputed domain name was both registered in bad faith and is being used in bad faith. 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. D. Reverse Domain Name Hijacking The Respondent requests that the Panel make a finding of reverse domain name hijacking. He submits that the Complainant provided only subjective opinions and made accusations without fully understanding the facts. Given that the Panel has upheld the Complaint, the Panel does not find that the Complaint was brought in bad faith and declines to make a finding of reverse domain name hijacking. 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 1 “https://www.merriam-webster.com/dictionary/true”.
Sole Panelist
Date: August 18, 2021
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