The Complainant is Faurecia, France, represented by Nameshield, France.
The Respondent is 黄永春 (Huang Yong Chun), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11 and 14, 2021, the Registrar transmitted by email to the Center its verification responses 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 December 14, 2021 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 December 15, 2021.
On December 14, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 15, 2021, the Complainant submitted a request that English be the language of the proceeding. On December 18, 2021, the Respondent sent a communication in which he objected to the use of English and requested to use Chinese in the Response in accordance with the Rules.
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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Response was filed with the Center in Chinese on December 22, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 24, 2022. 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 BackgroundThe Complainant is an automotive supplier with sites in 35 countries. It holds the following trademark registrations:
- International trademark registration number 717463 for a figurative mark featuring the name FAURECIA, registered on April 27, 1999, designating multiple jurisdictions, including China, and specifying goods in classes 7, 9, 11 and 12;
- European Union trademark registration number 011414125 for a figurative mark featuring the name FAURECIA, registered on June 18, 2013, specifying goods and services in classes 7, 9, 11, 12, 17 and 42; and
- International trademark registration number 1366023 for FAURECIA and device, registered on June 23, 2017, designating multiple jurisdictions, including China, and specifying goods and services in classes 7, 9, 11, 12, 17 and 42.
The above trademark registrations remain current. The Complainant also registered the domain name
On August 14, 2021, the Complainant and the German lighting and electronics specialist Hella GmbH & Co. KGaA (“Hella”) signed an agreement to combine the two companies according to which the Complainant would make a voluntary takeover offer of the German company. On the same day, both companies issued press releases online announcing their agreement.
The Respondent is an individual resident in China.
The disputed domain name was registered on August 15, 2021. It does not resolve to any active website; rather, it is passively held.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s FAURECIA mark. The addition of the denomination “hella” worsens the likelihood of confusion, as it directly refers to the Complainant’s acquisition of the German company Hella.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known as the disputed domain name. The Respondent is not affiliated with the Complainant nor authorized by it in any way to use the trademark FAURECIA. The disputed domain name is inactive.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant began to use the trademark FAURECIA. The disputed domain name was registered on the day following the announcement of the combination of the French automotive supplier FAURECIA and the German lighting and electronics specialist HELLA. All the results of an Internet search for “Faurecia Hella” refer to the Complainant. It is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate.
B. RespondentThe Complainant’s claim to ownership of the disputed domain name is not valid. Only in circumstances where a company called “Faurecia-Hella” already existed before the registration of the disputed domain name would that company have a valid claim to obtain transfer of the disputed domain name.
There is no mandatory legal requirement as to when a domain name must be put to active use after registration. This depends on the domain name registrant’s personal and business plans.
The disputed domain name is composed of alphanumeric characters according to the registrant’s own wishes and designs; any overlap with company names or trademarks is merely a coincidence. For example, “Hella décalé” is a song and “Hella” is not necessarily the name of a German auto parts company. The strictest conditions for legal review should be applied and only clear rules that took effect before the registration of the disputed domain name can deprive the legitimate registrant of ownership of the disputed domain name. To do otherwise would create uncertainty for legitimate domain name registrants. It is not the Panel’s role to accede one-sidedly to the Complainant’s demands, rather it must protect domain name ownership that was previously acquired in accordance with the law. An owner of civil rights should proactively register a domain name that it needs instead of failing to register through its own dilatoriness only to try to seize it after it has been lawfully acquired by another party. Deprivation of legally acquired domain name ownership must adhere to the strictest standards of legal review.
At the time of registration of the disputed domain name, the registrant may have accepted certain terms and conditions but this proceeding is only a mediation. The Panel’s decision is only valid with the express acceptance of the Parties, unlike the ruling of a court or arbitral tribunal. The Panel’s decision is not binding.
The Respondent asks, if the Complainant is allowed to claim ownership of the disputed domain name, then why not the Hella company as well. He questions what rules would give the Complainant a superior claim to the Hella company’s claim. Mergers and acquisitions are a commercial matter whereas domain name registrants operate in a separate field without any obligation to take the initiative to find out about business organizations. The interests of business organizations do not take precedence over those in other fields such as domain name registration. The legal rights enjoyed by domain name registrants cannot be subject to the uncertainty of future events. The Respondent asks whether all domain names containing the letters “faurecia” or “hella” belong to the Complaint and, if so, on what clear legal basis.
6. Discussion and Findings 6.1. Preliminary Issue: Language of the ProceedingParagraph 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 disputed domain name is in ASCII characters, not Chinese, and that translation of the Complaint would impose a significant burden on the Complainant.
The Respondent does not agree with the use of English and requests to use Chinese for the Response in accordance with the Rules.
Paragraph 10(b) and (c) of the Rules requires 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 and the amended Complaint were filed in English and the Response was filed in Chinese. The Panel observes that the detailed Response demonstrates that the Respondent has clearly understood the contentions in the Complaint and been able to present its own arguments regarding the various requirements of the Policy. The Panel is familiar with both English and Chinese. Therefore, the Panel considers that requiring either Party to translate its submission would create an undue burden and delay, whereas accepting all submissions in the original language without translation will not cause 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 the Response as filed in Chinese without translation.
6.2. Substantive IssuesParagraph 4(a) of the Policy provides that a complainant must prove 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 SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the FAURECIA marks. The only element of these marks that can be represented in a domain name is the name Faurecia. Accordingly, the Panel will not consider the other, figurative elements of these marks in the comparison with the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10.
The disputed domain name wholly incorporates the FAURECIA marks as its initial element. The disputed domain name also incorporates the HELLA mark1 and a hyphen separating the two mark. However, these elements do not prevent a finding of confusing similarity because the FAURECIA marks remain clearly recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.12.
The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix “.com” but, as a mere technical requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain name and the FAURECIA marks. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar 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 InterestsParagraph 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.
The Complainant submits that the Respondent is not affiliated with it nor authorized by it in any way to use the trademark FAURECIA.
As regards the first and third circumstances set out above, the disputed domain name is passively held. This does not constitute use in connection with a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name that would give rise to rights or legitimate interests in the disputed domain name for the purposes of the Policy.
As regards the second circumstance set out above, the Respondent’s name is “黄永春 (Huang Yong Chun)”, not the disputed domain name. There is no evidence on the record that the Respondent is 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 arguments, he asserts that he lawfully acquired the disputed domain name and has priority rights to it. However, the Panel recalls that the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. The Respondent also points out that there is no mandatory time period after the date of registration during which a domain name must be actively used. However, the Panel notes that the Respondent has not adduced any evidence of demonstrable preparations to use the disputed domain name in connection with any active use of any kind nor has he asserted any specific right or legitimate interest in respect of the disputed domain name. Accordingly, there is no basis of which to find any such right or legitimate interest and 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 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 FaithParagraph 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 but these circumstances are not exhaustive.
As regards registration, the disputed domain name was registered in 2021, long after the registration of the Complainant’s FAURECIA marks. The disputed domain name incorporates the FAURECIA marks. The disputed domain name combines the exact name Faurecia with the exact name Hella and it was registered on the day after the Complainant (Faurecia) and Hella announced that they were combining their two companies. The clear inference is that the Respondent was aware of the Complainant, its mark and its proposed combination with Hella at the time that he registered the disputed domain name.
The Panel rejects as implausible the Respondent’s assertion that the similarity between the disputed domain name and any mark was a coincidence. The Respondent offers no explanation for his choice of the disputed domain name other than his own wishes and designs, on which he does not elaborate. Although the Respondent submits that domain name registrants have no obligation to take the initiative to find out about business organizations’ mergers and acquisitions, that is beside the point in this case because the circumstances clearly indicate that the Respondent was in fact aware of the Complainant, its mark and its proposed takeover of Hella. The Panel also rejects the Respondent’s submission that the Complaint can only succeed where a company named “Faurecia-Hella” existed prior to the registration of the disputed domain name. The disputed domain name does not have to be identical to a prior mark for the claim to succeed. In this case, the claim is based on the fact that the disputed domain name is confusingly similar to the FAURECIA marks, which were registered prior to the registration of the disputed domain name. See, for example, Sanofi v. Lishijie,WIPO Case No. D2016-1139.
As regards use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the disputed domain name combines the FAURECIA mark with the HELLA mark and it was registered on the day after the Complainant (Faurecia) and Hella announced that they were combining their two companies. The disputed domain name gives the false impression that it is or will be associated with the combined entity to emerge from the Complainant’s takeover of Hella and it is likely that it is being held for that reason. The Respondent offers no explanation of any actual or proposed good faith use of the disputed domain name. These circumstances indicate that the disputed domain name is being used in bad faith.
The Respondent emphasizes that the Panel should apply the strictest legal standards to avoid uncertainty for domain name registrants. The Panel notes that it has applied the requirements in the Policy, to which the Respondent agreed when he registered the disputed domain name, and that it is the application of those requirements in good faith that avoids uncertainty for domain name registrants and for trademark right holders. The Panel also recalls that, from the inception of the Policy, UDRP panels have found that passive holding of a domain name does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3.
The Respondent notes that the Complainant did not register the disputed domain name first. However, the Panel observes that the Complainant is under no obligation to register all domain names that are identical or confusingly similar to its FAURECIA marks, and that its failure to register the disputed domain name in advance did not constitute a waiver of its rights or an implied consent to the Respondent’s registration of the disputed domain name.
The Respondent submits that the German company Hella may have the right to file a Complaint under the Policy regarding the disputed domain name. The Panel notes that this submission is of no assistance to the Respondent as he offers no basis on which he could avail himself of the rights of Hella. In any case, the Complainant and Hella have now combined their two companies.
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. Mandatory Administrative ProceedingsThe Respondent asserts that this proceeding is a mediation and that this Decision is not binding. However, the Panel draws the Respondent’s attention to the fact that the present proceeding is a mandatory administrative proceeding under paragraph 4 of the Policy, not a mediation, and that the Registrar will implement this Decision ordering the transfer of the disputed domain name without the consent of the Respondent unless it receives official documentation that the Respondent has commenced a lawsuit against the Complainant in a court of competent jurisdiction within ten (10) business days, as set out in sub-paragraph 4(k) of the Policy.
7. DecisionFor 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
Sole Panelist
Date: February 7, 2022
1 The Panel takes note that Hella owns various trademarks featuring the word HELLA, including International trademark registration number 598303.