ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Hochtief Aktiengesellschaft v. 栗聚强 (Li Ju Qiang), 豪赫蒂夫南京技术有 限公司 (Hao He Di Fu (Nan Jing) Ji Shu You Xian Gong Si) and 栗聚强 (Li Ju Qiang), 豪赫蒂夫热力技术上海有限公司 (hao he di fu re li ji shu (shang hai) you xian gong si) Case No. D2022-2332 1. The Parties The Complainant is Hochtief Aktiengesellschaft, Germany, represented by Kümmerlein Simon & Partner Rechtsanwälte mbB, Germany. The Respondents are 栗聚强 (Li Ju Qiang), 豪赫蒂夫南京技术有限公司 (Hao He Di Fu (Nan Jing) Ji Shu You Xian Gong Si) (the "First Respondent") and 栗聚强 (Li Ju Qiang), 豪赫蒂夫热力技术上海有限公司 (hao he di fu re li ji shu (shang hai) you xian gong si) (the "Second Respondent"), both of China, internally represented. 2. The Domain Names and Registrar The disputed domain names and are both registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2022. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant, 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 July 1, 2022. On June 29, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On the following day, the Complainant requested that English be the language of the proceeding. On July 2, 2022, the Respondents requested that Chinese be the language of the proceeding. On July 4, 2022, the Complainant submitted comments on the Respondents' language request. page 2 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on July 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2022. On July 19, 2022, the Respondents requested an extension of the due date for Response due to the Covid-19 pandemic. On July 20, 2022, the Complainant opposed the Respondents' request. On the same day, in accordance with paragraph 5(e) of the Rules, the due date for Response was extended to August 4, 2022. The Respondents sent email communications to the Center on August 1, 2022 and August 2, 2022, requesting a further extension of the due date for Response. The Center replied on August 2, 2022, declining the requested further extension in accordance with paragraph 5(e) of the Rules. The Response was filed in Chinese with the Center on August 4, 2022. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 15, 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. The Complainant filed an unsolicited supplemental submission on August 15, 2022. On August 24, 2022, the Panel issued Administrative Panel Procedural Order No. 1 (the "Order") in which it invited the Parties to submit evidence of the current status of Chinese trademark registrations numbers 23393198, 23394300, 29594571, 29607738, 41863857, and 53406848 on or before August 31, 2022. In the Order, the Panel also extended the Decision due date to September 7, 2022. Each Party submitted evidence in response to the Order on August 30, 2022. 4. Factual Background The Complainant is an engineering-led infrastructure group with its core activities in construction, services, and concessions/public-private partnerships. Established in 1873, it has been using its current company name since at least 1919. It has obtained multiple trademark registrations in multiple jurisdictions for HOCHTIEF and a semi-figurative mark featuring the name HOCHTIEF (the "HOCHTIEF logo") including the following European Union trademark registrations: Mark Number Registration date Classes HOCHTIEF 000060061 October 13, 1998 6, 9, 19, 35, 36, 37, 39, 40, 42 HOCHTIEF logo 000517052 November 27, 1998 6, 9, 19, 35, 36, 37, 39, 40, 42 The above trademark registrations remain current. The Complainant obtained Chinese trademark registrations for the HOCHTIEF logo, including the following, but these have recently been cancelled for nonuse at the request of the First Respondent: 1 1 China National Intellectual Property Administration 商标撤三字 [2022] decisions numbers W050149, W050363, W050365, W050390, W050392, and W050396. page 3 Table 1 Mark Number Date of registration Class Date of notification of cancellation HOCHTIEF logo 1217923 October 21, 1998 36 August 5, 2022 HOCHTIEF logo 1231814 December 14, 1998 42 August 5, 2022 HOCHTIEF logo 1231895 December 14, 1998 35 August 5, 2022 HOCHTIEF logo 6221823 June 14, 2010 35 July 27, 2022 HOCHTIEF logo 6221824 July 28, 2010 19 August 5, 2022 HOCHTIEF logo 6221825 January 14, 2010 6 August 5, 2022 The Complainant obtained Chinese trademark registrations for 豪赫蒂夫 (pronounced "Háohèdìfū") in 2010 and 2012, specifying goods and services in classes 6, 19, 35, 36, 37, 40, and 42 but most if not all of those trademark registrations are no longer current. The Complainant holds Chinese trademark registrations numbers 49165958, 49177620, 49176100, 49183306, 49186433, 49189530, and 49194402, all for the HOCHTIEF logo in color, registered between March 28, 2021 and May 28, 2021, and specifying goods and services in classes 35, 40, 42, 6, 36, 37, and 19, respectively. Those trademark registrations remain current. The Respondents are Chinese companies that produce and market floor heating systems. The First Respondent was established in December 2014 and assumed its current name, which may be translated as "Hochtief (Nanjing) Technology Co., Ltd", in December 2019. Neither of its former names consisted of or contained the term "Hochtief" or "豪赫蒂夫". It obtained the following Chinese trademark registrations, five of which have been found invalid by the China National Intellectual Property Administration, at the request of the Complainant:2 Table 2 Mark Number Registration date Class Date of invalidation decision 豪赫蒂夫 23393198 March 21, 2018 11 July 20, 2021 HOCHTIEF logo 23394300 March 21, 2018 11 July 20, 2021 豪赫蒂夫HOCHTIEF 29594571 January 14, 2019 17 July 20, 2021 豪赫蒂夫HOCHTIEF 29607738 January 14, 2019 9 July 20, 2021 豪赫蒂夫HOCHTIEF 41863857 July 28, 2020 24 July 20, 2021 豪赫蒂夫 53406848 September 28, 2021 37 Not applicable The First Respondent appealed from the above invalidation decisions to the Beijing Intellectual Property Court on September 1, 2021.3 It is not disputed that those appeals are currently pending. The Second Respondent's name may be translated as "Hochtief Thermal Technology (Shanghai) Co., Ltd". It was established in June 2020 as a wholly-owned subsidiary of the First Respondent. On July 1, 2020, the Second Respondent obtained licenses from the First Respondent to use the trademarks shown in Table 2. The disputed domain name was registered by the First Respondent on March 13, 2018. It resolves to a website in Chinese presented as an official website of "HOCHTIEF豪赫蒂夫", displaying the HOCHTIEF logo, images of the Respondents' underfloor heating products and information about the Respondents' business. All the contact details are in China. According to evidence presented by the Complainant, the website formerly displayed, among other things, a photograph of the Complainant's headquarters in Germany and a photograph showing the Complainant's former CEO, while on the corporate 2 China National Intellectual Property Administration 商评字 [2021] decisions numbers 0000193182 to 0000193186. 3 See Beijing Intellectual Property Court (2021) 京73行初 notices numbers 13852 to 13856. page 4 history tab it claimed a date of establishment in 1873, which was the year of the Complainant's establishment. The disputed domain name was created on January 2, 2020 and was evidently acquired by the Second Respondent at a later point in time. According to evidence presented by the Complainant, this disputed domain name resolves to a website similar to the current website associated with the other disputed domain name. According to the evidence on record, the Respondents use the HOCHTIEF logo on their product packaging and in publicity. The First Respondent provides evidence that it has used the HOCHTIEF logo on contracts to install underfloor heating for clients in China since 2019. It also provides evidence of use of its English name on conformity assessment certificates for its products. The First Respondent was present at two trade fairs in China although it does not appear to have had its own stand at either. It also provides a Xinhua news report of an interview with 豪赫蒂夫生态地暖 (which may be translated as "Hochtief Ecological Floor Heating") in January 2021. The Complainant sent a cease-and-desist letter to the First Respondent on November 4, 2020. 5. Parties' Contentions A. Complainant The disputed domain names are identical or at least confusingly similar to the Complainant's HOCHTIEF mark. The Respondents have no rights or legitimate interests with respect to the disputed domain names. The Respondents have no connection to, or affiliation with, the Complainant and have not received any license or consent, express or implied, to use the name Hochtief in a domain name or in any other manner. The Respondents do not offer any goods or services on a bona fide basis but obviously intend for commercial gain misleadingly to divert consumers. The Respondents have applied for trademark rights in HOCHTIEF and the HOCHTIEF logo only to take advantage of the fame and notoriety of the Complainant's marks and reputation. The Complainant has already successfully attacked numerous HOCHTIEF trademarks of the First Respondent in China for filing trademark applications in bad faith. The Complainant will initiate trademark infringement proceedings against the still existing trademarks of the First Respondent that violate the Complainant's rights. The disputed domain names were registered and are being used in bad faith. The Respondents have intentionally attempted to attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website. This use is also disruptive use by a competitor. B. Respondents The Respondents do not dispute that the Complainant has rights in the HOCHTIEF mark with respect to certain classes of goods and services but all the Chinese trademark registrations specified in the Complaint have been cancelled. The Complainant's trademarks do not cover floor heating products and services, which is the focus of the Respondents' business. Prior UDRP decisions have emphasized that disputes regarding trademark validity, trademark infringement, unfair competition, and copyright infringement are not within the scope of the Policy. These issues should be decided by courts of competent jurisdiction. The incorporation of "home" and "china" in the disputed domain names does not imply any relationship with the Complainant. The Respondents' websites target different consumers from the Complainant's website and do not cause confusion. page 5 The Complainant has not made a prima facie case that the Respondents lack rights and legitimate interests in the disputed domain names. The Complainant has not submitted evidence that its mark is registered in China or well known as regarding goods and services in classes 9, 11, 17, 24, or 37. The First Respondent holds the trademark registrations listed in section 4 above. The Respondents have participated in trade fairs to promote their HOCHTIEF electric floor heating system products, including the 2020 China Housing Expo in Beijing and the 2021 Green Smart Building Expo in Tianjin. The Respondents' websites are obviously different from the Complainant's website, showing different products and not showing any connection to the Complainant. The Respondents' products have obtained authoritative certifications of conformity with standards, been the subject of a Xinhua news report, entered into contracts, applied for a trademark and actually used it in relation to floor heating and other fields for over four years. The Respondents have not registered or used the disputed domain names in bad faith. The Second Respondent plans to use the disputed domain name with an online shopping site but this has been delayed due to the Covid-19 pandemic. The Respondents also hold the domain names <豪赫 蒂夫.com>, , and . The Respondents have not registered the disputed domain names to disrupt the Complainant's business; the Respondents are not competitors of the Complainant; the Respondents have no intention to offer the disputed domain names for sale. The Respondents' purpose is rather to plan for its sustainable development. This dispute concerns not only a territorial conflict between trademarks and a global conflict of domain names, but the coexistence of trademarks for different classes of goods. All the Chinese trademark registrations cited by the Complainant have been cancelled. 6. Discussion and Findings 6.1 Procedural Issues A. Consolidation: Multiple Domain Name Registrants The amended Complaint initiates disputes in relation to two domain names with different registrants. The holder of the disputed domain name is 豪赫蒂夫南京技术有限公司 (Hao He Di Fu (Nan Jing) Ji Shu You Xian Gong Si) while the holder of the disputed domain name is 豪赫蒂夫热力技术上海有限公司 (hao he di fu re li ji shu (shang hai) you xian gong si). The contact person for both disputed domain names is 栗聚强 (Li Ju Qiang). The Complainant claims that the registrants are identical persons or affiliated with each other or at least under common control. The Response was filed on behalf of both registrants. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense, and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant's request, the Panel will consider: (i) whether the disputed domain names or associated websites are subject to common control; and, if so, (ii) whether the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2. In the present dispute, the disputed domain names are clearly under common control. It is agreed that the Second Respondent is a wholly-owned subsidiary of the First Respondent. Both disputed domain names have the same contact person and representative in this proceeding. Further, the Panel sees no reason why consolidation of the disputes regarding both disputed domain names would be unfair or inequitable to any Party. Accordingly, the Panel will decide the Complaint regarding both disputed domain names. page 6 B. Unsolicited Supplemental Filing The Complainant made an unsolicited supplemental filing after the filing of the Response. Paragraph 10(d) of the Rules provides that "[t]he Panel shall determine the admissibility, relevance, materiality, and weight of the evidence". Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447. The Panel observes that the supplemental filing replies to an allegation of reverse domain name hijacking that was not made until after the amended Complaint was filed, and other allegations. The supplemental filing was made on the day of appointment of the Panel, and accepting it will not unduly delay this proceeding. Further, the Respondents did not object to the admission of the Complainant's supplemental filing. Therefore, the Panel exercises its discretion to the Complainant's supplemental filing and will take it into consideration in this decision according to its relevance, materiality, and weight. C. 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 Agreements for both disputed domain names are in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names contain English words; the associated websites display details in English; the Respondents claim on their website to be an internationally active company, which implies that they understand English; the Complainant is not proficient in Chinese; and translation of the Complaint would unduly delay the proceeding and incur unreasonable costs. The Respondents request that the language of the proceeding be Chinese. Their main arguments are that the domain name holders are Chinese companies; their official documents are all in Chinese; the Respondents do not have a standalone English version of its website; they are not proficient in English but conduct their international business through third parties; and they are the Parties whose interests are harmed by the Complaint. 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, amended Complaint and Complainant's supplemental filing were all filed in English while the Response was filed in Chinese. The content of the Response shows that the Respondents have in fact understood the Complaint and taken the opportunity to present their case in detail. The Response also includes references to multiple documents that are in English, while the Respondents' websites also include many English phrases, from which it is reasonable to infer that the Respondents understand that language. Therefore, the Panel considers that requiring either Party to translate its submissions would create an undue burden and delay whereas accepting every submission in its original language does not create unfairness to either Party. page 7 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 English or Chinese without translation. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name: (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. The burden of proof of each element is borne by the Complainant. Failure to satisfy any element will lead to denial of the Complaint. A. Identical or Confusingly Similar Based on the evidence presented of trademark registrations in multiple jurisdictions, the Panel finds that the Complainant has current rights in the HOCHTIEF mark. The disputed domain names wholly incorporate the HOCHTIEF mark as their respective initial elements. They also include either the term "-china" or the word "home". However, the incorporation of these additional elements does not prevent a finding of confusing similarity because the trademark remains clearly recognizable within both disputed domain names. See WIPO Overview 3.0, section 1.8. The only other element in each disputed domain name is a generic Top-Level Domain ("gTLD") extension, ".com". As a mere standard requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain names and the trademark. See WIPO Overview 3.0, section 1.11.1. The Respondents note that the Complainant's trademarks are registered in respect of certain goods and services only. The Panel recalls that the goods and services specifications are irrelevant to the first element of paragraph 4(a) of the Policy, which essentially consists of a side-by-side comparison of the disputed domain names and the mark. See WIPO Overview 3.0, sections 1.1.2 and 1.7. Therefore, the Panel finds that the disputed domain names are 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 Interests, Bad Faith, and Suitability of the Policy for this Dispute The existence of the Respondents' rights or legitimate interests in respect of the disputed domain names should be assessed in view of the circumstances prevailing at the time when the Complaint was filed. See WIPO Overview 3.0, section 2.11. The Respondents use the disputed domain names in connection with websites that use the 豪赫蒂夫 HOCHTIEF mark and the HOCHTIEF logo to promote the Respondents' floor heating systems. It is agreed that the Respondents are in no way related to the Complainant. It is not disputed that the Respondents hold Chinese trademark registrations for the HOCHTIEF logo and 豪 赫蒂夫HOCHTIEF, that are currently in force. The First Respondent is the registered proprietor, and the Second Respondent is a licensee, of these trademarks. These trademarks wholly incorporate the Hochtief page 8 name, which is the initial element of both disputed domain names. The disputed domain names combine that name with the term "-china" or the word "home", and a gTLD extension. The Panel recalls that a respondent's prior registration of a trademark that corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element. See WIPO Overview 3.0, section 2.12.1. However, the Panel takes note that a respondent's trademark is not an absolute bar to the success of a complaint where the overall circumstances demonstrate that its trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant's exercise of its rights. See WIPO Overview 3.0, section 2.12.2. In the present case, the Respondents were certainly aware of the Complainant's prior trademark registrations when they obtained their trademark rights. The Respondents cannot plausibly claim that they independently devised both the Hochtief name and the Hochtief logo when these are the same as prior marks of the Complainant, particularly considering that the Parties' products are in related fields, and that the disputed domain name was previously used with a website displaying, among other things, a photograph of the Complainant's headquarters in Germany, and a photograph showing the Complainant's former CEO, while on the corporate history tab it claimed a date of establishment in 1873, which was the year of the Complainant's establishment. Although the Respondents have registered the logo as an artistic work with China's National Copyright Administration, the China National Intellectual Property Administration has subsequently found that the same logo was clearly intended to reproduce, plagiarize, and copy the Complainant's prior mark (see footnote 2 above). Nevertheless, the China National Intellectual Property Administration's decisions to invalidate five of the Respondent's trademark registrations are currently under appeal to the Beijing Intellectual Property Court and have not become effective in accordance with Article 46 of the Chinese Trademark Law. Although the Complainant maintains that the Respondent's trademark applications were filed in bad faith, the Respondent's trademark registrations stemming from those applications remain in force at the present time in the jurisdiction where the Respondent does business and to which the websites associated with the disputed domain names are directed (i.e., China). Further, several of the Complainant's prior Chinese trademark registrations cited in the invalidation decisions have been cancelled during the pendency of the appeals and of this UDRP proceeding. Therefore, the Panel has decided to deny the Complaint, not on the merits, but on the broader ground that the case regarding the disputed domain names is part of a wider, more complex, trademark dispute between the Parties that exceeds the relatively limited "cybersquatting" scope of the UDRP. That wider dispute can be addressed by a court of competent jurisdiction. See WIPO Overview 3.0, section 4.14.6. While a judicial proceeding on the merits is generally lengthier than a UDRP proceeding, the Panel takes note that the appeals were initiated 10 months before the Complaint was filed and that the Complainant has reported no instances of actual consumer confusion. Without prejudging the outcome of the court appeals, the Panel notes that changed circumstances, such as eventual invalidation of the Respondents' trademark registrations, may point to an absence of rights or legitimate interests in respect of the disputed domain names on the part of the Respondents, which could support grounds for a refiling under the UDRP. The Panel emphasizes that nothing in this Decision prevents the Complainant from having recourse to a court or other tribunal of competent jurisdiction as set out in paragraph 5 of the Policy. C. Reverse Domain Name Hijacking The Respondents request that the Panel make a finding of reverse domain name hijacking. It alleges that the Complainant knew that all of its Chinese trademark registrations for HOCHTIEF were cancelled at the request of the Respondents. They allege that the Complainant is seeking to use the expedited procedure available under the Policy to resolve a trademark dispute between the Parties while concealing material facts. They submit that the Complaint was filed in bad faith and constitutes an abuse of the UDRP page 9 procedure. The Complainant denies the allegation of reverse domain name hijacking. The Complainant expressly pointed out that the Respondents had trademark rights and explained why this should not result in rights or legitimate interests in the disputed domain names. The ownership of trademarks is disputed and it is agreed that the trademark proceedings between the Parties are not the subject of this UDRP procedure. The Panel notes that the Chinese trademark registrations on which the Complaint focused were valid at the time at which the Complaint was filed and that, in any case, the Complainant holds other valid trademark registrations that were referenced in the Complaint. The Complaint disclosed the existence of the First Respondent's trademark rights and provided an itemized list of them. The Panel does not consider that the Complaint was doomed to failure as the existence of a respondent's trademark does not create an irrebuttable presumption of rights or legitimate interests for the purposes of the Policy. See WIPO Overview 3.0, section 2.12. Accordingly, although the Complaint has failed, the Panel does not consider that it was brought in bad faith or constitutes an abuse of the UDRP procedure. 7. Decision For the foregoing reasons, the Complaint is denied. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: September 11, 2022
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