ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Arrow Special Parts S.p.A. v. yang yu hua Case No. D2023-2051 1. The Parties Complainant is Arrow Special Parts S.p.A., Italy, represented by Studio Legale Tributario EY, Italy. Respondent is yang yu hua, China. 2. The Domain Name and Registrar The disputed domain name
(the "Domain Name") is registered with Gname.com Pte. Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2023. On May 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Name Redacted) and contact information in the Complaint. The Center sent an email communication to Complainant on May 12, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on May 15, 2023. On May 12, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 15, 2023, 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 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 13, 2023. page 2 The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 27, 2023. 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 Complainant, an Italian company, designs, develops, and produces performance exhaust systems. Complainant's business has been associated with the "Arrow" corporate name since 1985 and currently, Complainant's ARROW products are being distributed over 60 countries, including China. Complainant owns several registered trademarks with ARROW mark, including: - International Trademark number 621284, for ARROW word and design mark, registered on June 16, 1994, designating various jurisdictions, including China; - European Union Trade Mark number 000856666, for ARROW word and design mark, registered on September 8, 1999; and - United States of America Trademark number 2675842, for ARROW word and design mark, registered on January 21, 2003. Complainant also owns several domain names with the term "arrow", including: - registered on March 6, 1997; - registered on April 7, 2000; - registered on April 7, 2000; - registered on December 19, 2000; - registered on February 15, 2001; - registered on February 15, 2001; and - registered on April 7, 2004. The Domain Name was registered on September 29, 2022, and at the time of the filing of the Complaint, it redirected to a website prominently featuring Complainant's ARROW trademarks, and also marketed and sold ARROW-brand products, in particular, exhaust systems. At the time of the Decision, the Domain Name reverted to an error or inactive page. On April 18, 2023, Complainant sent a cease-and-desist letter to Respondent via the Registrar, informing Respondent of Complainant's trademark rights and requesting Respondent to cease use of the Domain Name, refrain from sale of exhausts under the ARROW trademark, and to transfer the Domain Name to Complainant. Complainant also sent a trademark infringement notice to the Registrar. Respondent did not respond. Complainant thereafter filed the current Complaint. 5. Parties' Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for ARROW and that Respondent page 3 registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known ARROW products and services. Complainant notes that it has no affiliation with Respondent, and contends that Respondent has used Complainant's reputation to sell counterfeit ARROW products on the website associated with the Domain Name. Complainant further contends that Respondent is using the Domain Name as a tool to exploit Complainant's reputation for its own commercial gain, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name other than trademark infringement. Further, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant's rights. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. Complainant submitted its original Complaint in English. In its email dated May 15, 2023 and amended Complaint, Complainant submitted a request that the language of the proceeding should be English. Complainant contends that the Domain Name resolved to a website providing content in English throughout the site, that the privacy policy and contact form on the website were in English; that Respondent's email address contains an English name; and that the Domain Name is composed entirely of English terms, and thus asserts that Respondent is familiar with the English language. Complainant also requested that the proceedings be in English to provide prompt resolution of the dispute at reasonable costs. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time, and costs. The Panel accepts Complainant's submissions regarding the language of the proceeding. The Panel notes that the Domain Name is composed of Complainant's trademark plus the English terms "exhaust" and "rock", and the content of the website that the Domain Name reverted to, at the time of filing of the Complaint, was in English. In addition, the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of commencement of the proceeding and indicated that Respondent may file a Response in either Chinese or English, but Respondent chose not to do so. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and costeffective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese while conducting the proceeding in English would not cause unfairness to either Party in this case. page 4 Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that failure to respond to the complainant's contentions would not by itself mean that the complainant is deemed to have prevailed; and a respondent's default is not necessarily an admission that the complainant's claims are true. Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the ARROW trademarks, as noted above under section 4. Complainant has also submitted evidence, which supports that the ARROW trademarks are widely known and a distinctive identifier of Complainant's products and services. Complainant has therefore proven that it has the requisite rights in the ARROW trademarks. With Complainant's rights in the ARROW trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain ("TLD") in which it is registered (in this case is, ".com"), is identical or confusingly similar to Complainant's trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant's ARROW trademarks. These ARROW trademarks are recognizable in the Domain Name. In particular, the Domain Name's inclusion of Complainant's trademark ARROW in its entirety, with an addition of the terms "exhaust" and "rock", in the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the ARROW trademarks. See WIPO Overview 3.0, section 1.8. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. page 5 From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its ARROW trademarks, and does not have any rights or legitimate interests in the Domain Name. In addition, Complainant asserts that Respondent is not an authorized reseller and is not related to Complainant. Respondent is also not known to be associated with the ARROW trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of filing of the Complaint, the Domain Name reverted to a website that prominently featured Complainant's ARROW trademark, promoted and offered products that appeared to be counterfeits of Complainant's ARROW-branded exhaust systems, which could mislead Internet users into thinking that the website has been authorized or operated by or affiliated with Complainant. At the time of the Decision, the Domain Name reverted to an error or inactive page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, the nature of the Domain Name is inherently misleading, and carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent's actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a respondent, namely: "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location." The Panel finds that Complainant has provided ample evidence to show that registration and use of the ARROW trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant's ARROW trademarks and related products and page 6 services are widely known and recognized. Therefore, Respondent was likely aware of the ARROW trademarks when it registered the Domain Name or knew or should have known that the Domain Name was confusingly similar to Complainant's trademarks. See WIPO Overview 3.0, section 3.2.2; and see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the registration of the Domain Name incorporating Complainant's ARROW trademark in its entirety suggests Respondent's actual knowledge of Complainant's rights in the ARROW trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. Moreover, the additional term "exhaust" in the Domain Name is also directly associated with Complainant's business activities in the field of exhaust systems, further indicating Respondent's actual knowledge of Complainant and its trademarks, and that Respondent's registration of the Domain Name was in bad faith. In addition, the evidence provided by Complainant indicated that at the time of filing of the Complaint, the Domain Name reverted to a website that promoted and offered products that appeared to be counterfeits to Complainant's ARROW-branded exhaust systems, which could mislead Internet users into thinking that the website has been authorized or operated by or affiliated with Complainant, and offered ARROW-branded products for sale. Such use included Respondent's unauthorized reproduction of Complainant's ARROW marks - which could mislead Internet users into thinking that the respective website has been authorized or operated by or affiliated with Complainant, and offered ARROW-branded products for sale, all of which have not been rebutted by Respondent. At the time of the Decision, the Domain Name reverted to an error or inactive page. Such use cannot does not prevent a finding of bad faith. Moreover, the use of the ARROW mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant's products and services. In addition, the use of the additional term "exhaust" in the Domain Name only serves to invoke Complainant's business and the industry Complainant operates in. Therefore, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's webpage by creating a likelihood of confusion with Complainant's ARROW marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Further, the Panel also notes the failure of Respondent to submit a Response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Name may be put. Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of 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 Domain Name be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: July 4, 2023
Full & Egal Universal Law Academy