The Complainant is Eurofactor of Issy-Les-Moulineaux Cedex, France, represented by Nameshield, France.
The Respondent is Luo Xi of Guangzhou, Guangdong, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2016, the Registrar transmitted by email to the Center its verification response 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 November 1, 2016 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 on November 2, 2016.
On November 1, 2016, the Center sent an email communication to the Parties regarding the language of the proceeding. On November 2, 2016, the Complainant requested that English be the language of the proceeding. On November 3, 2016, the Respondent requested that Chinese be 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 the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016.
On November 15, 2016, the Respondent requested the Center to reconsider whether the Complaint in English should be allowed. If yes, the Respondent would file a Response by the specified Response due date. On the same day, the Center acknowledged receipt of this email, indicating “having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment).” The Center also provided a model Response in Chinese in the same email.
The Respondent did not file any formal Response. On November 28, 2016, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on December 1, 2016. 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.
As explained below, the Panel issued Procedural Order No. 1 on December 15, 2016, ordering the Complainant to translate its substantive submissions, that is Section VI., Factual and Legal Grounds, in the Complaint into Chinese within 14 days, the Respondent was given 14 days to respond from receipt of the translation. On December 28, 2016, the Complainant requested an extension to the deadline for providing the requested translation. Upon receipt of the Panel’s instruction, the Center informed the Complainant on December 28, 2016 that the translation should be submitted by January 8, 2017.
The Complainant submitted the limited translation on January 3, 2017. The Respondent filed a Response within the time provided on January 12, 2017. 4. Factual Background
The Complainant is the factoring subsidiary of the Crédit Agricole Leasing & Factoring, itself a subsidiary of the French Crédit Agricole group. The Complainant is the registered proprietor of a number of trademarks for EUROFACTOR in Europe covering various financial services. For example, the Complainant owns an International Trademark Registration No. 746789 for EUROFACTOR and Design, registered on October 13, 2000. It is also the registrant of domain names incorporating EUROFACTOR, including . There does not appear to be any other company in the world with the name Eurofactor. A Google search for Eurofactor only returns search results showing the Complainant.
The Respondent is an individual based in China.
The disputed domain name was registered on October 12, 2016.
The disputed domain name does not resolve to any page. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark EUROFACTOR are identical, other than the country Top-Level Domain (“ccTLD”) “.cc”.
No rights of legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for EUROFACTOR. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent’s knew of the Complainant’s rights in the mark EUROFACTOR and acquired the disputed domain name to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name and/or divert business to the Respondent’s website. B. Respondent
The Respondent responded, first, that the Complainant did not have any trademark rights in China and the use by the Respondent of the disputed domain name in China was legal.
Second, it was not correct to say the Respondent did not have rights or legitimate interests in the disputed domain name. Before notice of the Complaint the Respondent had prepared to use the disputed domain name in China and that its use was legitimate noncommercial use and not designed to cause any confusion.
Third, the grounds of bad faith put forward by the Complainant are all made up. The Respondent does not know the Complainant. The Respondent has not put the disputed domain name into use. The Respondent declared that it had not registered the disputed domain name for any of the reasons set out in paragraph 4(b) of the Policy.
The Respondent did not file any evidence to support its assertions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement is Chinese. 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 Complainant requested the language of the proceeding be English on the grounds that a) the English language is the language most widely used in international relations; b) the disputed domain name is formed of the Complainant’s trademark in Roman characters (ASCII) and not in Chinese script; c) the Complainant is located in France and has no knowledge of Chinese; and d) it would be unduly burdensome for it to translate the Complaint into English.
The Respondent requested the language of proceeding be in Chinese in accordance with the Rules and stated that it did not understand foreign languages and would have to spend money to have the Complaint translated. The Registrar for the disputed domain name is in China and it intended to use the disputed domain name in China in the future.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
After notification of the commencement of the proceeding, the Respondent said it did not agree the Complaint should be upheld in English and asked the Center to consider if it complied with the Rules with regard to the language of the proceeding. The Respondent also stated that it would file a response in time to defend its rights. As noted above no Response was filed.
The final determination of the language of the proceeding lies with this Panel.
The Panel is well aware that translating a Complaint increases the expense of bringing domain name dispute proceedings and can cause unnecessary delay in a matter. Nevertheless, the Respondent sent a communication that indicated an intention to defend the proceeding if a Chinese translation of the Complaint was provided.
The Panel therefore determined that the fairest way of dealing with the language issue was to issue a Procedural Order requiring the Complainant to translate Section VI., Factual and Legal Grounds, in the Complaint into Chinese. This Section sets out the substance of the Complaint to which the Respondent needed to respond. It did not appear necessary to translate the remainder of the Complaint which deals principally with formal matters.
The Procedural Order was issued in English and Chinese. The Complainant duly filed the Complaint with Section VI translated. The Respondent filed a response in Chinese within time specified.
The Panel will render its decision in English. B. Identical or Confusingly Similar
The disputed domain name is identical to the registered trademark EUROFACTOR. The only differences is the ccTLD “.cc”.
The Panel notes that the Complainant does not have a registered trademark for EUROFACTOR in China. However, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The first part of paragraph 4(a) of the Policy is therefore satisfied. C. Rights or Legitimate Interests
The Respondent has responded to the Complaint to assert any specific rights or legitimate interests it may have. It has stated that it intends to use the disputed domain name but has not provided any evidence to back this assertion up.
Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has made a bare assertion without providing any evidence. The name “Eurofactor” while made up of two relatively common words “Euro” and “factor” is, on the evidence, unique. The Respondent has not explained how it intends to use the disputed domain name in China other than to state it will be noncommercial. The Respondent has not filed any evidence to show its preparations to make use of the disputed domain name.
The Panel is satisfied that the Complainant has satisfied its prima facie burden which the Respondent has not successfully rebutted.
The second part of paragraph 4(a) of the Policy is therefore satisfied. D. Registered and Used in Bad Faith
For similar reasons as those above and notably the absence of any plausible explanation from the Respondent as to how it came to choose the particular disputed domain name (and noting that the Complainant has held the domain name since 2000), the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
Having examined all the circumstances of the case, and particularly that the trademark EUROFACTOR is a coined term and that the Complainant appears to be the only enterprise that goes by that name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith with an intention of selling the disputed domain name to the Complainant, disrupting the Complainant’s business or using it to confuse consumers.
While the disputed domain name does not appear to have been used, this does not prevent a finding of bad faith. (See paragraph 3.2 of the WIPO Overview 2.0).
The third part of paragraph 4(a) of the Policy is therefore satisfied. 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 be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: January 18, 2017
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