The Complainant is Wärtsilä Technology Oy Ab of Helsinki, Finland, represented by Castrén & Snellman Attorneys Ltd., Finland.
The Respondent is Zhaoxingming of Huaian, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name (the “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 April 23, 2018. On April 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2018, 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 May 1, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 4, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on June 13, 2018. 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 part of the Wärtsilä Group, a global leader in smart technologies and complete lifecycle solutions for the marine and energy markets. It has been in operation since 1834. In 2017, the Wärtsilä Group’s net sales totalled EUR 4.9 billion with approximately 18,000 employees. The Wärtsilä Group has operations in over 200 locations in more than 80 countries around the world. The Complainant’s parent company, Wärtsilä Oyj Abp, is listed on Nasdaq, Helsinki.
The Wärtsilä Group’s business consists of three business areas; Marine Solutions, Energy Solutions and Services. Marine Solutions enhances the business of marine, oil and gas industry customers by providing innovative products and integrated solutions that are safe, environmentally sustainable, efficient, flexible, and economically sound. Energy Solutions is a leading global energy system integrator offering a broad range of environmentally sound solutions. Servicesprovides high-quality lifecycle services that enhance customers’ business.
The Complainant is the holder of multiple WÄRTSILÄ trade mark registrations including in the European Union and China (e.g., European Union registration no. 000838466, registered on February 21, 2000). The earliest trade mark registration submitted in evidence was registered 1996 (the “Trade Mark”). The Wärtsilä Group has also registered and uses the following domain names as of 1991, and as of 1996.
The Domain Name was registered on December 7, 2017 by the Respondent who is based in China. The Domain Name was connected to a website which had pay-per-click links connected to products that reference the Complainant e.g., “WÄRTSILÄ Diesel Engines” and “Engine Wartsila” (the “Website”). The Website currently displays a form which has as the heading “W may be for sale”. It then reads, “Complete This Form - To send an inquiry to the owner of W. The owner of W has chosen to receive offer inquiries regarding this domain name. Note that the owner may disregard your inquiry if your offer does not meet his or her expectations.” On February 23, 2018, the Complainant sent a cease and desist letter to the Respondent. In his response on February 24, 2018, the Respondent offered to transfer the Domain Name to the Complainant for the sum of USD 2,890. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith. 6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, 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.
The Complainant submits that the language of the proceeding should be English for the following reasons: English is widely used and understood; the Website is in the English language which is a strong indication that the Respondent operates in and understands English; the Respondent responded to the Complainant’s cease and desist letter in English. Further in order to conduct the proceedings in a timely and cost effective manner, the language of the proceedings should be in English.
In exercising its discretion to use a language other than that of the Registration Agreement, 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 the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.3. Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is almost identical to the Trade Mark, the only difference being that the “ä” in WÄRTSILÄ is replaced by “a”. Those who are not familiar with the Finnish language are likely not to notice the difference.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that 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 relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorized the Respondent to use the Trade Mark or register the Domain Name or any domain name. The Respondent’s use of pay-per-click links to websites of third parties that provide products and services which compete with the Complainant’s business is not bona fide or legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name given the reputation and extensive use of the Trade Mark and the fact that the pay-per-click links makes reference to the Trade Mark and are linked to third party products and services in the same sector as the Complainant’s under the Trade Mark.
WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that the Trade Mark has a reputation and there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website was a pay-per-click site which would have been of commercial benefit to the Respondent. It is highly likely that web users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is extremely likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name.
The Respondent employed the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
In addition, the Respondent asking the Complainant to pay USD 2,890 to transfer the Domain Name demonstrates that the Domain Name has been used in bad faith. The offer to transfer the Domain Name for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. Further the current use of the Website is for the purpose of selling the Domain Name with the caveat that any offer is subject to meeting the expectations of the Domain Name owner. An indication of the likely expectation has been given in the offer of sale to the Complainant which supports the bad faith use under this limb. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP. 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 the Complainant.
Karen Fong
Sole Panelist
Date: June 19, 2018
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