The Complainant is Bürkert Werke GmbH & Co. KG., Germany, represented by Convey Srl, Italy.
The Respondent is 侯晓毅 (Hou Xiao Yi), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 2020, 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. The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”). In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 3, 2020. In accordance with the Rules, Articles 17 and 49, the due date for Response was November 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2020. The Center appointed Linda Chang as the sole panelist in this matter on December 21, 2020. 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, Article 29. 4. Factual Background The Complainant, founded in Germany in 1946, is specialized in the sector of industrial measurement and control technology of fluid and gas. The Complainant has 36 branch offices worldwide, including 10 offices in China. The Complainant is the owner of a number of BÜRKERT trademark registrations, including Chinese Trademark No. 1173526 registered on May 7, 1998. The Domain Name was registered on May 11, 2020. The website associated with the Domain Name is inactive at the moment but according to the evidence presented by the Complainant, it used to resolve to a website displaying “Burkert ShangHai” and purportedly offering for sale of the BÜRKERT trademarked products. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the trademark BURKERT, with the only distinction of the inversion of the letters “e” and “r”, and the addition of a geographical term “sh”. The Complaint further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name or the major part of the Domain Name. The Respondent is not a licensee or authorized dealer of the Complainant nor has been authorized by the Complainant to use the trademark in the Domain Name nor has been commonly known by the Domain Name. The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent had actual notice of the trademark BURKERT at the time of registering the Domain Name and intended to divert Internet users interested in the Complainant’s products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding Article 8 of the Rules provides that the language of the proceeding shall be Chinese unless otherwise agreed by the Parties or decided by the Panel in exceptional cases. The Complainant requested for English to be the language of the proceeding. Its arguments include, inter alia, that the Respondent has familiarity with English since the Domain Name contains Latin characters and points to a website partially displaying English contents. The Center’s notification of the Complaint email of November 3, 2020 in Chinese and English indicates that the Complainant has submitted a request that English be the language of the proceeding in the Complaint, and accordingly, the Respondent may submit any comments on the language of the proceeding in the Response. The Response may be filed in either Chinese or English. The Respondent has not commented on the language of the proceeding nor has the Respondent filed any response. The Panel notices that though the Respondent is located in China, the Domain Name resolves to a website partly in English. The Panel finds it reasonable to conclude that the Respondent is able to understand English. Considering that the Respondent chose not to respond or object to the use of English as the language of the proceeding, and that it would unduly delay the proceeding if the Complainant is required to provide Chinese translation of the submissions, the Panel views that using English as the language of the proceeding would not be prejudicial to the Respondent in his ability to articulate the arguments for the case. The Panel thus determines that the language of the proceeding shall be English and the decision will be rendered in English. B. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests The Panel agrees that the country code Top-Level Domain (“ccTLD”) “.cn” is merely instrumental and will not affect the Domain Name under the confusing similarity test. The major part of the Domain Name is “burkretsh”, consisting of “burkret”, and a geographical term “sh” which is normally deemed as the abbreviation of “Shanghai” (a city in China). The Panel further agrees that “burkret” is a misspelled word of the Complainant’s trademark BÜRKERT. The inversion of the letters “e” and “r” is a very slight variation of the trademark BÜRKERT and does not prevent the Domain Name from being confusingly similar to BÜRKERT. Furthermore, the addition of the geographical term “sh” is insufficient to negate the confusing similarity between the Domain Name and the trademark BÜRKERT. Accordingly, the Complainant has satisfied paragraph 8(a) of the Policy. C. Rights or Legitimate Interests As contended in the Complaint, the Respondent is not the Complainant’s licensee or authorized dealer nor has been authorized by the Complainant to use the trademark BÜRKERT in the Domain Name or in any other manner. As the Respondent failed to respond in this proceeding to rebut contentions of the Complainant, the Panel is satisfied that the Complainant has made a prima facie case to demonstrate that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel further finds that the Respondent’s use of the Domain Name as a website presenting itself as “Burkert ShangHai” without authorization from the Complainant will not create any rights or legitimate interests on the Respondent nor represent a bona fide offering of goods or services. Accordingly, the Complainant has satisfied paragraph 8(b) of the Policy. D. Registered or Used in Bad Faith It is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights over BÜRKERT at the time of the registration of the Domain Name, particularly given the fact that the Respondent was advertising BÜRKERT branded products on the corresponding website of the Domain Name. Further, the Complainant established its first office in Shanghai in 1998. Therefore, the intentional misspelling of the Complainant’s trademark BÜRKERT in the Domain Name with the geographical term “sh” suggests that the Respondent knew of the Complainant at the time of the registration of the Domain Name. The Domain Name was redirected to a website displaying “Burkert ShangHai” and purportedly offering for sale of the BÜRKERT products. The Panel views such use of the Domain Name demonstrates that the Respondent intended to trade upon the Complainant’s trademark in order to attract to his website Internet users looking for the Complainant and BÜRKERT branded products. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website to which the Domain Name resolves, by creating a likelihood of confusion with the Complainant’s trademark BÜRKERT as to the source, sponsorship, affiliation or endorsement of the website or products on the website. Moreover, the current inactive use of the Domain Name does not prevent the Panel’s finding of the Respondent’s bad faith in this case. Before the initiation of this proceeding, the Complainant had sent a cease-and-desist letter to the Respondent informing of the infringement by his registration of several domain names including the Domain Name which incorporates the Complainant’s BÜRKERT trademark or its variation. The letter was not responded despite a reminder sent from the Complainant. The Respondent has been ordered in other proceedings to transfer some of the domain names mentioned in the letter of the Complainant. All these further support a finding of bad faith registration and use. Accordingly, the Complainant has satisfied paragraph 8(c) of the Policy. 7. Decision For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the Domain Name Linda Chang
Sole Panelist
Date: January 19, 2021
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