The Complainant is Supersoco Intelligent Technology (Shanghai) Co., Ltd, China, represented by Merx Patentes y Marcas, S.L.P., Spain.
The Respondent is XL Holding Group Co., Limited, China / ITtrust Domain Services LTD, Ireland. 2. The Domain Name, Registry and Registrar
The disputed domain name is The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On January 5, 2021, the Center transmitted by email to the Registry a request for a verification in connection with the disputed domain name. On January 6, 2021, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 19, 2021, the Complainant filed an amended Complaint seeking to have a third party added as co-complainant. On January 25, 2021, the Complainant filed a request to withdraw said third party and for the Complaint to proceed in its own name only. The Complainant also requested that the remedy of revocation be added to its Complaint in the alternative, should the remedy of transfer not be granted. The Complainant’s said request was received after notification of the Complaint and was not copied to the Respondent. Nevertheless, the Panel considers that the request itself causes the Respondent no prejudice. The only practical consequence is to substitute the remedy of revocation for the remedy of transfer in the event that the Complainant prevails in its Complaint but does not satisfy the criteria set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. Accordingly, the Panel did not consider that it was necessary to invite the Respondent to comment upon the Complainant’s request and proceeded directly to a Decision in the administrative proceeding. The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was February 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 3, 2021. 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 ADR Rules, Paragraph B(5). 4. Factual Background The Complainant is a Chinese company founded in 2015 that focuses on light urban mobility solutions. The Complainant designs, manufactures and markets motorcycles, bicycles, scooters, and other vehicles. The Complainant has more than 2,000 outlets and exports to 73 countries and regions. The Complainant's principal market is in Europe, and it has established a market research center in Italy, a sales service center in the Netherlands, and a warehouse in Germany. The Complainant uses various websites to market its products, several of which use a domain name consisting of, or incorporating, the name “supersoco”. At least 10 of such websites are dedicated to a market in a particular European Union member state. The Complainant is the owner of International Registered Trademark No. 1372836 for a figurative mark consisting of the words SUPER SOCO in stylized typeface, registered on August 15, 2017, in international classes 12 and 35. Said international mark was based upon Chinese trademark No. 20119492, registered on May 27, 2016, and was designated in respect of the European Union, among other territories, as reflected in the corresponding European Union Registered Trade Mark No. 1372836, with registration date of August 15, 2017. The Complainant is also the owner of other registered trademarks for the figurative SUPER SOCO mark with later registration dates. The disputed domain name was registered on March 7, 2017. Little is known regarding the Respondent, which has not participated in the proceeding. According to the Complainant’s screenshots, the disputed domain name has been pointed to a website at “www.horwin.eu”, which offers e-mobility products in competition with the Complainant’s offerings.1 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The disputed domain name incorporates the SUPERSOCO word part of the Complainant’s mark, which is protected in the European Union, in an identical form. The country code Top-Level Domain (“ccTLD”) “.eu” is to be disregarded in the comparison. Rights or legitimate interests The disputed domain name points to a website at “www.horwin.eu” featuring similar products to those produced by the Complainant. Consumers are likely to believe that said website is one of the Complainant’s sites or that of a linked company or distributor. This use confers no rights or legitimate interests upon the Respondent and the Respondent has not used the disputed domain name or a trademark corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Registered or used in bad faith Bad faith is not limited to the moment of registration but can be established by later use. Screenshots from the Internet Archive establish that the disputed domain name forwarded traffic to a competitor. Using the disputed domain name to link to such a website constitutes abusive registration thereof. While the Complainant’s trademark was granted some months after the disputed domain name was registered, the trademark on which it was based was a Chinese trademark which had been filed on May 27, 2016. As the Respondent is Chinese, it is likely that it had knowledge of this. The use of the disputed domain name to promote products identical to those of the Complainant also demonstrates such prior knowledge and an intention to use the disputed domain name with the Complainant’s trademark in mind. The disputed domain name was (and is) intentionally used to attract Internet users, for commercial gain, to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of the website or the websites linked thereto. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In terms of Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant in the event that the Complainant proves in ADR Proceedings where the Respondent is the holder of a .eu domain name registration in respect of which the Complaint was initiated that: (i) the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either (ii) the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or (iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law The Panel finds that the Complainant’s SUPER SOCO European Union trademark, described in the factual background section above, confers upon the Complainant a right in the name and mark SUPER SOCO which is established by European Union law. The Panel notes that the second level of the disputed domain name is identical to the Complainant’s said mark with the exception of white space between the two elements of said mark. This space is of no consequence as it is not technically possible to reproduce white space in a domain name. As the Complainant notes, the ccTLD “.eu” is typically disregarded for the purposes of the comparison exercise. Although the Complainant’s said mark is figurative in nature, the textual element can be identified without difficulty and extracted from the graphical element, which is merely the stylization of the words SUPER SOCO in a particular typeface. Domain names cannot contain graphical representations for technical reasons and, accordingly, the comparison typically takes place between the alphanumeric component of the disputed domain name and the textual component of the trademark concerned, so far as such textual component is severable from any graphical element of the mark. The Respondent has not taken issue with the Complainant’s submissions on identity or similarity between its mark and the disputed domain name. In all of these circumstances, the Panel finds that the Complainant has established that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by European Union law and thus that the Complainant prevails on the first element assessment. B. Rights or Legitimate Interests Paragraph B11(e) of the ADR Rules sets out a non-exhaustive list of circumstances, any of which shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name if found by the Panel to be present: (1) prior to any notice of the dispute, the Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with the offering of goods or services or has made demonstrable preparation to do so; (2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the disputed domain name, even in the absence of a right recognized or established by national and/or European Union law; (3) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law. As the panel noted in Eiyolab v. Yave Fernandez Perez, Ayolabs S.L.,WIPO Case No. DEU2020-0015, “Under the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name.” For the same reasons, the Panel adopts this approach in the present case. The Panel notes that it is satisfied that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, that the disputed domain name has been registered by the Respondent without rights or legitimate interests therein. In particular, the Complainant asserts that the Respondent is not using the disputed domain name in connection with any legitimate offering of goods and services. The Complainant also demonstrates that the disputed domain name is used to forward traffic to the website of a competitor of the Complainant. Given that the disputed domain name is confusingly similar and nearly identical to the textual component of the Complainant’s distinctive mark, the Panel accepts the Complainant’s submission that such use cannot confer rights or legitimate interests upon the Respondent. The fact that the disputed domain name was registered before the Complainant’s International/European Union trademark proceeded to grant is nothing to the point in this particular case. The Complainant notes that its trademark was originally filed in China in May 2016 and makes the unchallenged assertion that, as the Respondent XL Holding Group Co., Limited is also based in China, it would reasonably be expected to have been aware of this. The Panel considers that said assertion is reinforced by the fact that the Complainant’s mark is distinctive rather than descriptive and that the Parties evidently have an interest in the same line of business. In other words, there could be no realistic suggestion that the registration of the disputed domain name was a mere coincidence, unrelated to the Complainant and its rights. The Respondent has received the opportunity to bring forward submissions or evidence regarding any rights or legitimate interests which it might have in the disputed domain name but has failed to do so. In the absence of such, the Panel has been unable to identify any obvious or likely rights or legitimate interests which it might have had. Furthermore, in terms of the present record, none of the factors in paragraph B11(e) of the ADR Rules appear to apply to the facts and circumstances of this case. In all of these circumstances, the Panel finds that the disputed domain name has been registered by the Respondent without rights or legitimate interest. Accordingly, the Complainant prevails on the second element assessment and the Complaint succeeds. C. Registered or Used in Bad Faith As the Complainant has succeeded on the first and second elements, it is not strictly necessary for the Panel to consider the third element under the ADR Rules. However, for completeness, the Panel will briefly review the Complainant’s submissions on this topic. In the present case, the Complaint’s submissions on the topic of bad faith are principally concerned with the use of the disputed domain name. The Complainant has demonstrated that the disputed domain name is confusingly similar and nearly identical to the textual component of its distinctive SUPER SOCO trademark and is being used to forward traffic to the website of one of its competitors. As noted above, this is a use which suggests both knowledge of, and an intent to target, the Complainant’s rights. That cannot be regarded as a use in good faith. In these circumstances, as the Complainant points out, it is unnecessary for the Panel to review the circumstances of registration of the disputed domain name in connection with the third element under the ADR Rules. The Respondent has chosen not to participate in the administrative proceeding and, therefore, has failed to put forward any evidence or submissions which might have countered the Complainant’s case that the disputed domain name is being used in bad faith. In the absence of such, the Panel notes that it has been unable to conceive of any possible good faith motivation which the Respondent might have had regarding its use of the disputed domain name. In all of these circumstances, the Panel finds that the disputed domain name has been used in bad faith and that the Complaint also prevails on the third element assessment. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name Andrew D. S. Lothian 1 The Panel notes that according to the information provided by the Registry, the Respondent XL Holding Group Co., Limited appears as the “On-site contact” organisation, while the Respondent ITtrust Domain Services LTD appears as the registrant for the disputed domain name. The Panel, by virtue of the general powers articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, has undertaken an Internet search on a search engine of the named Respondent XL Holding Group Co. The search results lead the Panel to a website at “www.xlholdinggroup.com” which displays a “HORWIN” logo and the name “XL Holding Group”, similar to the logo displayed on the website to which the disputed domain name redirects. Noting that the Respondent XL Holding Group Co., Limited is located in China, the Panel finds likely that the ultimate owner and the entity with the control over the disputed domain name is really the Respondent XL Holding Group Co., Limited despite it being nominally just the “On-site contact”. Therefore, the Panel will refer to both, the nominal registrant (i.e. the Respondent ITtrust Domain Services LTD) and XL Holding Group Co., Limited, as the Respondent. 2 The Complainant in this case sought the remedy of transfer under paragraph 11(b) of the ADR Rules on the basis that it was eligible for such in accordance with Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. The nature of such eligibility was said to be that the Complainant has a distribution network in the European Union and unspecified associated companies in that region. In the Panel’s view, these facts would not confer eligibility upon the Complainant itself, as they do not demonstrate that the Complainant is an undertaking that is established in the Union nor indeed that it meets any of the other eligibility criteria. On the contrary, the Complainant is legally established in China. The panel in Deltona Transformer Corporation v. Unknown, Producto AG / Reiner Bayer, PROFI PRODUCTS,WIPO Case No. DEU2019-0021 reached a similar conclusion in similar circumstances, where the complainant, a company established in the United States of America, asserted that it was eligible to receive a transfer of the domain name concerned because it had offered goods in the European Union market continuously for at least the past two decades. As noted in the procedural history section above, the Complainant in the present case alternatively requested that, if it was found to be ineligible to receive a transfer by the Panel, it be granted the remedy of revocation and the Panel has proceeded accordingly.
Sole Panelist
Date: March 19, 2021
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