The Complainant is Voestalpine High Performance Metals Pacific Pte. Ltd. (formerly ASSAB Pacific Pte Ltd), Singapore, represented by Baker & McKenzie, Hong Kong, China.
The Respondent is 许文森 (xuwensen), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2020. On November 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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. On December 7, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 8, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2021. The Center appointed Douglas Clark as the sole panelist in this matter on January 21, 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 Rules, paragraph 7. 4. Factual Background The Complainant was formed in 1945 to market high quality tool steel from Sweden and is headquartered in Singapore. The Complainant operates almost 50 sales offices in the Asia Pacific region and is a pioneer and leader in tool steel solutions in Asia. The Complainant also anchors the distribution network for Uddeholm, a world leading tool steel manufacturer with more than 300 years of experience in the tool steel industry. The Complainant’s companies in Asia focus on bringing superior quality steel to the market and its “Totaling Tooling Economy” provides its customers with key-value added services. Its presence in China dates back more than 50 years, beginning from the distribution of its tool steels in Southern China in the mid-1950s. In the 1990s, the Complainant established its first-ever outlet in Shenzhen, China. Today, the Complainant has over 500 employees in 22 locations across Mainland China and continues to expand its network of services in response to needs and requirements of the manufacturing industry in China. The total amount of sales of the Complainant’s products in China from 2006 to 2011 was around RMB 1.36 billion. The Complainant has used its ASSAB trade mark from as early as 1957 and holds a number of trade mark registrations for the trade mark and other related trade marks in various jurisdictions worldwide, including Hong Kong, China, Taiwan, China and Mainland China. In Mainland China, the ASSAB trade mark is known as “一胜百”, which translates to “One beats One Hundred”. The PRC National Library Search also indicates that the ASSAB trade mark has obtained a high degree of fame among relevant consumers. The Respondent is an individual resident allegedly located in China. The disputed domain name was registered on September 28, 2011. At the date of this decision, the disputed domain name resolves to an inactive webpage. At the date of filing the Complaint, the disputed domain name resolved to a website operated by Chinese companies called 广东一胜百模具技术有限公司 (Guangdong Yi Sheng Bai Mould Technology Co., Ltd.) and 一胜百模具技术有限公司 (Yi Sheng Bai Mould Technology Co., Ltd.). Both aforementioned company names wholly incorporate the Complainant’s 一胜百 (ASSAB in Chinese) trade mark. 5. Parties’ Contentions A. Complainant The Complainant contends that: (a) The disputed domain name is confusingly similar to its trade mark. The disputed domain name wholly incorporates the ASSAB trade mark and the addition of the term “.so” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated; (b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and (c) The disputed domain name was registered and is being used in bad faith. The mere fact that the Respondent has registered a domain name incorporating the trade mark of a well-known company gives rise to an inference of bad faith. The Respondent had actual knowledge of the Complainant’s mark based on the references and representations of the Complainant’s official website “www.assab.com/china” found in the disputed domain name webpage. The Complainant has also taken legal action against the Respondent’s incorporation of multiple companies that contain the 一胜百 trade mark in its name and the registration of multiple domain names incorporating the ASSAB trade mark. The Respondent is the legal representative and shareholder of 广东一胜百模具技术有限公司 (Guangdong Yi Sheng Bai Mould Technology Co., Ltd.). The Respondent is also a legal representative of 一胜百模具技术有限公司东莞分公司 (Yi Sheng Bai Mould Technology Co., Ltd. Dongguan Branch), 一胜百模具技术有限公司江苏分公司 (Yi Sheng Bai Mould Technology Co., Ltd. Jiangsu Branch) (“YSB Tooling Jiangsu”) and 陕西一胜百模具有限公司东莞分公司 (Shaanxi Yi Sheng Bai Mould Co., Ltd. Dongguan Branch), and a shareholder of a number of companies including 一胜百模具技术有限公司 (Yi Sheng Bai Mould Technology Co., Ltd.). All the aforementioned companies wholly incorporate the Complainant’s 一胜百 (ASSAB in Chinese) trade mark. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues – Language of the Proceeding According to paragraph 11(a) of the Rules, 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. In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds: a) the Complainant communicates in English and would be prejudiced if it is required to translate the Complaint and participate in the proceeding in Chinese; b) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of this proceeding; c) the Respondent has demonstrated that he or she understands English since the disputed domain name resolves to a website that contains English; and d) the disputed domain name is in the English language and consists of the ASSAB trade mark. In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances: - the Center has notified the Respondent of the proceeding in both English and Chinese; - the Respondent has not commented on the language of the proceeding nor has responded to the Complainant in any way; - an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding. Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”. 6.2 Substantive Issues The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action: (i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name. Section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The ASSAB trade mark is not a term commonly used in the English language, and the Respondent is not authorized nor licensed to use the Complainant’s ASSAB trade mark or to apply for registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name. The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Based on the given evidence, the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant has registered the ASSAB trade mark and the use of the Complainant’s ASSAB trade mark cannot be a coincidence. The Complainant has obtained registration for the ASSAB trade mark in Hong Kong, China from as early as 1957, and the Complainant’s ASSAB-related trade marks have been widely-known among the relevant public and consumers. The Panel is satisfied that the Respondent was aware of the Complainant and its ASSAB trade mark when he or she registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. The Complainant has provided evidence that the disputed domain name previously resolved to a website operated by Chinese companies with names similar to the names of the Complainant’s subsidiaries, 一胜百模具（东莞）有限公司 (ASSAB Tooling (Dongguan) Co., Ltd.) and 一胜百模具（东莞）有限公司广州分公司 (ASSAB Tooling (Dongguan) Co., Ltd. Guangzhou Branch), that also incorporate the 一胜百 (ASSAB in Chinese) trade mark in full. It is likely that consumers will be confused by the use of the company names displayed on the disputed domain name website with the 一胜百trade mark as they may believe that the website is owned and operated by the Complainant’s aforementioned subsidiaries. Furthermore, the webpage directs users to contact the Respondent through the email “[…]@assab.so”. The Respondent is intentionally deceiving consumers into believing that they are related to the Complainant using the email address “[…]@assab.so”, which contains the ASSAB trade mark in full. The Complainant has also provided evidence that the Respondent has copied the references and representations from the Complainant’s official website “www.assab.com/china”. The website layout, contents from the Introductory page, Environment Responsibility and Corporate Responsibility bear a striking similarity to those found on the Complainant’s official website. The Panel finds that the Respondent has intentionally registered the disputed domain name to attract Internet users to the website by creating a likelihood of confusion with the Complainant’s ASSAB trade mark. Though the disputed domain name resolves to an inactive website at the date of this decision, it is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.0) The Panel notes that the Respondent has a pattern of incorporating companies that have the 一胜百 (ASSAB in Chinese) trade mark as their trade names and that the Complainant has taken legal action against YSB Tooling Jiangsu for the use of the 一胜百trade name. It is also noted that the Complainant has taken legal actions against “assab” domain names that wholly or partially contain the ASSAB trade mark registered by the Respondent and his or her companies. In all the proceedings, the Chinese courts have ruled in favour of the Complainant and found the Respondent to have no rights and legitimate interests in relation to the ASSAB trade mark. Based on the Respondent’s past conduct, the Panel finds that the disputed domain name was intentionally registered to unfairly take advantage of the Complainant’s reputation and trade mark and to deliberately mislead consumers into believing that there is a connection between the Complainant and the disputed domain name. For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied the third element under 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 disputed domain name Douglas Clark
Sole Panelist
Date: February 10, 2021
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