The Complainant is Blue Green, France, represented by Nameshield, France.
The Respondent is Guan Hui Hua, China.
The disputed domain name <bluegreen.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2019 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 in English on November 8, 2019.
On November 7, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the following day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on 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 English and Chinese of the Complaint, and the proceedings commenced on November 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2019. The Respondent sent an email communication on November 12, 2019 but did not submit any formal Response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on December 11, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 26, 2019. 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.
The Complainant manages golf courses. It holds French trademark registration number 4442556, registered on April 3, 2018, and European Union trademark registration number 017949455, registered on January 23, 2019, both for a semi-figurative mark including the word “Bluegreen”, and both specifying goods and services in classes 12, 18, 25, 28, 35, 41 and 43. Both trademark registrations remain current.
The Respondent is named as an individual resident in China. Its contact address is a street and building number, allegedly in Tianjin. Due to the fact that the Respondent’s contact address in the Registrar’s WhoIs database is incomplete, the Written Notice of the Complaint could not be delivered by courier.
The disputed domain name was registered by the Complainant on February 25, 1998 and used in connection with the Complainant’s official website where it provided information about itself and its goods and services. At later points in time, the registration information for the disputed domain name was subtly changed and the disputed domain name was transferred to the current Registrar. The disputed domain name registration was transferred to the Respondent on or about October 15, 2019. The Complainant then discovered that the disputed domain name was being offered for auction on a broker’s website. After the Complainant contacted the broker, the disputed domain name was removed from auction on October 22, 2019. The disputed domain name no longer resolves to any active website; rather, it is passively held.
The disputed domain name is identical to the Complainant’s BLUEGREEN trademark and includes that trademark in its entirety.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known as the disputed domain name. The Respondent is not affiliated with, nor authorized by, the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with, the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s BLUEGREEN trademark or to apply for registration of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent’s hijacking of the disputed domain name constitutes per se bad faith registration and use. The disputed domain name was transferred to the Respondent without the authorization of the Complainant. The prior changes in registration information and transfer of the disputed domain name to the current Registrar were all effected without the knowledge of the Complainant.
The Respondent’s email of November 12, 2019 stated only that “I amend the Complaint, invoice proof of the domain procurement”.
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that English is the language most widely used in international relations, the disputed domain name is in Roman characters, and translation of the Complaint would be costly and impose a significant burden on the Complainant.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint and amended Complaint were filed in English. The Respondent’s informal email was sent in English. Despite having received notice of this proceeding and the email regarding the language of the proceeding in both Chinese and English, the Respondent has not expressed any interest in responding to the Complaint beyond that brief informal email, nor made any request regarding the language of the proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint from English into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the BLUEGREEN semi-figurative mark.
The disputed domain name incorporates the non-figurative element of the Complainant’s trademark, i.e., the word “Bluegreen”. For technical reasons, the disputed domain name cannot include the figurative element of that trademark, hence that other element can be disregarded in the comparison between the disputed domain name and the BLUEGREEN mark. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
The only other element of the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, i.e. “.com”. As a technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The disputed domain name does not resolve to any active website; rather, it is held passively. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, nor does it make a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is “Guan Hui Hua”. There is no evidence on the record that the Respondent has been commonly known as “bluegreen” within the terms of paragraph 4(c)(ii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because, in particular, it did not assert any rights or legitimate interests. To the extent that the Respondent’s informal email may have attempted to assert a lawful acquisition of the disputed domain name, it failed to provide any evidence.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the evidence on record shows that the Complainant has been using the disputed domain name until recently, but the Respondent acquired the disputed domain name after changes were made to the Complainant’s registration contact information. These changes were very subtle, which is consistent with an effort to evade detection by the Complainant. That interpretation of the facts is supported by the subsequent transfer of the disputed domain name registration to a different registrar in a different country, which prevented the reversal of the transfer of the disputed domain name registration from the Respondent back to the Complainant. The Panel considers it likely that this series of changes and transfers was made without the authorization or knowledge of the Complainant. The Respondent does not provide any alternative explanation of the circumstances surrounding its acquisition of the disputed domain name. In any case, there is no evidence that the Respondent acquired the registration in good faith from a third party, unlike the scenario in Andrew Prince v. Registrant [3197190]: Sven Echternach / Moniker Privacy Services (2579748), WIPO Case No. D2010-1661. Accordingly, based on the evidence submitted, the Panel finds that the disputed domain name was registered in bad faith.
With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the evidence submitted by the Complainant demonstrates that the disputed domain name was acquired without the authorization or knowledge of the original registrant, the Complainant, and offered for auction. These are all indications of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <bluegreen.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: January 3, 2020