WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Augusta Benelux B.V. (奥古斯塔比荷卢公司) v. Huangqingjia / dabuliu

Case No. DCC2017-0001

1. The Parties

The Complainant is Augusta Benelux B.V. (奥古斯塔比荷卢公司) of Leiden, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.

The Respondent is Huangqingjia / dabuliu of Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <bbb.cc> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2017. On January 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2017, 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. In response to a notification by the Center regarding annexes to the Complaint, the Complainant submitted a revised annex 5 to the Complaint on January 9, 2017.

On January 9, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On January 12, 2017, the Complainant provided a translated Complaint into Chinese. However, the Complainant requested that English be the language of the proceeding as well. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint in English and Chinese 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 Chinese and English of the Complaint, and the proceedings commenced on January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 8, 2017. 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.

On February 20, 2017, the Center sent a Procedural Order to the Parties requesting additional information from the Complainant concerning the reputation of the Complainant’s trademark at the time of registration of the disputed domain name and concerning the use of the disputed domain name at the time of filing of the Complaint. The Complainant responded to the Procedural Order with supplemental information and evidence on February 22, 2017. On February 22, 2017, the Center notified the Parties that the Respondent shall have until February 27, 2017 to file a defense to the Complainant’s supplemental information and evidence. The Respondent did not submit any response.

4. Factual Background

The Complainant is a worldwide leader in selling high quality cycling products, with more than 1,500 products across more than 40 different product categories sold in 48 countries. The Complainant has used the BBB trademark in commerce for almost 20 years. The Complainant asserts and the Respondent has not contested that it has invested significantly in marketing and promoting its BBB trademark. The Complainant has supplied evidence of its promotional brochures dating back as early as 1998, wherein it prominently advertised its BBB trademark.

The Complainant owns trademark registrations for the BBB mark in International Classes 9, 12, and 25 for primarily bicycle goods in several jurisdictions, including Benelux registration number 0612498 (filed on June 25, 1997), Taiwan Province of China registration number 838032 (filed on February 1, 1999), Australia registration number 792486 (filed on April 28, 1999), United States of Amercia registration number 2584460 (filed on May 24, 2000), Japan registration number 4390313 (filed on June 9, 2000), and International registration number 686285 (registered on December 19, 1997), designating Australia, China, Japan, Norway, Republic of Korea, and Switzerland, among other jurisdictions. The Complainant advertises its goods on its website at “www.bbbcycling.com”.

The disputed domain name was registered on July 28, 2003. Currently the disputed domain name does not resolve to any website; however, prior to the Complaint being filed, the disputed domain name at times resolved to parking pages indicating, in English, that the disputed domain name might be for sale. The parking pages also included links to other websites, some of which were written in English. In August, 2016, a representative of the Complainant corresponded with the Registrar regarding the possibility of purchasing the disputed domain name. The Registrar indicated that it would negotiate with its client, the Respondent, on the Complainant’s behalf. The Complainant offered EUR 500 for the disputed domain name. The Registrar indicated that the offer was too low for the Respondent, that the market price for the disputed domain name might be over EUR 30,000, and that the representative should raise the offer.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns the BBB trademark and owns corresponding trademark registrations in several jurisdictions. The disputed domain name contains “bbb”, which is identical to the Complainant’s trademark. The disputed domain name creates the impression that it is linked to a website belonging to the Complainant and is clearly meant to exploit the reputation of the Complainant’s trademark.

The Respondent has no rights or legitimate interest in respect to the disputed domain name. By using the Complainant’s trademark in the disputed domain name, the Respondent creates the false impression that the disputed domain name belongs to the Complainant. The Respondent owns no trademark registrations for BBB. The Complainant has not granted a license or otherwise given consent to the Respondent to use the Complainant’s trademark in the disputed domain name. The disputed domain name is not in active use nor has it been for several years. In the thirteen years since the time of registration, the only use of the disputed domain name by the Respondent has been parking the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent should have been aware of the Complainant’s trademark rights because the Complainant has been selling cycling products for almost 30 years and in 48 countries. Additionally, the Respondent’s non-use of the disputed domain name is an act of bad faith because it is being used to benefit from the possible confusion that may arise from the use of the Complainant’s trademark by leading consumers to the Respondent’s website. Given that the Complainant’s trademarks have acquired a reputation over the years and the fact that the Complainant is a market leader in cycling products, it can be assumed that the average Internet user is being misled by seeing the disputed domain name <bbb.cc> and will think that the disputed domain name is affiliated with the Complainant. This is particularly so because the Top-Level Domain (“TLD”) “.cc” may be understood as an abbreviation for “cycling”. A possible negative experience with the disputed domain name could cause a negative experience with the Complainant. The Respondent’s mere parking of the disputed domain name prevents the Complainant from registering its BBB trademark on the “.cc” TLD. Finally, the asking price of over EUR 30,000 is obviously in excess of the Respondent’s costs in registering the disputed domain name and is further indication of registration and use in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. Although the Complainant has provided an English version of the Registration Agreement, the Registrar has stated that the language of the Registration Agreement as used by the Respondent is Chinese. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. Although the Complainant provided a translated Complaint in Chinese, it requested the proceeding to be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. At times the disputed domain name resolved to parking pages that included an offer for sale in English and links written in English. The Panel finds that it is appropriate to exercise its discretion and render the decision in English, in light of these circumstances.

6.2 Substantive Discussion

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(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.

A. Identical or Confusingly Similar

The disputed domain name is identical to a mark in which the Complainant has rights. The Complainant is the owner of the BBB trademark for use with cycling products and owns several trademark registrations for the mark. The Panel accepts that the Complainant’s trademark is well known.

The disputed domain name is composed exclusively of the term “bbb”, which is identical to the Complainant’s trademark, and the TLD “.cc”. However, as a technical part of a domain name, the TLD in this case is not relevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s BBB trademark and is without legal significance and should be ignored. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Therefore, the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or

(ii) The Respondent 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 Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not used in connection with a website that makes any active offer of goods or services. Instead, the disputed domain name resolved to various parking pages in the past. The Respondent has held the disputed domain name for more than 13 years and in all that time has not made any demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant is in no way related to the Respondent and never authorized the Respondent to use the BBB trademark.

The Respondent is not making any noncommercial or fair use of the disputed domain name. Instead, the Respondent has parked the disputed domain name and offered it for sale.

Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

Bad faith registration can be inferred from Respondent’s registration of the disputed domain name incorporating a well-known mark of which the Respondent must have been aware, without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C., WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; and BHP Billiton Innovation Pty Ltd v. Ravindra Bala, WIPO Case No. D2008-1059. The BBB trademark was in use in commerce for several years prior to the registration of the disputed domain name and the Complainant invested substantially in the protection and promotion of its BBB mark. The Complainant filed trademark applications in several countries in different regions of the world beginning in 1997, six years prior to registration of the disputed domain name, including in China, where the Respondent is located. The Complainant’s evidence shows prominent use of the BBB trademark in promotional advertising at least as early as 1998, indicating investment in advertising and promotion of its trademark and BBB-branded goods. The Complainant has provided evidence sufficient to make a showing that its BBB trademark was well known at the time of registration of the disputed domain name and the Respondent has offered no rebuttal evidence. The Panel concludes that the Respondent was or should have been aware of the Complainant and its BBB mark at the time of registration of the disputed domain name. Therefore, the Panel finds that the disputed domain name was registered in bad faith.

In the past, the disputed domain name resolved to various parking pages. Although currently the Respondent is passively holding the disputed domain name, passive holding can still constitute bad faith use under the particular circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The disputed domain name is identical to the Complainant’s extensively used and well-known trademark and the Respondent must be aware that Internet users would be led to believe that the disputed domain name and any resolving website would be owned, controlled, established or otherwise associated with the Complainant and its cycling goods. See AXA S.A. v. P.A. van der Wees, supra. This is particularly so given that the “.cc” TLD has become a favored TLD for cycling clubs. Moreover, the Respondent’s holding of the disputed domain name prevents the Complainant from reflecting its mark in the same domain name. The Respondent has made no efforts in more than thirteen years to use the disputed domain name in connection with a bona fide offering of goods or services or to make noncommercial fair use of the disputed domain name. Additionally, the Respondent’s asking price for the disputed domain name was more than EUR 30,000, well in excess of the Respondent’s costs in registering the disputed domain name. This is further indication of bad faith. See Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166. Under the totality of the present circumstances, including the past use of the disputed domain name, the Respondent’s passive holding of the disputed domain name amounts to use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

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 <bbb.cc> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: March 7, 2017