WIPO Domain Name Decision: D2008-0207

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlueScope Steel Limited v. Fan Zuoxin

Case No. D2008-0207

1. The Parties

The Complainant is BlueScope Steel Limited, Melbourne, Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is Fan Zuoxin, Qingdao, China.

2. The Domain Name and Registrar

The disputed domain name <bluescopebuildings.com> is registered with Xin Net Technology Corporation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2008. On February 11, 2008, the Center transmitted by email to Xin Net Technology Corporation a request for registrar verification in connection with the domain name at issue. On February 15, Xin Net Technology Corporation transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. On February 24, 2008, the Complainant requested that the administrative proceedings be suspended and on February 25, 2008, the Center confirmed that the proceedings were suspended until March 10, 2008, unless in the meantime the Center received a request that the proceedings be reinstituted. On March 6, 2008, the Complainant again requested that the administrative proceedings be suspended and on the same date, the Center confirmed that the proceedings would be further suspended until March 20, 2008. On March 19, 2008, the Complainant requested that the proceedings be reinstituted after the expiry of the period of suspension. On March 20, 2008, the Center confirmed that the proceedings were reinstituted and the new due date for Response was April 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2008.

The Center appointed Richard Tan as the sole panelist in this matter on April 16, 2008. 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 is a company registered in Australia under the name, BlueScope Steel Limited, and is listed on the Australian Stock Exchange. The Complainant is a supplier of steel and steel products to the building and construction sector. It has carried on business under the name “BlueScope Steel Limited” since November 17, 2003.

The Complainant is an international steel solutions company with a manufacturing and marketing footprint spanning Australia, New Zealand, China, Asia and North America. It has plants located in Australia, New Zealand, Thailand, Malaysia, Indonesia, Vietnam, India and China.

The Complainant also has a business division that trades as BlueScope Buildings which supplies custom engineered buildings and operates in, among other locations, China. This division owns manufacturing facilities in various parts of China including Chendu, Guangzhou, Langfang, Shanghai and Tianjin.

The Complainant is the registered owner of the BLUESCOPE and BLUESCOPE BUILDINGS trade marks in several countries, including Australia and China.

In Australia, the Complainant is the registered owner of the following trade marks:

Trade Mark Number 957656 BLUESCOPE registered from June 12, 2003 for use in Classes 6, 19, 35, 38, 39, 40 and 42;

Trade Mark Number 962423 BLUESCOPE registered from July 21, 2003 for use in Class 37;

Trade Mark Number 962463 BLUESCOPE STEEL registered from July 18, 2003 for use in Classes 6, 19, 35, 37, 38, 39, 40, and 42;

Trade Mark Number 968162 BLUESCOPE STEEL and device registered from August 29, 2003 in Classes 6, 19, 35, 37, 38, 39, 40 and 42;

Trade Mark Number 1105333 BLUESCOPE BUILDINGS registered from March 23, 2006 in Classes 6, 19, 35, 37, 38, 39, 40 and 42;

Trade Mark Number 1105336 BLUESCOPE BUILDINGS and device registered from March 23, 2006 in Classes 6, 19, 35, 37, 38, 39, 40 and 42.

In China, the Complainant is the holder of various trade marks and applications, including:

Trade Mark Numbers 3698245, 3698246, 3698247, 3698248, 3698249, 3698250 and 3698251 BLUESCOPE registered from September 1, 2003 for use in Classes 6, 19, 35, 37, 38, 39 and 40;

Trade Mark Numbers 5609028 and 5609029 BLUESCOPE BUILDINGS (Chinese Characters) applied for on September 15, 2006 for use in Classes 6 and 35;

Trade Mark Numbers 5264414, 5264413, 5264412 and 5264411 BLUESCOPE BUILDINGS & LOGO applied for on April 4, 2006 for use in Classes 6, 19, 35 and 37.

The Complainant is also the registered owner of the domain name <bluescope.com>, registered on January 8, 2000. The Complainant and its related companies are also the registered owners of domain names, including:

<bluescope.com>

<bluescope.com.cn>

<bluescopesteel.com.cn>

<bluescopebuilding.com>

<bluescopebuilding.org>

<bluescopebuilding.com.au>

<bluescopebuilding.com.cn>

<bluescopebuildings.net>

<bluescopebuildings.org>

<bluescopebuildings.com.au>

<bluescopebuildings.com.cn>

<bluescopebuildings.cn>

<bluescopebuildings.com.vn>

<bluescopebuildings.vn>

<bluescopesteel.com>

The Respondent’s domain name was registered on or about April 30, 2005. The disputed domain name does not resolve to any web page or web site.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The disputed domain name <bluescopebuildings.com> is confusingly similar to the Complainant’s BLUESCOPE trade mark which has been registered in several countries around the world, including Australia and China. It is also identical to the Complainant’s trade mark BLUESCOPE BUILDINGS which has been registered in Australia and in respect of which, the Complainant has applied for registration in China. The Complainant has also secured domain name registrations which include the marks BLUESCOPE and BLUESCOPE BUILDINGS. The Complainant contends that the name of the business under which it has been operating, “BlueScope Steel Limited”, is a coined name. The Complainant further contends that it has also acquired common law rights in respect of the mark BLUESCOPE as a result of its long and continuous use to identify the source or origin of its goods and services. The Complainant contends that it has a major presence in the Chinese building market. Its BlueScope Steel products have been featured in prestigious projects in China including the Tianjin Olympic Stadium and the Shanghai World Financial Centre. The Complainant accordingly contends that it has rights in respect of the trade marks BLUESCOPE and BLUESCOPE BUILDINGS.

The Complainant further contends that the Respondent’s addition of the descriptive word “buildings” to its BLUESCOPE trade mark creates the misconception that the disputed domain name web page will contain information about the Complainant’s existing building business.

(b) The Complainant contends that it has no commercial relationship or association with the Respondent or any company linked to the Respondent. There is no evidence that explains the Respondent’s use of the word “bluescope” in the disputed domain name. Neither the Respondent nor any individual, business or other organisation with which it may be associated has been authorised by the Complainant to use the mark BLUESCOPE in the disputed domain name. The Respondent has not demonstrated any rights or legitimate interests in the disputed domain name, nor is it known or ever been known by the term “BlueScope”, “BlueScope Buildings”, “bluescopebuildings.com” or any other similar name. As such, there exists no legitimate reason for the Respondent to use the Complainant’s business name, trade mark and domain name as its domain name. The Respondent lacks any rights or legitimate interests in the disputed domain name.

(c) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has not made any use, or demonstrable preparations to use, the domain name in connection with the bona fide offering of goods or services, is not commonly known by the domain name, has no license or other authorisation to use the BLUESCOPE trade mark and is not making a legitimate non-commercial or fair use of the name. The date on which the Respondent registered the disputed domain name, that is, April 30, 2005, was two years after the BLUESCOPE trade mark was registered in Australia and well after the mark had become well-known within the steel industry. At the time of the registration of the disputed domain name, the Complainant was operating in China and had, through earlier incarnations, been operating in that region for at least 80 years. By 2005, the Complainant was known by the Bluescope name in China and had operations in that country. In the absence of any reason for registering the disputed domain name, and the passive holding use to which the domain name has since been put, the Complainant contends that it is highly likely that the domain name was registered in direct contemplation of the Complainant’s mark and in bad faith.

The Complainant further submits that pursuant to paragraph 4(b)(i) of the Policy, the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant which is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. In May 2005, the Complainant alleges that it received an e-mail from a person purporting to be the holder of the disputed domain name. It offered to sell the domain name to the Complainant for US$100,000, or to other competitors of the Complainant for US$120,000. This offer was made less than one month after the registration of the <bluescopebuildings.com> domain name and the Complainant contends that this clearly indicates that the holder had the Complainant in mind when he or she registered the disputed domain name.

The Complainant further submits that the Respondent deliberately intended to register the disputed domain name in order to prevent the Complainant (being the owner of the trade marks BLUESCOPE and BLUESCOPE BUILDINGS), from reflecting those names and marks in a corresponding domain name, pursuant to paragraph 4(b)(ii) of the Policy.

The Complainant argues that the non-use of the domain name amounts to a passive holding of the domain name. The lack of active use of the domain name does not prevent a finding of bad faith. The Complainant relies on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel found that the failure to use a domain name, combined with other factors indicating that the domain name was registered in bad faith, amounts to use in bad faith. The Complainant contends that in this case, the fact that the Respondent registered the domain name after the Complainant had established a reputation in the BLUESCOPE mark and the fact that the domain name combines the Complainant’s mark and a descriptive word representing an industry the Complainant is involved in, establish the inference that the Respondent registered the domain name with the Complainant in mind and with the hope of capitalizing on the reputation of the Complainant in some way.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition: see e.g. General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334. Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 may result in delay, and considerable and unnecessary expenses of translating documents.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.

The Complainant has submitted in its Complaint that the language of the proceedings should be English as it would be costly, disadvantageous and unnecessary for the Complainant to translate the Complaint into Chinese and further, that the Respondent has demonstrated an ability to communicate in English. The Complainant has relied on an email dated May 25, 2005 purportedly sent by or on behalf of the Respondent to the Complainant in English. While the Panel is unable to conclude that this email, which was sent from an email address different from the WhoIs information, was in fact sent by (or on behalf of) the Respondent, the Panel notes that emails dated February 20, 2008 and February 21, 2008 were sent by the Respondent to the Complainant in English, concerning certain matters relating to the proceedings. Based on these two emails, the Panel concludes that the Respondent is able to understand and communicate in English. The Panel also notes that the disputed domain name is also in English.

The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Chinese, the language of the Registration Agreement. This was despite the Center notifying the Respondent on February 19, 2008 in Chinese and English that if the Respondent was experiencing any language difficulties, the Respondent could indicate the same to the Center and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had ample opportunity to raise objections or make known its preference, but did not.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Chinese.

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

The Panel now turns to consider the Complainant’s case on its merits.

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate”.

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

B. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Having regard to the evidence adduced by the Complainant in relation to its registered trade marks, BLUESCOPE and BLUESCOPE BUILDINGS, the extensive use of these marks in the Complainant’s business in numerous countries, including China, and the domain names secured and used by the Complainant in its web sites which incorporate the marks, BLUESCOPE and BLUESCOPE BUILDINGS, the Panel finds that the Complainant has established rights in its BLUESCOPE and BLUESCOPE BUILDINGS marks.

The disputed domain name is not identical to the Complainant’s trade mark BLUESCOPE in that it contains the additional word “buildings”. The addition of the generic or descriptive term “buildings” does not however in the Panel’s view distinguish the domain name from the trade mark BLUESCOPE, bearing in mind the distinctive nature of the Complainant’s mark, which the Panel accepts is an invented or coined word, as the Complainant contends. It is well-established under the Policy that a domain name composed of a trade mark coupled with a generic or descriptive term can still be regarded as confusingly similar to the trade mark, see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, ‘automotive’ did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.

The disputed domain name is however identical to the Complainant’s mark BLUESCOPE BUILDINGS save for the addition of the “.com” gTLD. The addition of a “.com” gTLD is not sufficient to escape a finding of substantial or confusing similarity (see inter alia, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015).

This Panel accordingly finds that the disputed domain name is identical or confusingly similar to the Complainant’s BLUESCOPE and BLUESCOPE BUILDINGS trade marks in which the Complainant has rights.

C. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the 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 filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. The disputed domain name does not resolve to any active web site. The Complainant asserts that neither the Respondent nor any individual, business or other organisation with which it may be associated has been authorised by the Complainant to use the mark BLUESCOPE in the disputed domain name. The Respondent has also not and never been known by the term “BlueScope”, “BlueScope Buildings”, “bluescopebuildings.com” or any other similar name. The Complainant accordingly asserts that the Respondent has no such rights or legitimate interests in the disputed domain name.

In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has not made any use, or demonstrable preparations to use, the domain name in connection with the bona fide offering of goods or services, is not commonly known by the domain name, has no license or other authorisation to use the BLUESCOPE trade mark and is not making legitimate non-commercial or fair use of the name. The Respondent registered the disputed domain name some two years after the BLUESCOPE trade mark had been registered in Australia and well after the mark had become well-known within the steel industry. At the time of that registration, the Complainant was operating in China for a considerable length of time and the Respondent must have known about the Complainant’s business.

The Respondent has not submitted any evidence to rebut the Complainant’s claims. In the absence of such evidence and in the absence of any conceivable legitimate reason for registering the disputed domain name, and given particularly the distinctive nature of the trade mark BLUESCOPE, the Panel accepts the Complainant’s contentions that the domain name was registered with knowledge of the Complainant’s trade marks and in bad faith.

Such conduct has been consistently found to constitute bad faith under the Policy: See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408 (finding the Respondent registered the disputed domain name in bad faith because it had notice of the Complainant’s rights); Yahoo! Inc. v. Kelvin Pham, NAF Case No. FA109699.

The lack of active use of the domain name does not prevent a finding of bad faith: see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel further accepts the Complainant’s argument that the failure to use a domain name, combined with other factors indicating that the domain name was registered in bad faith, amounts to use in bad faith.

This Panel accordingly finds that the Respondent’s failure to use the domain name and its passive holding of the same, combined with the other factors mentioned above, including the fact that the Respondent registered the domain name after the Complainant had established a reputation in the BLUESCOPE mark and that the disputed domain name combined the Complainant’s mark and a descriptive word, constitutes registration and use of the domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

With regard to the Complainant’s further argument that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for a sum in excess of its documented out-of-pocket costs directly related to the domain name, which constitutes bad faith registration and use under paragraph 4(b)(i) of the Policy, the Panel notes that the Complainant relies on an email received in May 2005 from an unidentified person described as “passionchina” purporting to be the holder of the disputed domain name offering to sell the domain name to the Complainant for US$100,000. This Panel however notes that there is no clear evidence that establishes that the email was sent by or on behalf of the Respondent. The Panel does not however have to make a finding of fact on this issue given the other findings that the Panel has made above as to bad faith registration and use.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bluescopebuildings.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: April 30, 2008