WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Picanol, Naamloze Vennootschap (N.V.) v. zhejiang qingsheng jituan yanjiusuo fangji xianluban kaifa weixiu zhongxin shaoxingxian yangxunqiaozhen jiangqiao qingsheng jituan
Case No. D2008-0968
1. The Parties
The Complainant is Picanol, Naamloze Vennootschap (N.V.), Ieper, Belgium, represented by Gevers & Associates, Belgium.
The Respondent is zhejiang qingsheng jituan yanjiusuo fangji xianluban kaifa weixiu zhongxin shaoxingxian yangxunqiaozhen jiangqiao qingsheng jituan, Ningbo, Zhejiang Province, China.
2. The Domain Name and Registrar
The disputed domain name <ttpicanol.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2008. On June 27, 2008, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain name at issue. On July 1, 2008, Xin Net Technology Corp. 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 the Center's notification that the Complaint was administratively deficient in that the Complainant did not submit to the jurisdiction of the courts at the location of the domain-name holder's address, the Complainant submitted an amendment to the Complaint on July 2, 2008. In reply to the amendment, the Respondent informed the Complainant and the Center by email on July 4, 2008 that the Respondent has abandoned the disputed domain name. The email was written in English and signed off as “Shaoxing Bijia Textile Electronic and Mechanical Co., Ltd” (“SXB”).
In response to the Center's further notification that the Complaint was submitted in English while the language of the registration agreement was in Chinese, the Complainant responded on July 2, 2008 that the Complaint included a request for the language of the proceedings to be English.
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 July 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2008.
The Center appointed Soh Kar Liang as the sole panelist in this matter on August 7, 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 specialized in the development, production and sales of weaving machines and technology for the textile industry. It was incorporated in 1928. It has establishments in Belgium (headquarters), Germany, France, Italy, The Netherlands, Romania, Turkey, India, Indonesia, Pakistan, China, Brazil, Mexico and the United States of America.
The Complainant owns the following trade mark registrations:
1) Benelux Trade Mark registration No. 371492 for the (semi-figurative) mark PICANOL (registered in 1981, renewal date: 2011).
2) International Registration No. 462702 for the (semi-figurative) mark PICANOL (registered in 1981, renewal date: 2011). The following countries have been claimed in this international registration: Armenia, Austria, Bosnia and Herzegovina; Belarus, Switzerland, Czech Republic, Germany, Algeria, Egypt, Spain, France, Hungary, Croatia, Italy, the Republic of Korea, the Democratic People's Republic of Korea, Liechtenstein, Morocco, Monaco, Moldavia, Macedonia, Portugal, Romania, Serbia, Russia, Slovenia, Slovakia, Saint Marin, Tajikistan, Ukraine and Vietnam.
3) Community Trade Mark registration No. 223719 for the (semi-figurative) mark PICANOL (registered in 1998, renewal date: 2016).
4) Canadian Trade Mark registration No. TMA267258 for the (semi-figurative) mark PICANOL (registered in 1982, status: alive).
5) United States Trade Mark registration No. 2282531 for the (semi-figurative) mark PICANOL (registered in 1999, status: alive).
6) Chinese Trade Mark registration No. 796465 for the (semi-figurative) mark PICANOL (registered in 1995).
7) Chinese Trade Mark registration No. 1017088 for the (semi-figurative) mark PICANOL (registered in 1997).
8) Benelux Trade Mark registration No. 770482 for the (semi-figurative) mark PICANOL GROUP (registered in 2004; renewal date: 2014).
9) International registration No. 869579 for the (semi-figurative) mark PICANOL GROUP (registered in 2005; renewal date: 2015). The following countries have been claimed in this international registration: China and Turkey.
10) Community Trade Mark registration No. 4496089 for the (semi-figurative) mark PICANOL GROUP (registered in 2006; renewal date: 2015).
The Complainant also owns the domain name <picanol.be> and uses this domain name to present itself on the Internet.
The Respondent registered the disputed domain name on June 8, 2007. The domain name resolved to a bilingual (English and Chinese) website at “www.ttpicanol.com” which held itself out as belonging to SXB (bearing the Chinese name 绍兴比加纺电纺机有限公司). The website offered products and services relating to textile weaving machines and apparatus under the mark PICANOL and other marks including SOMET, SULZER/SMIT/VITAMEX, TOYOTA, TSUDAKOMA, DORNIER (in particular, printed circuit boards for PICANOL products and products of other brands). This Panel attempted to access the website at “www.ttpicanol.com” on August 20, 2008 but encountered a HTTP 404 error which suggests that the website is no longer available.
The Complainant also acquired some product literature from SXB which referenced the website at “www.ttpicanol.com” and provided contact particulars for SXB. On March 19, 2008, through its Indian subsidiary, the Complainant planted an English-language email addressed to SXB's email address purportedly requesting for a quotation. SXB replied in English to the Complainant's email within the next day providing a quotation.
5. Parties' Contentions
A. Complainant
The Complainant contends that:
1) The disputed domain name is confusingly similar to the Complainant's trade mark PICANOL. The addition of the prefix “tt” is insufficient to distinguish the disputed domain name from the Complainant's trade mark. Because the Complainant's trade mark is well-known in the relevant trade and industry, there is a likelihood of confusion that the Complainant and the Respondent are affiliated;
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no trade mark rights in the disputed domain name and the Respondent is not commonly known by the disputed domain name. The Respondent is not connected or affiliated with the Complainant and is not authorised by the Complainant to register its trade marks or variations thereof as domain names;
3) The disputed domain name was registered and is being used in bad faith. The Respondent is aware of the Complainant's trade marks. The Respondent chose to register the disputed domain name to ride on the goodwill of the Complainant's trade mark and to attract traffic to its website for commercial gain; and
4) The Complainant had previously encountered the Respondent in relation to another domain name registered by the Respondent, namely, <tpicanol.com>. The Complainant sent a letter of demand to the Respondent on April 12, 2006 to cease use of the trade mark PICANOL on the website at the URL “www.tpicanol.com”. The Respondent did not reply to the demand letter and its reminders. The Respondent also did not renew the domain name <tpicanol.com> which has since been registered by another party. The Complainant has separately initiated dispute resolution proceedings in relation to <tpicanol.com>.
B. Respondent
The Respondent did not formally reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
Paragraph 11(a) of the Rules states:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administration 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 Registration Agreement is in Chinese. Therefore, the default language of the proceedings should have been Chinese. Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to the circumstances. The Complainant has requested for English to be the language of the proceedings.
In determining the language of the proceedings, reference should be made to paragraphs 10(b) and (c) of the Rules. It is important to ensure both fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. In particular, language requirements should not result in undue burden and undue delay (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759).
In support of its request, the Complainant submitted that:
1) The domain name's Registrar is publicized by Internic as being able to perform its services in English;
2) The website under the disputed domain name can be viewed in Chinese and in English, thereby showing that the Respondent conducts business in both languages and is able to understand and communicate in English;
3) SXB, which is likely an alter-ego of the Respondent, was able to communicate with the Complainant's Indian subsidiary in English; and
4) The Complainant is Belgian and does not understand Chinese. Adopting Chinese as the language of these proceedings would entail high costs to the Complainant resulting from obtaining translations and the cost of hiring a Chinese attorney.
Other than the first point above, this Panel considers the submission of the Complainant to be highly relevant. In addition, the Panel also noted that the Respondent was able to communicate in English in its email of July 4, 2008 to the Complainant and the Center. The Respondent has also been given ample opportunity by the Center to obstruct the Complainant's request for English to be the language of the proceedings. Further, the Respondent has chosen to contest neither the proceedings nor the request for English to be the language of the proceedings.
In view of the above, should English be adopted as the language of the proceedings, the Respondent is unlikely to be prejudiced. Further, the Complainant will be spared the hardship and burden of using Chinese as the language of the proceedings. Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceedings.
6.2 The Panel's decision in relation to the disputed domain name
In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
1) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns trade mark registrations, including international trade mark registrations, in the trade mark PICANOL which precedes the registration of the disputed domain name. PICANOL is clearly a prior trade mark in which the Complainant has rights.
In accordance with established practice, the top level domain portion, “.com”, may be ignored in comparing a domain name with a trade mark (e.g. Deceuninck NV v William Vaughan smtm investments ltd., WIPO Case No. D2007-1911). This leaves only one point of difference between the Complainant's trade mark and the disputed domain name, namely, the meaningless letters “tt”.
The Complainant speculates that “tt” is an abbreviation for “textile”. Regardless, this Panel is not convinced that the letters “tt” enables the disputed domain name to be sufficiently distinguished from the Complainant's trade mark. It is established by earlier panelists that unless the other elements of the disputed domain name are capable of distinguishing the disputed domain name from the Complainant's trade mark, confusing similarity may be established (e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758). A domain name that essentially incorporates a trade mark in its entirety safe for the addition of extra letters as prefixes is generally not distinguishable from the trade mark (e.g., Edmunds.com, Inc. v. keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007-1427; Volvo Trademark Holding AB v. Zhang Xinyu, WIPO Case No. D2008-0261). This Panel is unable to find any special circumstance in the present case to depart from these sound precedents.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark PICANOL and the first limb of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Based on the Complainant's submissions, which have not been controverted by the Respondent, this Panel accepts that:
1) The Complainant is the sole owner of the trade mark PICANOL in several jurisdictions world-wide, including China;
2) The Respondent is not affiliated with the Complainant and has not been authorised by the Complainant to use the trade mark PICANOL or register the disputed domain name;
3) The disputed domain name bears no relation to the name of the Respondent;
4) The Respondent was notified by the Complainant of the Complainant's trade mark rights prior to registration of the disputed domain name; and
5) The Respondent has expressly indicated that it has abandoned the disputed domain name and no longer operates a website under the disputed domain name.
In view of the above, there is a prima facie inference that the Respondent has no rights or legitimate interests in the disputed domain name. Further, by choosing not to file a Response, the Respondent has failed to provide any justification of a right or legitimate interest in respect of the disputed domain name despite the above cogent factors. Finally, the Respondent's conduct in abandoning the disputed domain name, and consequently, any right or interest therein, leads to the conclusion that that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent is required by paragraph 2 of the Policy to:
“…represent and warrant to [the Registrar] that … (b) to [the Respondent's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) [the Respondent is] not registering the domain name for an unlawful purpose; and (d) [the Respondent] will not knowingly use the domain name in violation of any applicable laws or regulations…”
Given that the Respondent did not refute the Complainant's contention that the Respondent and SXB have had prior dealings with the Complainant, in relation to the domain name <tpicanol.com>, this Panel accepts as fact that:
- the Complainant did send a letter of demand to the Respondent and SXB in relation to the domain name <tpicanol.com>;
- the Respondent and SXB did not respond to the letter of demand; and
- the domain name <tpicanol.com> was abandoned by the Respondent.
In the face of the Complainant's letter of demand, it is inconceivable that the Respondent was unaware of the Complainant's trade mark rights in PICANOL. This is further corroborated by the non-renewal of <tpicanol.com> and the assertion of abandonment of the disputed domain name by the Respondent.
Paragraph 4(b)(ii) of the Policy states the following non-exhaustive instance of bad faith use and registration:
“[the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct.”
The circumstances do not fall squarely within strict letters of paragraph 4(b)(ii) of the Policy in that the Complainant was not prevented from reflecting the Complainant's trade mark in a corresponding domain name. However, in registering the disputed domain name and <tpicanol.com>, the Respondent has prevented the Complainant from reflecting a variant of the Complainant's trade mark in a corresponding domain name. The Respondent has engaged in at least two instances of doing so – the first in relation to <tpicanol.com> and the second in relation to the disputed domain name. It is significant that the disputed domain name is nearly identical to <tpicanol.com>, the only difference between a single prefix letter “t”.
The Complainant had already notified the Respondent of its trade mark rights in PICANOL in April 2006. The subsequent abandonment of <tpicanol.com> and later registration of an almost identical domain name in the disputed domain name is suggestive of a dishonest attempt to throw off the chase before resuming activities under a veiled disguise. Coupled with the apparent hiding behind the front of SXB on the website at “www.ttpicanol.com”, the Respondent's suspicious conduct of registering the disputed domain name raises a strong inference of bad faith use and registration. The failure of the Respondent to provide any explanation for this or a Response raises an adverse inference that the Respondent has no justifiable explanation.
In light of the factual circumstances outlined above, this Panel may only conclude that the disputed domain name was registered and used in bad faith by the Respondent.
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 <ttpicanol.com> be transferred to the Complainant.
Soh Kar Liang
Sole Panelist
Dated: August 21, 2008