The Complainant is Laverana GmbH & Co. KG of Wennigsen, Germany, represented by RWZH rechtsanwälte, Germany.
The Respondent is Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. of Changzhou, Jiangsu, China, self represented / xia men yi ming wang luo you xian gong si of Xiamen, Fujian, China.
The disputed domain name <lavera.wang> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 2016 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 amendment to the Complaint on April 14, 2016.
On April 14, 2016, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. On April 18, 2016, the Respondent requested that Chinese be the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 Chinese and English, and the proceeding commenced on April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016. Per the Respondent's request of May 10, 2016, the Response due date was extended to May 14, 2016 in accordance with paragraph 5(b) of the Rules. The Chinese language Response was filed with the Center on May 14, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 24, 2016. 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 is a company founded in 1987 and incorporated in Germany, and a developer and manufacturer of cosmetics marketed and sold worldwide under the trade mark LAVERA (the "Trade Mark"). The Complainant is the owner of several international and national registrations for the Trade Mark, including international registration number 518849 dating from November 1, 1988 (and designating China).
The Respondent is a company incorporated in China.
The disputed domain name was registered on March 1, 2016.
The disputed domain name has not been used and has been resolved to a landing page containing the wording "您正在访问的域名可以转让！This domain name is for sale." (the "Landing Page").
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered and used in bad faith.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Respondent is able to read and understand English, as evidenced by the English language text on the Landing Page;
(2) English is not the native language of either of the parties;
(3) Requiring the Complainant to translate the Complaint and exhibits into Chinese would involve further cost and delay.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(1) Chinese is one of the six languages of the United Nations and is used by about one fifth of the world's population;
(2) ".wang" is a new Top-Level Domain ("TLD") approved by ICANN in 2014 and administered by a Chinese registrar, and which corresponds with the pinyin (romanized) text for Chinese characters such as "网" ("Internet"), "王" ("king") and "旺" ("prosperous");
(3) 98% of the domain names registered under the ".wang" TLD have been registered by Chinese persons or entities;
(4) For these reasons, it would be more appropriate and convenient to use Chinese as the language of the proceeding;
(5) Requiring the Respondent to translate the Response and exhibits into English would involve further cost and delay.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel finds that the use of English as well as Chinese language on the Landing Page (including an English language copyright notice) provides sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Respondent has not responded to the Complainant's assertion that the Respondent is able to read and understand English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration, the disputed domain name is identical to the Trade Mark, and, accordingly, the first element under paragraph 4(a) of the Policy has been made out.
The Respondent asserts that it is possible for the same word to be chosen as a trade mark by several unrelated persons or entities, and suggests by way of example that there are over 100,000 vendors worldwide using the trade mark PRINCE. Whether or not this might be the case is immaterial for the purposes of the first limb under paragraph 4(a) of the Policy.
The Respondent also asserts that the Complainant has largely used country level TLDs such as <lavera.de> and <lavera.hk> to market and sell its products online using the Trade Mark, and, accordingly, there can be no conflict between the Complainant's Trade Mark and the disputed domain name. Whether or not this bare assertion might be the case is immaterial for the purposes of the first limb under paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. The Respondent has made no use of the disputed domain name and has offered to sell the disputed domain name via the Landing Page.
The Respondent contends that it did not register the disputed domain name for the purpose of interfering with a competitor or causing confusion with a competitor's trade mark. The Respondent also repeats its assertion that 98% of the registrants of ".wang" domain names are Chinese persons or entities, and, therefore, there is no risk of confusion with the Complainant and no need for the Complainant to register the disputed domain name. None of these matters constitutes evidence of the Respondent having any rights or legitimate interests in the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent asserts that it did not register the disputed domain name in bad faith and that it had no intention of disrupting the Complainant's business or causing confusion with the Complainant's Trade Mark.
The Respondent also asserts that the offer to sell the disputed domain name on the Landing Page does not include a sale price, and, accordingly, the disputed domain name has not been offered for sale for a price exceeding the out-of-pocket costs directly related to the disputed domain name. The Panel does not find this assertion compelling. The Respondent has not furnished any evidence in this regard, and it is reasonable to assume that the likely out-of-pocket expenses directly related to the registration of the disputed domain name were minimal. The Panel considers such an open-ended offer via the Landing Page amounts to bad faith in accordance with paragraph 4(b)(i) of the Policy.
The Panel further considers that, in addition to the offer on the Landing Page, all the circumstances of this case, including the fact the disputed domain name is identical to the Trade Mark, and the Complainant's registration and use of the Trade Mark worldwide (including in China) for over 25 years, support a finding of bad faith on the part of the Respondent, on the grounds that it is likely the Respondent knew of the Complainant and of its rights in the Trade Mark at the time of registration of the disputed domain name.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <lavera.wang> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 7, 2016