The Complainant is Hytorc Division UNEX Corporation of New Jersey, United States of America, represented by Justin B. Bender, United States of America.
The Respondent is li jinglei of Shanghai, China.
The disputed domain name <hitorque.org> (“Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2012. On March 28, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On March 29, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 29, 2012, the Center received an email communication from the Respondent, of which the Center acknowledged receipt. On March 29, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 3, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. On April 12, 2012, the Center received an email communication from the Respondent, of which the Center acknowledged receipt. The Respondent did not submit a formal response. Accordingly, the Center notified the parties of the Proceeding Update on May 2, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 6, 2012. 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 leading provider of hydraulic and pneumatic bolting systems and associated services for industrial use. The Complainant’s sole authorized dealer in China is KaiTeKe Trading (Shanghai) Co Ltd.
The Complainant uses the trademark HYTORC in relation to its products. The trademark HYTORC is registered in various jurisdictions, including:
Jurisdiction | Trademark Number | Application Date |
|
United States |
1,260,784 |
February 2, 1981 |
|
China |
662562 |
September 5, 1992 |
As of March 24, 2012, the Complainant also owns the following registered trademarks in the United States:
Trademark | Trademark Number |
|
AVANTI |
2889923 |
|
STEALTH |
2959968 |
|
EDGE |
3880821 |
|
VERSA |
3880822 |
|
MXT |
3567770 |
|
XLCT |
3306908 |
The Complainant also has the following pending applications in the United States:
Trademark | Application Number |
|
ITORQUE |
85147616 |
|
ITORQ |
85147600 |
The Disputed Domain Name was registered on February 3, 2012. As of March 19, 2012, the Disputed Domain Name resolved to a website featuring various products (e.g., hydraulic torque wrenches) under the trademarks HYTORC, AVANTI, STEALTH, EDGE, VERSA, MXT and XLCT. In addition, the website also associated these products with the name “Kai Teke” and promoted these products as imported from the United States.
Very little information about the Respondent is available in the evidence. The Respondent seems to be an individual associated with the company “shang hai duo ke shi ye you xian gong si” but the actual relationship is unclear. The Complainant did not send a demand to the Respondent on the belief that the Respondent would ignore the demand.
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark HYTORC. The prefixes “hy” and “hi” are virtually synonymous and identical and/or confusingly similar as to appearance, spelling, sound, connotation and/or commercial impression. “Torque” and “Torc” are virtually synonymous, identical and/or confusingly similar as to appearance, spelling, sound, connotation and/or commercial impression, and widely used to describe bolting tools offered by the Complainant;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has no association or relationship with the Respondent. The Respondent is not commonly known by the Disputed Domain Name. The Respondent has no license, permission or authorization to own or use the Disputed Domain Name. The Respondent has not obtained or applied for any mark related to the Disputed Domain Name. Use of the Disputed Domain Name infringes the Complainant’s HYTORC trademark; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark HYTORC is well-known. The Respondent had clear knowledge of the Complainant’s activities, goods and services. Virtually all the goods offered on the website resolved from the Disputed Domain Name are the exact same goods offered by the Complainant. The photographs posted on the Respondent’s website were sourced directly from one of the Complainant’s sales publications; the goods offered by the Complainant are counterfeit. The Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business. The Respondent is using the Disputed Domain to intentionally attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or product on the Respondent’s website.
The Respondent did not submit a formal response but contended in the email communication of April 12, 2012 the word “hitorque” was intended by the Respondent to convey the meaning of “hello, torque tools”. The Respondent is agreeable not to disseminate information associated with Hytorc but intends to disseminate information regarding other torque tools. The Respondent contends that the term “hitorque” also refers to products capable of delivering high torque. The Respondent alleges that the Complainant desires to block registration of domain names with pronunciations similar to the Complainant’s trademark HYTORC and is unreasonable.
The default language of the proceeding is Chinese as the registration agreement is in Chinese. The Complainant requested that English be adopted as the language of the proceeding. The Panel accepts the Complainant’s request and determines that English be adopted as the language of the proceeding but the Respondent shall not be required to translate its Chinese language communication into English. In making this determination, the Panel took into account the following:
a) The Complainant is based in the United States and conducts its business between its offices in English. The Complainant will face greater burden in conducting the proceeding in Chinese.
b) The website resolved from the Disputed Domain Name contains English content (as well as Chinese content) which shows that the Respondent is able to or has the means to understand English;
c) The Respondent did not comment on the language of the proceeding and in fact responded to the Complaint, albeit in Chinese;
d) The Panel is competent in English and Chinese and is able to understand the Complaint filed in English as well as the Respondent’s communication in Chinese; and
e) Since the parties have made their respective submissions, it is not beneficial to the proceeding in terms of expediency of the proceeding and the additional burden that the Complainant may have to bear if Chinese is adopted as the language of the proceeding.
In order to succeed in these proceedings, the Complainant must establish all of the following limbs of paragraph 4(a) of the Policy:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith.
The Panel proceeds to consider all these limbs below.
The Complainant clearly has rights in the trademark HYTORC by virtue of the identified trademark registrations. The trademark HYTORC appears to be a coined word. The evidence does not indicate how the trademark was derived by the Complainant, but the nature of the Complainant’s products presented in the evidence strongly suggests that HYTORC might be a phonetic play on the descriptive words “high” and “torque”.
The Disputed Domain Name is not identical to the trademark HYTORC. However, the Panel accepts that the pronunciation of the Disputed Domain Name is very similar to that of the Complainant’s trademark HYTORC. The Respondent has indirectly admitted to such similarity in its email of April 12, 2012, in arguing that the Complainant desires to block registration of domain names with pronunciations similar to HYTORC.
However, the first limb of paragraph 4(a) of the Policy is not satisfied by merely showing that the domain name and trademark are similar. The burden is only discharged by showing that the domain name is confusingly similar to the trademark. It is a consensus of past UDRP panels to evaluate the issue of confusing similarity by a comparison of the domain name and the relevant trademark. The content of the website resolved from the domain name is generally irrelevant as far as the first limb of paragraph of paragraph 4(a) is concerned (e.g., Harry Winston Inc and Harry Winston SA v. Jennifer Katheman, WIPO Case No. D2008-1267). The content of the website resolved from a domain name in dispute is mainly an issue to be addressed under the third limb of paragraph 4(a) of the Policy.
In the present case, although phonetic similarity between the Disputed Domain Name and the trademark HYTORC exists, in this Panel’s view there are material differences between them, namely: the second letter “y” in the trademark is not similar to the second letter in the Disputed Domain Name, the second syllables in the trademark and the Disputed Domain Name only share the 3 characters “tor”, and only 4 out of the 8 characters in the Disputed Domain Name are found in the trademark HYTORC.
Further, the evidence does not indicate that “hytorc” is a meaningful word. The Disputed Doman Name appears to be an obvious concatenation of known words “hi” and “torque” and, in the Panel’s view, readily refers to “high torque” which is descriptive of wrenches and similar products offered on the Respondent’s website.
Granted, there is a possibility that HYTORC may possibility be a deliberate misspelling of “high torque” by the Complainant. Nevertheless, the Complainant’s trademark is HYTORC, not “high torque”, and the Complainant has not provided any evidence that it owns trademark rights in the words “high torque” or “hi torque”. The Complainant contended that “Torque” and “Torc” are synonymous. No evidence has been submitted to support this contention. The Panel in the present circumstances is unable to accept that “Torc”, being in its view a meaningless word, is necessarily synonymous to “Torque” without the benefit of some corroborative evidence. In the same vein, the Panel is unable to consider that the trademark HYTORC and the Disputed Domain Name are conceptually similar for purposes of this decision under the Policy. They do not convey the same impression as claimed by the Complainant.
Having regarded the visual, phonetic, semantic and conceptual comparison of the trademark HYTORC and the Disputed Doman Name, it is the Panel’s conclusion that the Disputed Domain Name <hitorque.org> is not confusingly similar to the trademark HYTORC. The Complainant has failed to establish the first limb of paragraph 4(a) of the Policy.
The Panel agrees that the Respondent is not commonly known by the Disputed Domain Name. The Panel also accepts that the Respondent has no relationship with the Complainant. However, given that it has been determined that the Disputed Domain Name and the trademark HYTORC are not confusingly similar, it is not necessary to make any formal finding on whether the Respondent has rights or legitimate interests in the Disputed Domain Name.
It is clear that the trademark HYTORC was registered many years before the registration of the Disputed Domain Name. The content of the website leaves the Panel without doubt that the Respondent is aware of the Complainant’s activities, goods and services and purports to offer goods under the Complainant’s various trademarks including HYTORC.
The Complainant has further alleged various facts without providing any evidential support, including:
a) that the trademark HYTORC is well-known;
b) that the goods offered on the website resolved from the Disputed Domain Name are counterfeits “upon information and belief”; and
c) that the photographs used on the website are sourced from the Complainant’s sales publications (and so presumably infringe the Complainant’s copyright)
Although the Respondent has not denied any of the above, in view of the lack of supporting evidence and the Complainant’s failure to establish the first limb of paragraph 4(a) of the Policy, the Panel will not make any further comment or formal findings as regards these points and whether the Disputed Domain Name was registered and used in bad faith.
For the foregoing reasons, the Complaint is denied. However, the Panel notes that the Complainant’s trademark application for ITORQUE in the United States is pending. The word ITORQUE differs from the Disputed Domain Name by only one letter. Unfortunately, there is no evidence before the Panel as to whether the Complainant has any rights in the trademark ITORQUE beyond being the applicant for registration in the United States. It should be noted that this decision does not preclude the Complainant from initiating a further complaint based on new or additional evidence.
Kar Liang Soh
Sole Panelist
Dated: July 4, 2012