WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xanor de México, S.A. de C.V. v. Wenzhou Xanik Valve Co. Ltd.

Case No. D2015-1501

1. The Parties

Complainant is Xanor de México, S.A. de C.V. of Mexico City, Mexico, represented by Olivares & Cia, Mexico.

Respondent is Wenzhou Xanik Valve Co. Ltd. of Wenzhou, Zhejiang, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <xanikvalves.com> is registered with 35 Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 21, 2015. On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On September 4, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 4, 2015, Complainant requested that English be the language of the proceeding. On September 8, 2015, Respondent requested that Chinese be the language of the proceeding.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2015. The Response was filed with the Center on September 30, 2015. On the same day, the Center asked Respondent to confirm its submission as the complete Response. Having received no confirmation from Respondent, the Center then acknowledged receipt of the Response on October 5, 2015.

The Center appointed Yijun Tian as the sole panelist in this matter on October 14, 2015. 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 October 16, 2015, Complainant and Respondent respectively filed a supplemental submission with the Center. The Panel has read these supplemental filings and taken them into consideration where relevant.

4. Factual Background

Complainant, Xanor de México, S.A. de C.V., is a company incorporated in Mexico City, Mexico. It is the leading company in the field of manufacturing and commercialization of specialty valves in Mexico and in many countries around the world, with more than 30 years of presence in the market through the XANIK registered trademarks, among others, applied to the manufacture and commercialization of valves.

Complainant has exclusive rights in the XANIK and XANIK and Device Marks. Complainant is the exclusive owner of these registered trademarks globally (see Annexes 6-7 to the Complaint), including registration in Mexico (since October 24, 1991) and registration in China (since December 21, 2010). Complainant also owns the domain name <xanik.com> since February 4, 2002 (see Annex 9 to the Complaint).

Respondent, Wenzhou Xanik Valve Co. Ltd., is a company incorporated in Wenzhou, Zhejiang Province, China.

The disputed domain name <xanikvalves.com> was registered on April 16, 2015, long after the XANIK Marks became internationally famous (Annex 6 to the Complaint).

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The disputed domain name is identical or confusingly similar to the XANIK Marks because the disputed domain name incorporates the XANIK Mark in its entirety in association with the English term "valves". The addition of descriptive term "valves" cannot constitute elements which can differentiate the disputed domain name with respect to XANIK Marks.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <xanikvalves.com> be transferred to it.

B. Respondent

The disputed domain name <xanikvalves.com> was registered by Wenzhou Xanik Valve Co.,Ltd in China.

The use of disputed domain name <xanikvalves.com> itself does not show any commercial value. It does not bring direct commercial benefits to Respondent.

Neither did it conflict with Complainant's domain name <xanik.com>. Nor did it mislead the public.

Respondent owns registered trademark XNK. The icon, adopted by Respondent, is XNK letter choreography under rhombic structure. It was designed by Respondent.

Respondent is willing to resolve this dispute with Complainant through friendly and fair negotiation.

6. Discussion and Findings

6.1. Language of the Proceeding

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 specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name consists of a descriptive word expressed in English language (valves, meaning "devices for halting or controlling the flow of something, as a liquid, through a pipe or other passage") and of Complainant's registered trademark XANIK - a coined term which does not have translation or meaning in any language and which was created by the founding partner of XANOR DE MÉXICO, S.A. DE C.V. It is self-evident that Respondent knows and speaks the English language.

(b) The content of the website resolved by the disputed domain name <xanikvalves.com> is displayed in English language. It is self-evident that Respondent knows and speaks English language.

(c) The contact information contained on the website resolved by the disputed domain name <xanikvalves.com> reflects an address located at Singapore, a country in which English language is recognized as an official language. It is self-evident that Respondent knows and speaks English language.

(d) Complainant is not familiar with Chinese thus it is not in a position to conduct the proceeding in Chinese language without a great deal of additional expense and delay.

Respondent made a submission with respect to the language of the proceeding and objected to the use of English as the language of the proceeding for the following reasons:

(a) Respondent did not intend to offend the rights of any company.

(b) Respondent uses the XNK mark, which are the initials of Respondent's company name ("Xuan Ni Ke" in Pinyin).

(d) The contents of the websites resolved by the disputed domain name are to promote the image of the company. It does not intend to obtain commercial gain by misleading consumers.

(e) The language of the proceeding and communication should be in Chinese.

Paragraph 11(a) 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:

"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Mexico, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters "xanik" and English word "valves" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese company and this company is thus presumably not run by native English speakers, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <xanikvalves.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) The website at the disputed domain name is an English website. The content of the website is available in English rather than in Chinese; (c) the website appears to have been directed to users worldwide, particularly English speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the XANIK Marks acquired through registration. The XANIK Mark has been registered worldwide (since 1991), and Complainant has a widespread reputation as a leading company in the field of manufacturing and commercialization of specialty valves in Mexico and in many countries around the world, with more than 30 years of presence in the market through the XANIK registered trademarks, among others, applied to the manufacture and commercialization of valves.

The disputed domain name <xanikvalves.com> comprises the XANIK Mark in its entirety. The disputed domain name only differs from Complainant's trademark by the addition of the English word "valves" and the generic Top-Level Domain ("gTLD") ".com". This does not seem to eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it" (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

The addition of the descriptive term "valves" as a suffix to Complainant's mark fails to distinguish to this Panel the disputed domain name from Complainant's trademark. By contrast, it may increase the likelihood of confusion. Complainant does produce valves and related products, and has been a leading company in the field of manufacturing and commercialization of specialty valves (as mentioned above). Internet users who visit Respondent's website are likely to be confused and may falsely believe that the disputed domain name <xanikvalves.com> is operated by Complainant for selling XANIK-branded products, particularly valves-related products.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the XANIK Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the XANIK Mark, including registration in Mexico (since October 24, 1991) and registration in China (since December 21, 2010). According to Complainant, it has more than 30 years of presence in the market through the XANIK registered trademarks, among others, applied to the manufacture and commercialization of valves.

Moreover, Respondent is not an authorized dealer of XANIK branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word "xanik" in its business operation or the use of the XANIK Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the XANIK Mark or to apply for or use any domain name incorporating the XANIK Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <xanikvalves.com> was registered on April 16, 2015, which is long after the XANIK Marks became widely known. The disputed domain name is identical or confusingly similar to Complainant's XANIK Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported XANIK products at <xanikvalves.com> (Annex 12 to the Complaint).

The Panel finds that Respondent has failed to produce any compelling evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel's findings below, that the Complainant has established the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

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

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or location or of a product or service on Respondent's website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the XANIK Marks with regard to its products. Complainant has registered its XANIK Marks internationally, including China. Moreover, the website at the disputed domain name advertises for sale various purported XANIK products. Respondent would likely not have advertised products purporting to be XANIK products on the website if it was unaware of XANIK's reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the XANIK Mark is not a mark that a trader would randomly adopt for the purpose other than to creat an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's XANIK-branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites" purportedly offering Complainant's XANIK-branded products and services without authorization. Complainant claimed that "Respondent has used the domain name with the intent to attract for 'commercial gain' Internet users to its web site by trading on the fame of Complainant's mark hence not constituting a bona fide offering of goods or services".

To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Given the widespread reputation of the XANIK Marks (as well as the content on Respondent's website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annexes 9 and 12 to the Complaint). In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the XANIK Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <xanikvalves.com> is either Complainant's site or the site of official authorized agent of Complainant, which is not the case. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 disputed domain name <xanikvalves.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: October 30, 2015