WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Riso Gallo S.p.A. and Riso Gallo International S.A. v. Wu Guo Qiang

Case No. D2016-0159

1. The Parties

The Complainants are Riso Gallo S.p.A. of Robbio, Italy (the “First Complainant”) and Riso Gallo International S.A. of Balerna, Switzerland (the “Second Complainant”), both represented by Jacobacci & Associati, Italy.

The Respondent is Wu Guo Qiang of Hangzhou, Zhejiang, China.

2. The Domain Names and Registrar

The disputed domain names <risogallo.club>, <risogallo.ren>, <risogallo.top>, <risogallo.wang> and <risogallo.xyz> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2016. On January 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all the disputed domain names and providing the contact details.

On January 28, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 28 and 31, 2016, the Respondent requested that Chinese be the language of the proceeding. On January 29 and February 1, 2016, the Complainants requested that English 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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2016.

On February 29, 2016, the Respondent sent an email to the Center addressing the merits of this dispute. On March 1, 2016, the Center acknowledged receipt of this email communication and indicated that it would proceed with panel appointment.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 17, 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.

4. Factual Background

The Complainants are both part of a corporate group that produces and markets rice. The Second Complainant is the proprietor of multiple trademark registrations for RISO GALLO in multiple jurisdictions. These include International trademark registration No. 722808 (RISO GALLO and device), registered in 1999, designating multiple jurisdictions including China; Chinese trademark registration No. 1626790 (RISO GALLO and device), registered in 2001; and Chinese trademark registration No. 11656788 (RISO GALLO) registered in 2014. The goods specified in each registration include rice.

The Respondent is the registrant of the disputed domain names. The disputed domain name <risogallo.top> was registered on December 13, 2015. The Complainants’ representative sent the Respondent a cease-and-desist email regarding that domain name on December 28, 2015. The other four disputed domain names were registered on that same day. The Respondent replied to the cease-and-desist email on January 3, 2016. He asserted his rights and interests in the disputed domain name <risogallo.top> but offered to sell his site. The Complainants’ representative then asked by email what price he proposed. The following day an email was sent to the Complainants’ representative from a third party email address stating a price of CNY 20,000.

The disputed domain name <risogallo.top> redirects to a URL. A search of that domain name obtains only a message stating “Bad Request (Invalid Hostname)”. The other four disputed domain names are not connected to a server. None of the disputed domain names resolves to any active website.

5. Parties’ Contentions

A. Complainants

The Complainants argue that the disputed domain names are identical to the Complainants’ trademarks but for the addition of a generic Top Level Domain (“gTLD”) in each name.

The Complainants argue that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence of any use, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has never been known in the normal course of business by the trademark, trade name or domain name “Riso Gallo”. There is no noncommercial fair use of the disputed domain names.

The Complainants argue that the disputed domain names were registered in bad faith. There is no way that the Respondent was unaware of the association of RISO GALLO with the Complainants. A cursory Internet search reveals the Complainants trademark. The Complainants have exported their products to China, where the Respondent is located, since at least 2002. The Complainants’ trademark registrations put the Respondent on notice of their rights, as did their representative’s cease-and-desist email prior to the registration of four of the disputed domain names.

The Complainants argue that the disputed domain names are used in bad faith. The Complainants submit that the disputed domain names are passively held but they are identical to the Complainants’ trademarks. The Respondent’s offer to sell one of them for a sum in excess of out-of-pocket expenses, and his registration of the others after receipt of the cease-and-desist email, are further indicia of bad faith. The Complainants find the Respondent’s assertion that he registered the disputed domain names for a personal blog to be ludicrous.

B. Respondent

The Respondent, in a preliminary communication with the Center, denied any knowledge of the third party email address from which the offer to sell one of the disputed domain names was sent.

The Respondent argues that he has a legitimate interest in the disputed domain names. He submits that the disputed domain names refer to the Chinese name李索格洛 (Li Suo Ge Luo) and that he intends to use them for his own blog. He submits that the disputed domain names have no connection with the Complainants’ business and, moreover, that he has no intention to sell them.

The Respondent argues that the disputed domain names belong to him because domain name registration operates on a first-come first-served basis. The similarity of the disputed domain names is unavoidable. He suspects the Complainants of bad faith because they did they not protect their rights in the relevant domains for a lengthy period but chose arbitration instead.

The Respondent submits that he has already set up a blog website. He provides the results of a ping test allegedly showing that the disputed domain name <risogallo.top> is configured on a computer that is connected to a network. The Respondent informs the Panel that he has not had time to update the website but argues that it does not conflict with the Complainants’ rights.

6. Discussion and Findings

6.1 Language of the Proceeding

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 Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainants request that the language of the proceeding be English. Their main arguments are that the parties communicated with each other in English before the Complaint was filed, which shows that English is a language known to the Respondent, and that the Complainants do not understand Chinese.

The Respondent requests that the language of the proceeding be Chinese. His main arguments are that he does not understand English well, that the language of the Registration Agreements is Chinese, that he registered the disputed domain names within China’s borders and that he does not seek to use the disputed domain names for business in other countries.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that the Complaint in this proceeding was filed in English. Prior to the commencement of the proceeding, the Complainants’ representative sent the Respondent a cease-and-desist email written in English, to which the Respondent replied, also in English, asserting rights or interests in one of the disputed domain names but offering to sell that disputed domain name. This indicates that the Respondent understands English. The Panel also observes that the Respondent’s communications during this proceeding, which have all been in Chinese, address not only the language issue but also the merits. The Panel is familiar with both Chinese and English. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both parties have been able to present their respective cases and it does not consider that accepting the original version of any document on file causes prejudice to either party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, and that it will accept the communications filed in Chinese.

6.2 Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group. They both own trademark registrations for RISO GALLO. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

6.3 Analysis and Findings

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in a registered trademark consisting of RISO GALLO.

The disputed domain names incorporate the Complainant’s trademark in its entirety. The only additional element in each domain name is a gTLD suffix, variously “.club”, “.ren”, “.top”, “.wang” or “.xyz”. However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080).

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(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 trademark 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 trademark or service mark at issue.

As regards the first circumstance, the disputed domain names are not used in connection with a bona fide offering of goods or services, nor is there any evidence of preparations to use them in that way. While the Respondent asserts that he intends to use one of the disputed domain names, he does not suggest that this is in connection with any offering of goods or services. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is shown in the WhoIs database as “Wu Guo Qiang”. That name does not resemble “risogallo” or have any apparent connection with it. The Respondent argues that he intends to use at least one of the disputed domain names in connection with the Chinese name李索格洛, which can be transliterated as “Li Suo Ge Luo”. There is no evidence to indicate that the Respondent is in fact known by that name and, even if he were known by that name, it is different from the disputed domain names. In sum, there is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the Complainant submits that none of the disputed domain names resolves to any active website. Even though the disputed domain name <risogallo.top> may be configured on a computer connected to a network, it does not resolve to any active website. While the Respondent asserts that he will use the disputed domain name for a blog, there is no evidence to demonstrate the existence of any such blog or other potentially legitimate noncommercial or fair use of that disputed domain name. Even if the Respondent could show that he wished to create a blog concerning a person named 李索格洛 that would not explain why he chose to register “risogallo” as a domain name rather than a transliteration of that personal name such as “lisuogeluo”. Therefore, the Panel finds that the Respondent is not making any use of the disputed domain names that could be covered by the third circumstance of paragraph 4(c) of the Policy.

Accordingly, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Respondent has failed to rebut that case. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration in bad faith, the Panel observes that the Respondent registered five domain names that, but for the gTLD in each case, are identical to the Complainant’s RISO GALLO trademark. This trademark is the name of rice produced and marketed by the Complainant. The disputed domain name registrations postdate the Complainant’s earliest trademark registrations by many years – including in China, where the Respondent is located. The Complainant has made extensive use of its trademark in many countries around the world, including in China, where the Respondent is located. The Complainant’s official websites are the top search results for the term “risogallo” in the Baidu search engine. In view of these circumstances, the Panel is persuaded that the choice to register domain names identical to that invented name, in combination with a gTLD, was deliberate.

With respect to use in bad faith, the disputed domain name <risogallo.top> may have been configured on a computer connected to a network but it does not resolve to an active website. The Respondent also makes only passive use of the other four disputed domain names. Passive use does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademark which is widely known through use in connection with rice, including through the Complainant’s official websites. The disputed domain names all consist of the exact trademark RISO GALLO, minus the space between the two words, but each in combination with a different gTLD. The Respondent has provided an implausible explanation as to why he registered the disputed domain name <risogallo.top> and he registered the other four disputed domain names on the same day that he received notice from the Complainants’ representative of their claims to the RISO GALLO trademark. These are all indicia of bad faith because the Panel has found that the Respondent has no rights or legitimate interests in any of the disputed domain names. Accordingly, the Panel finds that the disputed domain names are being used in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 names <risogallo.club>, <risogallo.ren>, <risogallo.top>, <risogallo.wang> and <risogallo.xyz> be transferred to the First Complainant, Riso Gallo S.p.A.

Matthew Kennedy
Sole Panelist
Date: March 23, 2016