WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dirk Rossmann GmbH v. Hu Qi Hui / Ning Bo Luo Si Man Xin Xi Ke Ji You Xian Gong Si

Case No. D2017-0285

1. The Parties

The Complainant is Dirk Rossmann GmbH of Burgwedel, Germany, represented by Michael Horak of Germany.

The Respondent is Hu Qi Hui, Ning Bo Luo Si Man Xin Xi Ke Ji You Xian Gong Si of Ningbo, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <rossmanncn.com> is registered with Foshan YiDong Network Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 20, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 24, 2017 and submitted evidence in support. The Respondent did not comment on 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 in English and Chinese of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 28, 2017. 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 a German drug-store chain. The Complainant is the owner of multiple trademark registrations, including International trademark registration number 746785 for ROSSMANN and logo, International trademark registration number 746786 for its centaur logo, both registered from June 27, 2000, both designating multiple jurisdictions including China, and both specifying goods and services in a wide range of classes; and also including International trademark number 1165338 for ROSSMANN, registered from October 31, 2012, designating multiple jurisdictions including China, and specifying services in multiple classes. Those registrations remain in effect. The Complainant’s official website, which is in German, is an online store selling consumer goods including beauty, baby, household, animal, health and food as well as branded products. The upper left hand corner of the official website displays the Complainant’s trademark ROSSMANN and centaur logo in red. In 2016, the Complainant registered its ROSSMANN and centaur logo, and its centaur logo in red, as artistic works with the Chinese National Copyright Administration.

The Respondent is located in China. The disputed domain name was created on February 13, 2014. It resolves to a website in Chinese that is an online store selling consumer goods, including mother and baby products, cosmetic, health, consumer electrical, food and beverage products as well as luxury products. The upper left hand corner of the website displays the Complainant’s centaur logo in red together with the names “罗斯曼” (a transliteration of “Rossmann”) and “Rossmann” in Latin script. The website describes itself as a platform for cross-border purchases of mother and baby products, drugs and cosmetics. It also displays a photo stating that products are of 100 percent German origin.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s ROSSMANN trademarks. The only difference lies in the addition of “cn” which does not take away the identicality. The logo shown on the website to which the disputed domain name resolves is identical to the Complainant’s figurative trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s website uses the protected symbols of the Complainant and similar colors. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services; that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent uses the disputed domain name in connection with a website that sells goods similar to those of the Complainant. That shows that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. The Respondent uses symbols and colors on the disputed domain name that are similar to, or identical with, the registered trademarks of the Complainant. That shows that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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 Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent’s website sells products presented in English and German from which it can be assumed that the Respondent speaks English, and that the Complainant should not be put at a disadvantage when the disputed domain name was so obviously registered in bad faith. The Respondent did not comment on the language request.

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. Having received the Complaint, as well as a notice of the proceeding in Chinese and English, the Respondent has not expressed any wish to respond to it or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

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

(ii) the 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the ROSSMANN trademark.

The disputed domain name incorporates the Complainant’s ROSSMANN trademark in its entirety as its dominant and only distinctive element.

The disputed domain name contains the additional element “cn” which is a common abbreviation of “China”. As a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.

The disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com” but a gTLD suffix is generally disregarded in the comparison between a domain name with a trademark for the purposes of assessing confusing similarity. 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 name is 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 above, the disputed domain name is being used in connection with an online store. The disputed domain name is confusingly similar to the Complainant’s ROSSMANN trademark. The Complainant submits that there is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. In particular, the Panel sees no evidence on file that the Complainant has authorized the Respondent to use or register its trademark as a domain name or otherwise. There is nothing on the Respondent’s website that would indicate any reason for choosing the disputed domain name in connection with the offering of goods for sale other than to misleadingly divert Internet users to the site with intent for commercial gain. These facts indicate that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services covered by the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance above, the Respondent’s name and organization are recorded in the Registrar’s WhoIs database as “Hu Qi Hui” and “Ning Bo Luo Si Man Xin Xi Ke Ji You Xian Gong Si”, respectively. Neither of those names is “Rossmanncn” or “Rossmann”. While the organization name includes three characters transcribed as “Luo Si Man” (a transliteration of “Rossmann”), those characters are not, in fact, “Rossmann”. Had the Respondent wished to register that part of its name in ASCII format, it might have chosen to register “Luosiman” instead. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance above, the disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The Respondent registered the disputed domain name in 2014, many years after the Complainant obtained its ROSSMANN and logo trademark registration, including in China where the Respondent is located. The disputed domain name incorporates the Complainant’s ROSSMANN trademark in its entirety as its dominant element. The addition of the letters “cn” gives the impression that it resolves to the Chinese website of the Complainant or a website connected with the Complainant. The content of the website to which the disputed domain name resolves confirms that impression, by displaying the Complainant’s centaur logo and the Complainant’s ROSSMANN trademark, in the same color as the Complainant’s website, and by offering for sale the same types of goods as the Complainant. This all indicates to the Panel that the Respondent was aware of the Complainant and its ROSSMANN trademark at the time that it registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.

The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s ROSSMANN trademark, in connection with a website that is an online store falsely presented as the Chinese website of the Complainant or a website connected with the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. This use is intentional and for commercial gain as contemplated by paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is 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 name <rossmanncn.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: April 5, 2017