WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

tesa SE v. Zhang Yongkang

Case No. D2019-2689

1. The Parties

The Complainant is tesa SE, Germany, represented by Hogan Lovells International LLP, Germany.

The Respondent is Zhang Yongkang, China.

2. The Domain Name and Registrar

The disputed domain name <tesa7475.com> is registered with Xiamen 35.Com Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2019. On November 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2019, 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 November 7, 2019 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 November 11, 2019.

On November 7, 2019, 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 November 11, 2019. The Respondent did not comment on 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, and the proceeding commenced on November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2019.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 16, 2019. 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

A. Complainant

The Complainant is a company incorporated in Germany and a wholly owned subsidiary of Beiersdorf AG. The Complainant is the manufacturer of self-adhesive tape and related products promoted and sold worldwide under the word and device trade mark TESA (the “Trade Mark”), and first introduced to market (by Beiersdorf AG) in 1936.

The Complainant is the owner of registrations in jurisdictions worldwide for the Trade Mark, including International registration No. 591613, registered since May 9, 1992, designating China.

B. Respondent

The Respondent is apparently an individual resident in China.

C. The Disputed Domain Name

The disputed domain name was registered on July 7, 2014.

D. Use of the Disputed Domain Name

The disputed domain name has been used in respect of a predominantly Chinese language website which offers for sale the Complainant’s products under the Trade Mark (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain names 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 the language of the proceeding be English, for several reasons, including:

(i) the disputed domain name comprises Latin characters;

(ii) the Website is partly in English, including an English and Chinese language complaint form, and English language product descriptions; and

(iii) the Respondent was the respondent in a prior UDRP proceeding, see tesa SE v. Zhang Yongkang, WIPO Case No. D2015-1438, involving the domain name <tesa-tape.com>. In that proceeding, the Complainant submitted evidence (in particular the predominantly English language content of the Respondent’s website therein) which proves that the Respondent understands English.

The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.

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 is unable, on the basis of the evidence submitted by the Complainant, to conclude there is a likely possibility that the Respondent is conversant in the English language. In this regard the Panel notes that, although the panelist in case number WIPO Case No. D2015-1438 accepted that the content of the relevant website in that proceeding was predominantly in English, and accepted the filing of the Complaint in English, the panelist noted that the website content appeared to be automatically generated, and accordingly decided to render the decision in Chinese and not English.

The Panel considers however that, in all the circumstances, the facts relied upon by the Complainant (including the partial English language content of the Website) might at least suggest a prima facie case that the Respondent is conversant in English. The Panel notes also that the Respondent has chosen not to contest this proceeding; and is 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 English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail:

(i) the respondent’s 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 domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.

The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the (apparently meaningless) number “7475”.

Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).

The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.

B. Rights or Legitimate Interests

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 the Respondent 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. To the contrary, the disputed domain name has been used in connection with the Website, in order to offer for sale the Complainant’s products under the Trade Mark, without the authorisation or approval of the Complainant.

The Panel finds that the Respondent is unable to rely on the fact the Respondent is apparently offering for sale and selling the Complainant’s products on the Website, as the Website does not “accurately and prominently disclose the registrant’s relationship with the trademark holder” (the Complainant) - see WIPO Overview 3.0, section 2.8.1.

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.

In addition, the Panel notes the nature of the disputed domain name, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).

In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In all the circumstances, including the repute of the Trade Mark, the close similarity between the disputed domain name and the Trade Mark, and the manner of use of the disputed domain name highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out.

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

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 <tesa7475.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: December 30, 2019