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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Portmeirion Group UK Limited v. GuangSheng Chen, ChenGuangSheng

Case No. D2021-2116

1. The Parties

The Complainant is Portmeirion Group UK Limited, United Kingdom (“UK”), represented by HGF Limited, UK.

The Respondent is GuangSheng Chen, ChenGuangSheng, China.

2. The Domain Name and Registrar

The disputed domain name <spodeitalian.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2021, 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 July 7, 2021 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 in English on July 8, 2021.

On July 7, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On July 8, 2021, the Complainant confirmed its request that English be the language of the proceeding. 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 in English and Japanese of the Complaint, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2021.

The Center appointed Keiji Kondo as the sole panelist in this matter on September 9, 2021. 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 pottery company based in the UK. The Complainant has a number of trademark registrations for its trademark SPODE covering various territories. Among the Complainant’s trademark registrations, International Trademark Registration No. 1108220, registered on September 21, 2011, includes Japan and China as designated countries. The registration covers Classes 8, 21 and 24. The Complainant’s trademark registrations generally cover such goods as porcelain and china, tableware, and home goods. The International Trademark Registration became effective in Japan on November 28, 2013, and designated China on August 28, 2014.

The disputed domain name is <spodeitalian.com>. The disputed domain name was registered on March 31, 2021. The disputed domain name resolves to a website containing pornographic content and gambling links.

5. Parties’ Contentions

A. Complainant

The disputed domain name <spodeitalian.com> is highly similar to the trademark SPODE as it encompasses the whole of the SPODE trademark. The disputed domain name simply includes the geographical term “Italian” to the SPODE mark and is thus insufficient in dispelling the likelihood of confusion resulting from the incorporation of the Complainant’s SPODE mark in the disputed domain name. The Complainant notes that the term “Spode” does not carry any meaning, in any language, including Italian, thus there is no legitimate reasoning for the Respondent to choose to register the disputed domain name <spodeitalian.com>.

The Respondent has not responded to a letter from the Complainant, despite several attempts to contact. The Complainant also submitted a request through the Registrar which was sent on to the Respondent and no response was received. The Complainant contends that the Respondent is not commonly known by the disputed domain name, affiliated with the Complainant nor authorized to use the disputed domain name or SPODE trademark by the Complainant.

As noted above, the Respondent is not authorized to use the SPODE mark whether in a domain name or otherwise. The disputed domain name resolves to a website containing pornographic content. The Complainant contends that numerous case decisions under the UDRP have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation (see, e.g., CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008, and further cases cited there). In addition, the linking of the disputed domain name with a pornographic website might result in the tarnishing of the Complainant’s well-known trademark. The Complainant also contends that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant by hosting pornographic content. Further, the Complainant contends that the disputed domain name is blocking the Complainant from registering the disputed domain name themselves. The Complainant contends that the Respondent is using the disputed domain name, and has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s SPODE mark. The Complainant contends that the word “Spode” has no direct meaning to the great majority of Internet users, other than as a reference to the Complainant’s SPODE trademark and products. Thus, the Complainant can only infer that the Respondent chose to use that mark in the disputed domain name with the knowledge that a significant number of Internet users seeing the disputed domain name would be likely to associate it with the Complainant’s SPODE mark. Thus, the Complainant contends that the Respondent intended Internet users to make that association. It follows that the Respondent not only “had the Complainant’s SPODE mark in mind” when the disputed domain name was registered, but also that the Respondent “targeted” the Complainant’s SPODE mark in order to direct consumers to its website.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

In its email transmitted to the Center on July 5, 2021, the Registrar confirmed that the language of the Registration Agreement is Japanese. The Complainant requested that English be the language of the proceeding in the Complaint, and confirmed its request in the communication to the Center on July 8, 2021. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- The Complaint was filed in English;
- The Complainant is a UK entity, and represented by a UK law firm;
- The Respondent’s address is in China;
- The website at the disputed domain name is mainly in Chinese;
- On July 7, 2021, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding, but the Respondent did not comment on the language of the proceeding;
- The Respondent did not reply to the Complainant’s contentions;
- The disputed domain name contains an English word “Italian”, which is the adjective for the geographical term “Italy”, suggesting that the Respondent has some ability to communicate in English; and
- Ordering the translation of the Complaint would only result in extra delay of the proceeding and additional cost for the Complainant.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant owns an International Trademark Registration for SPODE. The disputed domain name consists of “spode”, “italian” and a generic Top-Level Domain (“gTLD”), “.com”. Therefore, the Panel finds that the disputed domain name entirely incorporates the Complainant’s trademark SPODE.

The similarity test of the first UDRP element serves as a standing requirement. In the present case, the Complainant’s trademark SPODE is clearly recognizable in the disputed domain name. The addition of the term “Italian”, the adjective for Italy, does not prevent a finding of confusing similarity under the first element.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has never authorized the Respondent to register a domain name incorporating its trademark. The Respondent’s name is in no way similar to the Complainant’s trademark SPODE, and, therefore, it is inconceivable that the Respondent has been commonly known by the disputed domain name.

The Respondent uses the disputed domain name to direct Internet users to a website containing pornographic content and gambling links. Such use would not be regarded as use in connection with a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on March 31, 2021. It is after the Complainant’s International Trademark Registration for SPODE was made effective in Japan on November 28, 2013, and designated China on August 28, 2014. Further, the Complainant’s first trademark registration in the UK was made in 1925 (UK registration No. UK00000461079, registered on July 31, 1925).

Considering that the Complainant’s SPODE trademark appears to be distinctive, and “Spode” does not appear to carry any meaning in English, Japanese or Chinese, it is inconceivable that the Respondent was not aware of the Complainant’s trademark SPODE when the disputed domain name was registered. The Panel finds that the Respondent intentionally chose the disputed domain name to cause confusion with the Complainant’s trademark SPODE. Therefore, the Panel concludes that the disputed domain name was registered in bad faith.

Based on the facts discussed in the previous section, it is clear that the Respondent attempts to use the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark SPODE as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In addition, using the disputed domain name to direct Internet users to a website containing pornographic content and gambling links could tarnish the reputation of the Complainant. Such use may also disrupt the Complainant’s business. Therefore, the Panel concludes that the Respondent uses the disputed domain name in bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <spodeitalian.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: September 14, 2021

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