WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ADI S.r.l. v. 颜进 (Yan Jin)

Case No. D2020-1645

1. The Parties

The Complainant is ADI S.r.l., Italy, represented by Cantaluppi & Partners S.r.l., Italy.

The Respondent is 颜进 (Yan Jin), China.

2. The Domain Name and Registrar

The disputed domain name <aditool.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2020, 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 3, 2020 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, 2020.

On July 3, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 6, 2020, 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 Chinese of the Complaint, and the proceedings commenced on July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on August 28, 2020. 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, ADI S.r.l., is an Italian Company which was incorporated in 1980. It produces diamond tools for stone, ceramics, mechanics, glass and optics industries.

The Complainant is the owner of various ADI marks worldwide, including European Union Trade Mark No. 003859171 registered on July 29, 2005 in class 7; European Union Trade Mark No. 017936509 registered on March 29, 2019 in classes 7 and 8 and Chinese trademark No. 4175912 registered on November 7, 2006 in class 7.

The Complainant owns two domain names which incorporate the wording “ADI TOOLS”, including <aditools.com> registered on January 28, 1997 and <aditools.it> registered on May 9, 2003. The domain name <aditools.com> is used by the Complainant to promote its products, technology and know-how in the field of diamond tools for industry.

The Respondent is the registrant of the disputed domain name <aditool.com>.

The disputed domain name was registered on May 10, 2014 and resolves to a website of Asia Diamond Industry Co., Ltd which purports to manufacture a complete range of diamond tools, such as diamond cutting, grinding, drilling, quarrying and precision tools.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark and company name, and identical to the Complainant’s official domain name.

No rights or legitimate interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that there is no ADI or ADITOOL marks registered in the name of the Respondent. There is no indication that the Respondent may be known by the name “aditool” as an individual, business or other organization.

The Complainant asserts that the Respondent does not use the disputed domain name in connection with a bona fide business. There is no immediate connection that can be made between the Respondent and Asia Diamond Industry Co., Ltd. Neither Asia Diamond Industry Co., Ltd nor Asia Diamond Industry Tools branch have a physical address. The Complainant claims that the Respondent’s email address does not work.

The Complainant claims that Asia Diamond Industry Co., Ltd is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent’s clear intent is to misleadingly divert consumers.

Registered and used in bad faith

The Complainant asserts that the disputed domain name has been registered ten years after the Complainant registered the ADI mark and nearly fifteen years after registration and use of the domain name <aditools.com> by the Complainant for business purposes. Asia Diamond Industry Co., Ltd is using the disputed domain name to offer products which are identical to those of the Complainant’s business. The Respondent intentionally attempts 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, affiliation and endorsement of his website.

The Complainant contends that the Respondent is well aware of the Complainant. The Complainant asked a trusted person to contact Asia Diamond Industry Co., Ltd, and Thomas, the purported Chief Sales Manager of the Respondent indicated “We are not Chinese branch of ADI Italy, we only have some industrial diamond business with them.” The Complainant claims that it has no business connections with the Respondent. The Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the products on the Respondent’s website.

Further, the Complainant asserts that Asia Diamond Industry Co., Ltd does not seem to have any real physical existence because no physical address or telephone number are available on the resolved website.

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 is Chinese.

The Complainant requested the language of the proceeding be in English on the grounds that (i) the website of the Registrar of the disputed domain name, Alibaba Cloud Computing (Beijing), Co Ltd is written in English. The Complainant found a copy of the service agreement concerning “.com” domain names between Alibaba Cloud Computing and its clients that is written in English; (ii) the website connected to the disputed domain name is entirely written in English and there is no possibility to choose Chinese language; (iii) the email addresses of the persons copied as the Respondent are all duly indicated on the English language website; and (iv) English was used in the pre-Complaint correspondence between the Complainant’s client and Thomas from the company who is using the disputed domain name at the email address <Thomas@aditool.com>.

The Respondent did not respond to this request.

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 Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The pre-complaint correspondence was written in good English indicating the Respondent can communicate in English. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <aditool.com> is confusingly similar to the Complainant’s ADI trademark because the disputed domain name incorporates the word ADI in full, followed by a word “tool”. The Complainant’s ADI mark is clearly recognizable in the disputed domain name. The generic Top-Level Domain “.com” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.11.1.

It is accepted by UDRP panels that the addition to the complainant’s trademarks of words or terms that describe or refer to part of the complainant’s business in the disputed domain name does not affect the similarity of the domain name from the registered trademark under the first element of the Policy. (WIPO Overview 3.0, section 1.8). In view of the Complainant’s business nature, the inclusion of a term “tool” does not affect the similarity of the disputed domain name from the Complainant’s ADI trademark.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.

The disputed domain name was registered way after the Complainant had registered and used the ADI mark. The Panel is satisfied that the Respondent must have known the Complainant’s well-known ADI mark when it registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name in order to create an association with the Complainant as a means of attracting users to the resolved website.

Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s marks in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <aditool.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: September 8, 2020