The Complainant is PM-International AG of the Grand Duchy of Luxembourg, represented by Rau, Schneck & Hübner, of Germany.
The Respondent is Phoenix Bhd of the Federative Republic of Brazil.
The disputed domain name <fitlinesport.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2008. On September 22, 2008, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the disputed domain name. On September 23, 2008, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Center sent the Complaint Deficiency Notification email to the Complainant on September 26, 2008. The amendment to the Complaint was submitted to the Center on October 1, 2008. In response to the language of the proceeding email, the Complainant submitted a request on October 1, 2008 inter alia providing reasons why the language of the proceedings should be English.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 28, 2008.
The Center appointed Soh Kar Liang as the sole panelist in this matter on November 19, 2008. 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.
The Complainant owns various trade mark registrations for dietary products for the FITLINE (the “FITLINE Mark”) including:
002 113 462 Community Trade Mark
718 158 International
2 781 217 United States of America
The International registration was based on a Benelux application and designates the Republic of Austria, the Republic of Bulgaria, the Swiss Confederation, the Czech Republic, the Federal Republic of Germany, the Kingdom of Spain, the French Republic, the Italian Republic, the Republic of Latvia, the Republic of Poland, the Portuguese Republic, the Russian Federation, the Slovak Republic, the Kingdom of Denmark, the Republic of Finland, the United Kingdom of Great Britain and Northern Ireland, the Republic of Iceland, Japan, the Kingdom of Norway and the Kingdom of Sweden.
The Complainant contends that:
(1) The disputed domain name is highly similar to the Complainant's FITLINE Mark and the addition of the suffix “sport” to the word “fitline” does not distinguish the disputed domain name from the FITLINE Mark;
(2) The Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services. The Respondent has never been commonly known by the disputed domain name; and
(3) The Respondent registered and is using the disputed domain name in bad faith. The Respondent has adopted a fictional name and address and the website resolved from the domain name does not show fair use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
As the Registration Agreement was in Chinese, the default language of the proceedings would have been Chinese in accordance with paragraph 11(a) of the Rules. Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to the circumstances of each case. In doing so, the Panel must ensure fairness to the Parties and the maintenance of a cost-efficient and expeditious avenue for resolving domain name disputes. In particular, language requirements should not unduly burden the Parties or unduly delay proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293).
The Complainant has requested for English to be the language of the proceedings based on the following reasons:
(1) The Complainant is a Luxembourg company and does business in German;
(2) The Respondent is purportedly based in Brazil;
(3) The website resolved from the disputed domain name is in the English language; and
(4) The Respondent's name and address are contrived in the probable manner of a typical cybersquatter and the Respondent may be using the language of the registration agreement to impede proceedings.
In the absence of a Response, it is not possible to determine with certainty whether the Respondent's name and address are contrived or that the Respondent is in fact based in Brazil. This Panel can only rely on the limited information in the Complaint and the Complainant's submission to decide this issue.
By providing a Brazilian address, the Respondent has asserted that it is based in Brazil. This Panel accepts that Chinese is not a language commonly used in Brazil. Other than registering the disputed domain name under a Chinese language registration agreement, there is no other obvious indication that the Respondent is Chinese, hails from a Chinese background or has any connection with the Chinese language.
Therefore, it does not appear beneficial to either party for Chinese to be the language of the proceedings. It will clearly be burdensome on the Parties and no doubt cause inordinate delay to impose the Chinese language on the proceeding. Further, the Respondent has exhibited at least some competence in English by adopting English as the language of the website resolved from the disputed domain name.
The Respondent has also been given ample opportunity by the Center to address the question of the language of the proceedings. The Respondent has chosen neither to contest the proceedings nor the Complainant's request regarding the language of the proceedings.
In view of the above, this Panel is of the view that English is a fair compromise between the Luxembourg/German competence of the Complainant and the purported Brazilian base of the Respondent. It is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceedings. Having regard to the above, this Panel determines under paragraph 11(a) that English shall be the language of the proceedings.
To succeed, in accordance with paragraph 4(a) of the Policy the Complainant must satisfy the Panel that:
1) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3) the disputed domain name has been registered and is being used in bad faith.
The FITLINE Mark is owned by the Complainant and precedes the registration of the disputed domain name by several years. The FITLINE Mark is a prior trade mark in which the Complainant has rights.
Adding a suffix “sport” to “fitline” merely results in a descriptive association between sport and the products associated with “fitline”. There are numerous panel decisions confirming that unless such combinations are capable of being distinguished from the complainant's trade mark, confusing similarity may be established (e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758). A domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trade mark (e.g., Edmunds.com, Inc. v. keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007-1427). There are no special circumstances in this case to depart from these established principles.
In the circumstances, this Panel is of the view that the disputed domain name is not distinguishable from but is confusingly similar to the FITLINE Mark.
The Complainant has submitted that the Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services and has never been commonly known by the disputed domain name. The Respondent has neither refuted these submissions nor shown any justification of a right or legitimate interest in respect of the disputed domain name.
A review of the printouts of the website resolved from the disputed domain name show no reference to the words “fitlinesport” or “fitline” in any manner (except as a domain name). Instead, the website contains a bare sentence stating “You cannot access this Page!”. The website does not provide any readily discernible reason for the choice of the disputed domain name by the Respondent.
In the circumstances, This Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent has adopted a fictional name and address in registering the disputed domain name. If a domain name were registered by a respondent who misrepresents his name and address, the misrepresentation will generally imbue the registration of the domain name with bad faith. Unless a good reason exists, any use or intended use of such a domain name by the respondent would in all likelihood be in bad faith as well.
This Panel is unable to find any evidence that the Respondent's name is fictional. Although the words “Sao Pola” and “Street of Pele” are unusual, having an unusual name/address is not the same as having a fictional name/address.
A quick search on the Internet for “Brazil” together with “Sao Pola” and “Street of Pele” using the Google and Google Maps search engines does not yield any relevant geographical location. This Panel also notes that Brazilian postal codes have eight numbers with a dash between the fifth and sixth numbers (e.g., see the United Nations' Universal Postal Union's website at <http://www.upu.int/post_code/en/countries/BRA.pdf>). The postal code given in the Respondent's address states five numbers followed by the letters “wg”. The Respondent's address is therefore incorrect and potentially fictional.
In the face of the serious allegation of misrepresentation or essentially of a dishonest act on the part of the Respondent, one would think that the Respondent would surely respond aggressively in refutation if the allegation were untrue. However, the Respondent has chosen not to do so. In the light of the Respondent's silence, this Panel can only draw an adverse inference from the circumstances that there is merit in the allegation that the Respondent's name/address is fictional and that the Respondent is unable and/or unwilling to refute the allegation.
Paragraph 4(b)(ii) of the Policy provides that the following is a non-exhaustive instance of bad faith use and registration:
“[the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct.”
Although the registration of the disputed domain name did not prevent the Complainant from reflecting the FITLINE Mark in a corresponding domain name, a pattern of conduct in preventing variants of the Complainant's trade mark from being reflected in a corresponding domain names could itself be an instance of bad faith in the right circumstances (see Picanol, Naamloze Vennootschap (N.V.) v. zhejiang qingsheng jituan yanjiusuo fangji xianluban kaifa weixiu zhongxin shaoxingxian yangxunqiaozhen jiangqiao qingsheng jituan, WIPO Case No. D2008-0968).
It should be highlighted that concurrent with this case, the Complainant has filed complaints against the domain names <getfitline.com>, <fitlineweb.com>, <fitlinemed.com> and <bestfitline.com> wherein the respective respondents claim to be from Bulgaria, Canada and Greece. The postal codes provided by the respondents in all these cases also state five numbers followed by the letters “wg”. It is highly inconceivable that all respondents, including the Respondent, could have made an innocent mistake when providing their addresses during registration of the various domain names. The inference of a coordinated effort to prevent at least five variants of the FITLINE Mark (i.e., “getfitline”, “fitlineweb”, “fitlinesport”, “fitlinemed” and “bestfitline”) from being reflected in corresponding domain names is significant.
In view of the above, this Panel finds that the balance of probabilities tips in favour of a conclusion that the disputed domain name was registered and used in bad faith and determines as such.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <fitlinesport.com>, be transferred to the Complainant.
Soh Kar Liang
Dated: December 15, 2008