The Complainant is UPM-Kymmene Corporation, Stockhom, Sweden, represented by Melbourne IT Digital Brand Services AB, Stockholm, Sweden.
The Respondent is yongxi zhang, Zhongshan, Guangdong Province, People's Republic of China.
The Disputed Domain Names <upmrfid.com>, <upmrfid.net> and <upmtag.com> are registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2009. On July 3, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Names. On July 6, 2009, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 7, 2009, the Center transmitted an email to the parties in Chinese and English concerning the language of proceeding. On July 7, 2009, the Complainant submitted a request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the due date. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 6, 2009.
The Center appointed Kar Liang Soh as the sole panelist in this matter on August 10, 2009. 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 is a public limited company listed on NASDAQ and the Omx Helsinkin Stock Exchange. It is one of the world's leading forest industry groups dealing in energy and pulp, paper and engineered materials. Its origins date back to the late 19th century in Finland. It currently has production facilities in 14 countries including China and employs 24,000 people worldwide.
UPM Rafsec belongs to the Complainant's group of companies. Through UPM Rafsec, the Complainant has been involved in RFID tag and inlay production in Guangzhou since 2008 to serve the growing Asian market. The production capacity of the facility is about 100 million pieces per year.
The Complainant owns trade mark registrations in many countries for the word UPM and marks incorporating the word UPM (“UPM Marks”). These include:
China 1136757 December 21, 1997
China 1178452 May 28, 1998
WIPO 889992 December 1, 2005
WIPO 954902 January 10, 2008
WIPO 952587 January 10, 2008
All WIPO registrations above designate China.
The Complainant also owns many domain name registrations incorporating the word “upm” under various TLDs including <upm.com>, <upmtech.com>, <upm.asia> and <upmbag.com>. The Complainant also maintains a Chinese language website under its domain name <upm-kymmene.com.cn>.
The Respondent resides in the Guangdong province, which is the same province as UPM's RFID facility in China. Little else is known about the Respondent.
The Disputed Domain Names were registered on the following dates:
<upmrfid.com> April 6, 2008;
<upmrfid.net> April 6, 2008;
<upmtag.com> May 16, 2008.
The Complainant sent a cease and desist letter to the Respondent on May 29, 2009 in relation to the Disputed Domain Names. Reminders were sent on June 5, 2009 and June 12, 2009. There was no response from the Respondent to any of these letters even though the final letter was accompanied by a note in Chinese.
The Complainant contentions are:
(1) The Disputed Domain Names comprise the word “upm”, which is identical to the well-known UPM Marks. The addition of the suffixes “rfid” and “tag” do not detract from the overall similarity of the Disputed Domain Names from the UPM Marks;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent does not own any trade marks or trade names corresponding to the Disputed Domain Names. No licence or authorization of any kind has ever been given by the Complainant to the Respondent to use the UPM Marks; and
(3) The Respondent registered and is using the Disputed Domain Names in bad faith. The considerable value and goodwill of the UPM Marks cannot be unknown to the Respondent. The Respondent has not put the Disputed Domain Names to any use yet but any use of the Disputed Domain Names would create an impression of an association with the Complainant and amount to opportunistic bad faith.
The Respondent did not reply to the Complainant's contentions.
The Registration Agreement is in Chinese. Accordingly, paragraph 11(a) of the Rules establishes Chinese as the default language of the proceedings.
However, the circumstances may allow the Panel to determine otherwise to ensure fairness to the Parties, keep proceedings cost-efficient and expeditious, to avoid undue burden on the Parties, and to avoid delay to the proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Complainant submits that English should be the language of the proceedings.
Having regard to the Complainant's submissions, this Panel is persuaded by the following arguments of the Complainant:
(1) The Complainant has and will incur large expenses as a result of the Respondent's use of the UPM Marks in the Disputed Domain Names;
(2) The terms “rfid” and “tag” incorporated in the Disputed Domain Names are English words;
(3) The Respondent did not reply to the Complainant's English language cease and desist letters even when the last letter had a note in Chinese;
(4) The Respondent has not indicated that he did not understand the content of the cease and desist letters even though it would have been the natural thing to do when faced with the same;
(5) The Respondent has shown no interest in responding and it will serve no useful purpose to insist on the Complainant translating all its papers into Chinese.
Additionally, the Panel notes that all communications from the Centers to the Parties have been in Chinese and in English. It is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceedings. Therefore, the Panel holds that English shall be the language of the proceedings in accordance with paragraph 11(a) of the Rules.
Paragraph 4(a) of the Policy requires the Complainant to show that:
(1) The Disputed Domain Names are 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 Names; and
(3) The Disputed Domain Names have been registered and are being used in bad faith.
The various trade mark registrations owned by the Complainant unequivocally establish that UPM is a trade mark in which the Complainant has rights. As a trade mark, UPM pre-dates the Disputed Domain Names. In China, the earliest trade mark registration for UPM pre-dates the Disputed Domain Names by over 10 years.
The Disputed Domain Names incorporate the word “upm” in its entirety. The weight of authority holds that 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 (eg, Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; PM-International AG v. Man Utd Club, WIPO Case No. D2008-1432).
The suffixes “rfid” and “tag” in the Disputed Domain Names are generic descriptors of products which are dealt with by the Complainant. The Panel accordingly takes the view that the Disputed Domain Names are not distinguishable from the Complainant's UPM Marks and are hence confusingly similar. As such, the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights and the first limb of paragraph 4(a) of the Policy is established.
The Complainant has leveled serious allegations against the Respondent, particularly in relation to the Respondent's lack of rights or legitimate interests in the Disputed Domain Names. The Respondent has shown no interest in defending himself in relation to the cease and desist letters of the Complainant and/or the current proceedings. The Panel is satisfied that the Complainant's contentions in this regard have been made out and it is established prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has failed to (or even attempted to) rebut this conclusion and it shall stand.
The fame and reputation in the UPM Marks passionately argued by the Complainant has neither been denied nor refuted by the Respondent. This Panel therefore accepts that the Complainant's UPM Marks are well-known. Having concluded that the UPM Marks are well-known, it is inconceivable in the absence of additional information that the Respondent was unaware of the same.
The Complainant referred to Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 as authority for the position that use of a well-known mark as a domain name in connection with a website would create an impression of an association with the trade mark owner suggested opportunistic bad faith registration and use. This Panel agrees with the principle of this decision. However, there is no indication that the Disputed Domain Names are used in connection with a website and it would appear that the facts do not fall within the situation in WIPO Case No. D2000-0163.
Nevertheless, it should be borne in mind that the use of domain names is not limited to websites. Domain names may also be used to resolve other services on the Internet (eg, FTP, email, etc) which do not involve the existence of a website. In particular, email services provided under a domain name would have comparable propensity to web services in the ability to create an impression of an association with the trade mark from which the domain name is derived. The availability of email services under a domain name may be readily determined using common network administration tools like NSLOOKUP and DIG. Unfortunately, it is not known from the available facts whether the Disputed Domain Names were set up to resolve email services.
The Complainant went on to argue that passive holding of a domain name without actual use may constitute bad faith. The Complainant alleged that the Disputed Domain Names have not been put into any active use. In view of the Respondent's lack of response, the Panel draws an adverse inference against the Respondent and holds that the Disputed Domain Names have not been put into any active use.
In support of its argument, the Complainant referred the Panel to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which held that the passive holding of the domain name <telstra.org> incorporating a well-known mark without any online presence amounted to bad faith. It is a well-reasoned decision which has been followed by subsequent cases, particularly Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582 which bears strong factual correspondence with the present case, including:
1) The Disputed Domain Names incorporate a well-known mark;
2) The Respondent is an individual, not a business entity;
3) In view of the trade mark rights of the Complainant in relation to the UPM Marks, it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the Disputed Domain Names by the Respondent;
4) There is no apparent evidence of actual or contemplated use of the Disputed Domain Names by anyone; and
5) The Respondent failed to respond to a cease and desist letter (and reminders) of the Complainant and this Complaint.
This Panel does not see any reason to disagree with WIPO Case No. D2000-0003 as applied in WIPO Case No. D2008-0582. Therefore, in the light of the factual circumstances and authorities outlined above, this Panel concludes that the Disputed Domain Names were registered and used in bad faith by the Respondent.
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 names, <upmrfid.com>, <upmrfid.net> and <upmtag.com> be transferred to the Complainant.
Kar Liang Soh
Dated: August 24, 2009