WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JBC Industrias, SA v. Shukaiyong
Case No. D2010-1450
1. The Parties
The Complainant is JBC Industrias, SA of Spain, represented by Pellisé, Abogados Asociados of Spain.
The Respondent is Shukaiyong of Shenzhen, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <jbctool.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. (“Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2010. On August 31, 2010, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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”).
Pursuant to Rules, paragraph 11, in the absence of an agreement between 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. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On September 2, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On September 3, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.
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 September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on October 8, 2010. 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 Spanish company which is the head office of the JBC global organization operating in 5 continents including China, renowned for its soldering and electrical products. The Complainant owns the trademark registration for the trademark JBC in Class 9 in numerous jurisdictions and holds exclusive rights over the trade name JBC TOOLS.
The Respondent registered the disputed domain name <jbctool.com> on March 18, 2009. The disputed domain name is used in connection with websites selling JBC and other soldering products.
5. Parties’ Contentions
The Disputed Domain Name is Confusingly Similar to the Complainant’s Trademark
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark to which the Complainant has rights.
The Complainant states that it owns the trade name JBC TOOLS and several registrations for the trademark JBC and including the following trademark registrations:
- International registration, JBC, number 417.896, registered on September 30, 1975, in class 9; and
- Community registration, JBC, number 023.358, registered on November 19, 1993, in class 9.
The Complainant asserts that the disputed domain name <jbctool.com> incorporates the Complainant’s trademark JBC in full, deviates from the mark only with the addition of the generic wording “tool”. The Complainant contends that where a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity, despite the addition of other words to such marks. The Complainant further alleges that the addition of the word “tool” does not negate the similarity but increases the risk of confusion for the consumers, as the word refers to the kind of goods distinguished by the trademarks of the Complainant thus it is very likely that the consumers would believe that the website at the disputed domain name represents the Complainant’s Internet store, or an affiliated or associated business.
Moreover, the Complainant asserts that the disputed domain name <jbctool.com> deviates from the Complainant’s official domain name <jbctools.com> only with the removal of the final “s”. The Complainant alleges that this is evidence of an expressly sought confusion.
The Respondent has no Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests to justify the use of the disputed domain name on the basis of the following reasons:
Firstly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to apply for domain names incorporating its trademarks, despite of the false statement made by the Respondent on its website. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.
Secondly, the disputed name does not correspond to a trademark registered in the name of the Respondent.
Thirdly, there is no evidence of any fair or non-commercial uses of the disputed domain name.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and used in bad faith on the basis of the following reasons:
Firstly, the Complainant states that it has been in the industry for over 80 years and that its trademark is distinctive and well-known internationally. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademarks JBC prior to registering the disputed domain name. This prior knowledge constitutes bad faith in registration.
Secondly, the Complainant argues that the Respondent uses the disputed domain name in bad faith because the Respondent has intentionally attempted to siphon off traffic from its intended destination to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and official website.
Thirdly, the Complainant asserts the Respondent using the website connected with the disputed domain name to sell not only JBC products (identifies as “Spanish JBC” on its website) without authorization but also products of the Complainant’s competitors constitutes further evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark JBC in Spain and many other countries around the world. The Complainant has acquired substantial goodwill in this trademark.
Compared to the Complainant’s trademark and official domain name, the disputed domain name completely incorporates the trademark with the mere addition of the generic word “tool” and with the only difference being the removal of the letter “s” respectively.
The Panel holds that the addition of a generic term does not negate the confusing similarity between the disputed name and the Complainant’s trademarks. On the contrary, the term “tool” is not only generic but also associated with the type of products offered by the Complainant and the Respondent.
The removal of “s” is insufficient to differentiate the disputed domain name from the Complainant’s official domain name, they are nearly indistinguishable, both in writing and in pronunciation. The close similarity to the official domain name of the Complainant, <jbctools.com>, strongly suggests that <jbctool.com> is intentionally similar in appearance to the Complainant’s official domain name, which will cause confusion among the present or potential new consumers.
Therefore, the Panel finds that the disputed domain name is clearly, and intentionally, confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest 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, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has developed a reputation for the trademark JBC in the electrical tools area over the past 80 years, and the Complainant’s trademarked products are sold worldwide including China. Given the distinctiveness of the Complainant’s trademarks, the Panel finds it unlikely that the Respondent who sells electrical tools would be unaware of the trademark JBC but incidentally chose it as the main part of the disputed domain name. Moreover, the Respondent’s sale of “Spanish JBC” products strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name was to exploit consumer confusion for commercial gain.
In addition, the Respondent’s lack of legitimate rights in the name JBC as well as the fact that the disputed domain name has been used to sell not only the Complainant’s products without authorization but also products of the Complainant’s competitors, the Panel is convinced that the purpose of the Respondent’s registration of the domain name is to capitalize on the goodwill of the trademarks by merely registering the trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its websites. This behavior constitutes bad faith registration and use of the domain name.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 4(a)(iii) of the Policy.
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 <jbctool.com> be transferred to the Complainant.
Dated: October 20, 2010